The following figures show the flow of procedures for a patent application and a divisional application after notification of 1st OA (office action) in Japan.
After receipt of 1st OA, it is necessary to pay attention to the deadline of a divisional application. Therefore, we included the description of the timing of filing a divisional application in the figures.
Case 2: The applicant received an examiner's decision of refusal
Supplementary information for Case 2: Suspension of examination
In Case 2, after requesting the examination of the divisional application, it is possible to suspend the start of examination of the divisional application until the result of the appeal of the parent application is obtained. The deadline for requesting the suspension is 5 working days from the date of the request for examination of the divisional application. This system started by JPO on April 1, 2023.
If there is no urgent need to examine the divisional application, it is recommended to file a request for suspension of the start of examination. This will allow an applicant to decide which claims are to be examined in the divisional application, considering the result of the appeal of the parent application.
In addition, the fee for requesting examination of a divisional application increases with the number of claims (JPY 4,000 per claim). Therefore, unless the original number of claims in the divisional application is small, it is recommended to amend the claims so that the number of claims becomes one at the time of request for examination, and to amend the claims again to the desired claims at the time of starting examination. At the time of the latter amendment, the JPO fee will be incurred according to the increased number of claims (JPY 4,000 per additional claim).
Supplementary information for Case 2: Accelerated appeal examination
In order to shorten the time required to obtain the result of the appeal, an applicant can request an accelerated appeal examination. There are two main possible timing for requesting an accelerated appeal examination.
If the applicant wishes to expedite the parent application to be granted, it is recommended that an accelerated appeal examination be filed at the same time as the request for appeal. In this case, the time for a response (optional procedure) to the Examiner's re-examination result may be very short (e.g., 1 to 3 weeks). Submission of the response is not mandatory, but if the applicant wishes to submit the response, the applicant should quickly review the result of the re-examination.
In order to have more time for a response (optional procedure) to the Examiner's re-examination result, it is recommended to request an accelerated appeal examination at the same time as the filing of the above response (i.e., (4) below). The hypothetical flow in this case is described below.
(1) April 10, 2023.
Request for appeal of parent application
Filing of divisional application
(2) May 10, 2023
Divisional application: Request for examination
Divisional application: Request for suspension of examination
(3) June 10, 2023
Parent application: Examiner's re-examination result issued
(4) August 10, 2023 (when ready)
Parent application: Response to the Examiner's re-examination
Parent application: Request for accelerated appeal examination
(5) November 10, 2023
Parent application: Notice of reasons for refusal or Appeal Decision issued
(6) February 10, 2024
*If Appeal Decision is issued in (5) above.
Divisional application: Filing of amendment to claims, and written statement to state explanation of divisional application
Divisional application: Start of examination
(7) October 10, 2024
Divisional application: 1st OA