Patent Act Article 44: Division of Patent Applications☆
1. Explanation of the Article
Division of a patent application refers to a case where multiple inventions are described in the specification, etc., and a part of the application is made into a new application, which is called a division of a patent application (Patent Act Article 44). Here, the new application (an application separate from the original application) is called a divisional application.
For the purpose of the patent attorney examination, it is often remembered as one of the measures for responding to a notice of reasons for refusal.
The timing for division and the substantive requirements for division are as follows.
Note that if it is within 30 days from the date of service of the certified copy of the examiner's decision to grant a patent, a divisional application is possible even after the patent fee has been paid (Patent Act Article 44, Paragraph 1, Item 2). However, even within the above period, after the establishment of the patent right has been registered, the patent application is no longer pending before the Japan Patent Office, so the patent application cannot be divided.
In other words, when the patent fee to be paid after the examiner's decision to grant a patent is paid, the patent application becomes a patent right. In short, it is no longer an "application." For this reason, "division of a patent application" or "division of an application" can no longer be performed.
Also, even if a certified copy of the trial decision or the examiner's decision to grant a patent at the stage of pre-trial examination has been served after a request for a trial has been filed, according to Patent Act Article 44, Paragraph 1, Item 3, as long as the application is pending, a divisional application is possible within 3 months from the first examiner's decision of refusal.
The reason why Patent Act Article 44, Paragraph 2 excludes Article 30, Paragraph 3 by stating "this shall not apply" is that if the filing date is backdated, there are cases where the certificate to be submitted within 30 days from the backdated filing date cannot be submitted because of this. Specifically, if the procedure for the exception to the loss of novelty was performed in the initial application (parent application), the exception to the loss of novelty is applied in the divisional application (child application) even without performing the procedure for the exception to the loss of novelty (Article 44, Paragraph 4). However, if the procedure for the exception to the loss of novelty was not performed in the parent application, but one wishes to receive the application of the exception to the loss of novelty in the child application, it is necessary to perform the procedure in the child application. In order to allow the procedure in this case, the filing date is not backdated.
Note that when a divisional application is filed, since Article 64 is not stipulated in the proviso of Article 44, Paragraph 2, the publication of the application is performed 1 year and 6 months after the original filing date.
2. Measures at the time of application division (outside the scope of the examination)
When aiming to commercialize multiple child applications by dividing the parent application (Patent Act Article 44), there are cases where the problem of the parent application and the problem of the child application are different.
In such a case, the [Problem to be solved by the invention] of the child application will contain content suitable for the child application among the content described in the problem/effect described in the initial specification.
However, in that case, one should search for and describe a patent document corresponding to the problem of the child application as [Prior Art Document]. A patent document corresponding to the problem of the child application is a prior art document that makes it easier for the inventive step of the child application to be recognized.
According to the Examination Guidelines, an amendment to add this prior art document to the detailed description of the invention does not, in principle, correspond to an amendment adding new matter and is considered a lawful amendment.
2.3.1 Judgment on amendments to add prior art document information
An amendment to add prior art document information to the detailed description of the invention does not correspond to an amendment adding new matter and is a lawful amendment. Also, an amendment to add the content described in the prior art document to the [Background Art] section of the detailed description of the invention does not correspond to an amendment adding new matter and is a lawful amendment. However, an amendment that adds information regarding the evaluation of the invention, such as a comparison with the invention according to the claims, or information regarding the implementation of the invention, or an amendment that adds content described in a prior art document to resolve a deficiency in the description requirements of Article 36, Paragraph 4, Item 1, corresponds to an amendment adding new matter and is an unlawful amendment.
3. Division of application during an appeal against an examiner's decision of refusal
Conventionally, when dividing an application while leaving room for commercialization after an examiner's decision of refusal, a method of filing a request for a trial early and delaying the timing of the divisional application (division under Patent Act Article 44, Paragraph 1, Item 3) has sometimes been adopted.
The advantage of adopting this method is that by delaying the timing of the divisional application, it is possible to reduce the likelihood that the divisional application will be examined before a trial decision is rendered.
Here, the divisional applications that can be filed after a decision of rejection are: (1) a division under Article 44(1)(i) of the Patent Act performed at the time of filing a request for a trial against a decision of rejection, and (2) a division under Article 44(1)(iii) of the Patent Act performed within three months from the service of the transcript of the initial decision of rejection.
A division under Article 44(1)(i) of the Patent Act allows for a broader scope of rights for the divisional application. On the other hand, a division under Article 44(1)(iii) of the Patent Act provides a longer period and timeframe for filing a divisional application.
For this reason, I thought I had to be careful about selecting the timing for filing a divisional application, but it seems that from April 2023, it is possible to request a suspension of examination for divisional applications filed after a decision of rejection by applying Article 54(1) of the Patent Act.
From April 2023, for certain divisional applications where a request has been made by the applicant or their representative, we will begin applying Article 54(1) of the Patent Act to suspend the examination of the divisional application until the results of the pre-trial examination or trial of the original application are known.
By utilizing this measure, if you file a divisional application at the time of requesting a trial against a decision of rejection and apply for a suspension of examination, there will be no possibility that the divisional application will be examined before a trial decision is rendered.
In other words, by using this measure, the possibility of acquiring more effective rights increases.
・Patent Act Article 44
(Division of Patent Applications)
Article 44: A patent applicant may, only in the following cases, divide a patent application containing two or more inventions into one or more new patent applications:
(i) When it is within the time or period during which an amendment can be made to the description, scope of claims, or drawings attached to the application.
(ii) When it is within 30 days from the date of service of the transcript of the decision to grant a patent (excluding a decision to grant a patent under the provisions of Article 51 as applied mutatis mutandis in Article 163(3), and a decision to grant a patent for a patent application subjected to the examination prescribed in Article 160(1)).
(iii) When it is within three months from the date of service of the transcript of the initial decision of rejection.
(2) In the case of the preceding paragraph, the new patent application shall be deemed to have been filed at the time of the original patent application. However, this shall not apply to the application of these provisions when the new patent application falls under another patent application prescribed in Article 29-2 or a patent application prescribed in Article 3-2 of the Utility Model Act, nor to the application of the provisions of Article 30(3).
(3) Regarding the application of the provisions of Article 43(2) (including cases where applied mutatis mutandis in Article 43-2(2) (including cases where applied mutatis mutandis in Article 43-3(3)) and Article 43-3(3)) when filing a new patent application as prescribed in paragraph (1), the phrase "within one year and four months from the earliest date" in Article 43(2) shall be read as "within one year and four months from the earliest date or within three months from the date of the new patent application, whichever is later."
(4) When filing a new patent application as prescribed in paragraph (1), any documents or materials submitted for the original patent application that must be submitted for the new patent application pursuant to the provisions of Article 30(3), Article 41(4), or Article 43(1) and (2) (including cases where these provisions are applied mutatis mutandis in Article 43-2(2) (including cases where applied mutatis mutandis in Article 43-3(3)) and Article 43-3(3)) shall be deemed to have been submitted to the Commissioner of the Japan Patent Office at the same time as the new patent application.
(5) The 30-day period prescribed in paragraph (1)(ii) shall be deemed to be extended only by the extended period if the period prescribed in Article 108(1) is extended pursuant to the provisions of Article 4 or Article 108(3).
(6) The three-month period prescribed in paragraph (1)(iii) shall be deemed to be extended only by the extended period if the period prescribed in Article 121(1) is extended pursuant to the provisions of Article 4.
(7) If a person filing a new patent application as prescribed in paragraph (1) is unable to file the new patent application within the period prescribed in paragraph (1)(ii) or (iii) due to reasons not attributable to them, they may, notwithstanding these provisions, file the new patent application within 14 days (or two months for overseas residents) from the date the reasons ceased to exist, and within six months after the expiration of the periods prescribed in these provisions.
●Past Articles/Related Articles
・Patent Act Article 44: Division of Patent Applications
・Patent Act Article 44: Division of Applications after Patent Grant
・Patent Act: Addition of Patent Documents in Divisional Applications
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