[Japan] JPO will begin practice of suspending examination of divisional applications, while the parent application is pending in appeal

As of April 1, 2023, JPO will begin a practice of suspending, upon request, the examination of divisional applications filed in conjunction with a request for appeal against the decision of refusal of the original application, until the result of the reconsideration before appeal or the result of the appeal of the original application is known (Article 54(1) of the Patent Act applies).

This practice allows the applicants to consider the action on a divisional application based on the result of the reconsideration before appeal, or the result of the appeal of the original application.

When filing a divisional application at this stage, the applicants often hope to wait for the result of the appeal of the original application before deciding the action on the divisional application.  We therefore expect that the applicants will request suspension of the examination for many divisional applications that meet the case.

In order to use this practice, the applicant needs to take the following two procedures within 5 business days from the date of request for examination of the divisional application:

- submit a written petition stating the circumstances regarding the application of the practice; and

- make an application using a dedicated form.

JPO will release an example of the application form and the dedicated form before the start of the practice.

For more information, please refer to the JPO website (Japanese website).

https://www.jpo.go.jp/system/patent/shinsa/general/bunkatu-shutugan_chushi.html