Intellectual Property Information

Divisional applications in Japan

1. Introduction
Sometimes, divisional applications are used in Japan for purposes different from those in other countries such as the US. Further, there are differences in requirements for divisional applications between Japan and other countries.

2. Purposes of divisional applications
Divisional applications are used, for example, when:

a) the claims are rejected due to lack of unity of invention.

b) a part of the claims is rejected.

- For example, quickly obtaining a patent for the non-rejected claims in the original application, while trying to overcome the rejection for the rejected claims in the divisional application.

c) a desired amendment cannot be made due to restriction on amendment.

- An amendment is strictly restricted after the examiner issues a final notice of rejection or a decision for rejection.

- There are no continuation application/CIP/RCE systems in Japan. Therefore, a divisional application is used in place of those systems.

d) a pending application (insurance) is needed.

- A divisional application cannot be filed anymore, once the examiner issues a decision to grant a patent, or the trial (appeal) examiners issue a decision to grant a patent or a decision for rejection. Therefore, a divisional application is filed for later use before those decisions are issued.

3. Requirements for divisional applications
a) The claims, specification and drawings of a divisional application may not include new matters for the claims, specification and drawings of the original application.

- If a divisional application includes new matters, the divisional application is not deemed to be filed on the filing date of the original application. Therefore, if the original application was published before the filing date of the divisional application, the divisional application may be rejected based on the original application.

b) A divisional application can be filed only when an amendment can be filed (please see the following figure).

- A divisional application (and an amendment) cannot be filed anymore, once the examiner issues a decision to grant a patent, or the trial examiners issue a decision to grant a patent or a decision for rejection.

- After responding to the examinerfs notice of rejection, a divisional application (and an amendment) cannot be filed until the examiner issues the next notice of rejection or a decision for rejection.

4. Et cetera
a) If the claims of a divisional application overlap with the claims of the original application, both applications are rejected. Since there is no terminal disclaimer system in Japan, the applicant has to amend the claims of one of the applications.

b) Based on a divisional application, a further divisional application can be filed.