Restrictions-permissible number and timing of divisional applications

Transcription

1 June 17, 2013 JPO / U.S. Bar Liaison Council Meeting 2013 Restrictions-permissible number and timing of divisional applications Tatsuya Tada Examination Standards Office The Japan Patent Office 1

2 Division of applications The divisional application system is a system in which an applicant for a patent may extract one or more new patent applications out of a patent application containing two or more inventions (Article 44). If the divisional application is legitimate, it will be deemed to have been filed at the same as when the original patent application was filed. This means the relevant filing date is retroactive to the filing date of the original application. (Inventions A, B) ) Amendment (Invention A) Acquisition of right for Invention A (The filing date is retroactive to the filing date of the original application.) (Invention B) Acquisition of right for Invention B 2

3 Time requirements for divisional applications Divisions are allowed during the time limit given for amendments within 30 days after the decision to grant a patent within 3 months after the examiner s decision of refusal Detailed information is available on Slide 4 Slide 5 Slide 6 Slide 7 There is no restriction as to the number of divisions that can be made in regard to one application.

4 Time requirements for divisional applications Divisions are allowed not only during the time limit given to applicants to make amendments but also during a certain period of time after the decision to grant a patent or after the examiner s decision of refusal. (Article 44) Request for examination Before notice of reasons for refusal has been received (Before certified copy of decision to grant a patent has been received) time limit given to make divisional applications time limit given to make amendments Notice of reasons for refusal Within the time limit given to respond notice of reasons for refusal Decision to grant a patent / Examiner s decision of refusal Demand for trial Time limit given to submit amendments in trial Divisional applications are allowed also during a certain period of time after the decision to grant a patent [or] the examiner s decision of refusal has been received. (Article 44(1)(ii),(iii)) 4

5 Time restriction for amending descriptions etc. A time restriction has been set in order to avoid confusing situations and delays in conducting procedures, which would occur if amendments were allowed at any time. 1) Only while the patent application is still pending before the JPO (Text of Article 17(1), Patent Act) 2) Before a certified copy of patent decision has been received (Body of Article 17-2(1), Patent Act)) 3) Before notice of reasons for refusal is received, or in the cases given below (Body (provisory clause) of Article 17-2(1)) (i) where the applicant has received the first notice under Article 50 and the said amendment is made within the designated time limit under Article 50; (ii) where, following the receipt of the notice of reasons for refusal, the applicant has received a notice under Article 48-7 and the said amendment is made within the designated time limit under the said Article; (iii) where, following the receipt of the notice of reasons for refusal, the applicant has received a further notice of reasons for refusal and the said amendment is made within the designated time limit under Article 50 with regard to the final notice of reasons for refusal; and (iv) Simultaneously with the demand for trial under Article 121(1) ( Within 30 days from the day of demanding a trial, in the case when a certified copy of the examiner s decision of refusal was received on or before March 31, 2009.) Case when decision of refusal is given 3) 3) (i) 3) (ii) 3) (iii) 3) (iv) 3) (iii) Request for examination Reasons for refusal (1st) Notice under Article 48-7 Reasons for refusal (Final) Examiner s decision of refusal Demand for trial Reasons for refusal (Final) Case when decision to grant a patent is made 2) Request for examination Decision to grant a patent Cases requiring correction after the decision to grant a patent: Trial for correction (Article 126) Correction in a trial for patent invalidation (Article 134(2)) 5

6 Division after a patent has been granted Article 44(1)(ii), Patent Act within 30 days from the date on which a certified copy of the examiner s decision to the effect that a patent is to be granted (excluding the examiner s decision to the effect that a patent is to be granted under Article 51 as applied mutatis mutandis under Article 163(3) and the examiner s decision to the effect that a patent is to be granted with regard to a patent application that has been subject to examination as provided in Article 160(1)) has been served. 30 days certified copy of the decision to grant a patent is received patent right is registered Decision to grant a patent (excluding 1., 2.) 1. Decision to grant a patent in reconsideration by examiner before trial, 2. Decision to grant a patent in a case when an examiner s decision has been rescinded in a trial against the examiner s decision of refusal, and further examination is ordered to be carried out. Once a patent right is registered, the patent application will no longer be pending before the Japan Patent Office. As a result, divisional applications cannot be filed even within 30 days from the date on which a certified copy of the decision to grant a patent is received. 6

7 Division and amendment after the decision of refusal Demand for trial Examiner s decision of refusal 3-month time limit for requests Dividable (Not amendable) Dividable (Not amendable) Dividable and amendable Time limit for demanding a trial is 3 months from the date a certified copy of an examiner s decision of refusal is received. Amendments can only be made simultaneously with the demand for trial 7