Request for Resumption of Examination of Divisional Applications Filed after Rejection of Parent Applications
According to the JPO practice, at the request of the applicant, the JPO suspended the examination of a divisional application filed after a decision of rejection was issued to its direct parent application until the appeal examination is concluded, provided that the examination request of the divisional application was filed on or after April 1, 2023.
The updated procedures allow the applicant to request, from April 1, 2024, the resumption of examination of the divisional application before the end of the examination suspension period a).
To have the examination of the divisional application resume, the applicant or their Japanese agent must complete both (1) and (2) below before the end of the examination suspension period.
(1) Submit a petition b) requesting the resumption of the examination of the divisional application.
(2) Submit a request to resume examination of the divisional application via the specified web form.
If examination is resumed upon such request, a second request to suspend examination cannot be filed.
Notes:
a) “before the end of the examination suspension period” means before a notification of the end of the examination suspension period is issued for any of the following reasons:
(i) A certified copy of the examiner’s decision made in the reconsideration before appeal proceedings is delivered to the applicant.
(ii) A certified copy of the initial appeal decision made in the appeal against the decision of rejection is delivered to the applicant.
(Said initial appeal decision excludes the decision obtained as a result of an appeal against a decision of rejection that has been reverted as a result of a lawsuit revoking the appeal decision.)
(iii) The request for appeal or the original patent application is withdrawn or dismissed.
b) The petition must state the reasons for seeking to acquire rights for the divisional application and request the resumption of examination, regardless of the outcome of the appeal against the decision to reject the original application.
Hiroshi SORIMACHI,
Partner; Patent Attorney