Every applicant wishes to proceed with his/her IP strategies with as much advantage over the competition as possible. It is indeed fundamental and important for applicants to keep patent applications which disclose their important technologies pending for as long as possible in order to secure the opportunity to make amendments and to file divisional applications whenever necessary.
The three most frequent questions about Japanese practice we receive from our foreign clients are related to the following:
- Allowable term to make amendments;
- Allowable scope of amendments; and
- Allowable term to file divisional applications.
Question (ii) will be explained in a future report. Here we focus only on questions (i) and (iii).
2. Allowable Term for Amendments
After a patent application is filed, in principle, the applicant can make voluntary amendments to the claims, specification and drawings any time before receiving a Decision of Grant (Article 17bis, Paragraph 1, Main Paragraph), assuming that an Office Action has not been issued.
In other words, amendments cannot be made after the receipt of the Decision of Grant. Although a patent owner can restrict the scope of granted claims through a “Trial for Correction” (Article 126) while the patent right is in force, this procedure is different from that for amendments.
In addition, as hinted at above, even before the receipt of the Decision of Grant, once an Office Action (Notice of Reasons for Rejection) is issued, the allowable term for amendments thereafter is limited to the following periods:
- Period designated in the Office Action (Article 17bis, Paragraph 1, Numbers 1 and 3): For foreign applicants, this period is normally three months from the issue date of the Office Action. Up to three one-month extensions of the response due date are available upon request prior to the due date; and
Click here to view image.
- Simultaneously with the filing of a Request for Appeal against a Decision of Rejection (Article 17bis, Paragraph 1, Number 4): The Request for Appeal must be filed within four months from the issue date of the Decision of Rejection. No extension of the response due date is available.
Click here to view image.
3. Allowable Term for Divisional Applications
In Japan, there is no restriction such as “24 months from the first communication from the Examining Division” in the EPC (EPC Rule 36(1)). As long as the following conditions are satisfied, any number of generations of divisional applications can be filed in Japan:
- Filing Datei of Patent Application: Before April 1, 2007
With regard to patent applications filed before April 1, 2007, the allowable term for filing divisional applications is identical to the allowable term for making amendments (Article 44, Paragraph 1, Number 1).
Accordingly, if the applicant receives a Decision of Grant (fortunately or not), the applicant must accept the inconvenient fact that divisional applications can no longer be filed. This was very unsatisfactory among foreign applicants.
At present, the number of pending applications filed before April 1, 2007 is diminishing, however, close attention should still be paid. Practically, some applicants intentionally included deficiencies in the specification or claims in order to receive an Office Action for securing an opportunity to file divisional applications.
- Filing Datei of Patent Application: On or After April 1, 2007
Because of the revisions to the Japanese Patent Law in 2006, in addition to the above-mentioned term (i), divisional applications can also be filed during the following period:
- Within 30 days from the issue date of the Decision of Grant (Article 44, Paragraph 1, Number 2): A 30-day extension is available upon request.
Accordingly, the inconvenience where the applicant cannot file a divisional application after the receipt of the Decision of Grant has been eliminated. However, care must still be taken, since the allowable term for filing divisional applications in this case is very short (i.e., 30 days).
- Within a statutory period from the issue date of the Decision of Rejection (Article 44, Paragraph 1, Number 3): The statutory period for foreign applicants is four months (not extendible).
Accordingly, a divisional application can be filed without filing an appeal against the Decision of Rejection for applications having a filing date on or after April 1, 2007.
In conclusion, the allowable term for divisional applications is shown in the following chart:
Click here to view chart.
As was stated at the beginning, knowledge about the allowable terms for filing amendments and divisional applications is fundamental and important in every country. In consideration of the periods explained in this report, it is recommended that applicants establish an appropriate patent portfolio in Japan.