Patent Law: Addition of Patent Documents in Divisional Applications
When aiming to obtain rights for multiple divisional applications by dividing a parent application (Article 44 of the Patent Act), there are cases where the problem addressed by the parent application differs from the problem addressed by the divisional application.
In such cases, the [Problem to be Solved by the Invention] section of the divisional application should include content suitable for the divisional application, selected from the problems and effects described in the original specification.
However, in that case, you should search for and include patent documents corresponding to the problem of the divisional application as [Prior Art Documents]. Patent documents corresponding to the problem of the divisional application refer to prior art documents that make it easier for the divisional application to be recognized as having an inventive step.
According to the Examination Guidelines, an amendment to add such prior art documents to the detailed description of the invention does not, in principle, constitute an amendment that adds 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 constitute an amendment that adds new matter and is a lawful amendment. Furthermore, an amendment to add content described in prior art documents to the [Background Art] section of the detailed description of the invention does not constitute an amendment that adds 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 claimed invention, or information regarding the implementation of the invention, or an amendment that adds content described in prior art documents to resolve deficiencies in the requirements for description under Article 36(4)(i), constitutes an amendment that adds new matter and is an unlawful amendment.
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