Revision of Divisional Application System and Amendment System of Japanese Patent Law

April 5, 2006
Harakenzo World Patent & Trademark
Patent attorney Morio NAKAO

1. Preface

         The Japanese Patent Law was revised, and a draft revision of the Patent Law was endorsed on March 7, 2006 by the Cabinet and submitted to the regular Diet session of year 2006. Revision was made on the Divisional Application system, the Amendment system, the time limit for submission of Japanese translations of international patent application made in a foreign language, and elsewhere.
         With regard to the revision of the time limit for submission of Japanese translations, the time limit, which is currently within two months, is to be extended to within 14 months. This seems to cause no confusion.
         On the other hand, the revision of the Divisional Application system and the Amendment system is likely to drastically affect future working-practice. Especially, prohibition of a shifting-amendment (this will be specifically described below), which is acceptable under the current Law, will give a considerable impact. Thus, one would not be able to excuse himself by “not-knowing” the revision.
         The revised Patent Law has not been endorsed, yet, but what endorsed by the Cabinet is likely to come into force in the past. The following schematically describes how the Divisional Application system and the Amendment system are going to be revised.

2. Revision of Divisional Application system

2-1. Purport of revision

         Under the Divisional Application system, in the case where an application includes a plurality of inventions, a portion of the inventions is separated from the original application and filed under a new application that is deemed to have been filed at the time of filing of the original application. This makes it possible to obtain a patent for each of the inventions.
         The background of the revision is as follows. Currently, the more innovative the invention is, the more difficult for the applicant to describe multidisciplinary and comprehensive claims for the invention that is subject of protection. Therefore, the application is either allowed with ineffective claims or rejected on the basis of inadequate description of the invention. In such situations, the current system does not allow the applicant to file a divisional application in order to seek for a patent with more adequate claims, and therefore it has been difficult to obtain a patent right that is effective, multidisciplinary, and comprehensive.
         In this connection, there arose a discussion that a divisional application should be able to be filed during a certain period of time after issuance of a Decision of Refusal or a Decision to Grant a Patent. This was discussed by the Industrial Structure Council of the Japan Patent Office, and as a result, the Divisional Application system was revised so as to allow filing of a divisional application during a certain period of time after issuance of a Decision of Refusal or a Decision to Grant a Patent.

2-2. Details of revision

         Under the current system, filing of a divisional application is allowed “only within the time limit by which the description, patent claim(s) or drawing(s) attached to the request may be amended” (Patent Law Section 44).
         The following is new Patent Law Section 44(1) that is now endorsed by the Cabinet.

         Section 44: An applicant for patent may divide a patent application comprising two or more inventions into one or more new patent applications only within:

         1. the time limit by which the description, patent claim(s) or
         drawing(s) attached to the request may be amended;

         2. 30 days from a transmittal of a Decision to Grant a Patent
         (except for a Decision to Grant a Patent under Section 163(3),
         in which Section 51 is applied, and a Decision to Grant a Patent
         issued in a patent application that has gone through an examination
         under Section 160(1);

         3. 30 days from a transmittal of a first Decision of Refusal.

         In other words, a divisional application can be filed within 30 days from (i) a transmittal of a Decision to Grant a Patent and (ii) a transmittal of a Decision of Refusal, in addition to the period in which filing of a divisional application is allowed under the current Law.

2-3. Merits for applicants

         One merit for applicants is that it is facilitated to obtain a multidisciplinary and comprehensive patent right (in other words, opportunity for obtaining a multidisciplinary and comprehensive patent right increases), which is a purport of this revision.
         Under the current system, if an applicant wishes to file a divisional application after issuance of a Decision of Refusal, the applicant files a request for appeal against the Decision of Refusal in order solely to obtain an opportunity to file the divisional application. Under the revised system, a divisional application can be filed without filing a request for appeal. This is another merit for applicants in view of avoiding unnecessary procedures.
         Note that the European Patent Law and the U.S. Patent Law allow filing of a divisional application during a certain period between issuance of a Notice of Allowance and issuance of a Patent. Furthermore, the U.S. Patent Law allows filing of a continuation application (this corresponds to the divisional application under the Japanese Patent Law) after issuance of an office action that corresponds to the Decision of Refusal under the Japanese Patent Law. Accordingly, this revision for allowing a divisional application to be filed after issuance of a Decision to Grant a Patent or a Decision of Refusal was proposed greatly in view of harmonization with the worldwide systems.

2-4. Caution to applicant

         It should be noted as well that there are certain limitations for making amendments in a divisional application for the purpose of preventing abuse of the Divisional Application system.
         In the case where (i) a final Notification of Reason(s) for Refusal is issued in the original application, and (ii) a Notification of Reason(s) for Refusal that is identical to the final Notification is issued in the divisional application, the procedures will be carried out in the same manner as to the current final Notification of Reason(s) for Refusal. Specifically, if a Notification of Reason(s) for Refusal that is identical to the Notification issued in the original application is issued in a divisional application, then, unless the amendment filed within the response period fulfills the requirements, the amendment will be dismissed, and a Decision of refusal will be issued.

3. Revision of Amendment system

3-1. Purport of revision

         The current Amendment system allows an amendment that drastically changes the invention that is subject to examination (this amendment will be referred to as “Shifting Amendment” hereinafter). However, the European and U.S. systems do not allow a drastic change in the invention after issuance of a Notification of Reason(s) for Refusal, and therefore do not conform to the Japanese current system.
         Further, under the current system, which allows the Shifting Amendment, it is possible for one application to be substantially examined twice if a Shifting Amendment is made after issuance of a first Notification of Reason(s) for Refusal. This causes unfairness, in view of handling applications, between an applicant who does clarify a targeted patent right to be obtained and an applicant who does not.
         Thus, there arose a discussion that the Shifting Amendment should be limited in view of harmonization with the worldwide systems and fairness among applicants. This was discussed by the Industrial structure Council, and as a result, the Shifting Amendment was revised.
         The Shifting Amendment can be categorized into mainly two cases below. Assume that, in the cases below, no unity is established between invention A and invention B.

    Case 1
    (before amendment) Claims: A / Description: A, B
    ↓ Notification of Reason(s) for Refusal
    (e.g., lack of inventive step)
    (as amended) Claims: B / Description: A, B

    Case 2
    (before amendment) Claims: A, B / Description: A, B
    ↓ Notification of Reason(s) for Refusal
    (lack of unity)
    (as amended) Claims: B / Description: A, B

         At this time, due to lack of unity, only invention A will be examined to determine whether invention A fulfills the requirements for patentability, and then a Notification of Reason(s) for Refusal will be issued. Therefore, making an amendment so as to retain invention B would be considered as a Shifting Amendment. (There is an argument whether or not this is a Shifting Amendment. Please see the Minutes of 19th meeting of the Patent System Subcommittee of the Industrial Structure Council Intellectual Property Policy Committee. The Patent Office refers this case as Shifting Amendment.)

3-2. Details of revision

         The following will be added to current Patent Law Section 17bis as paragraph 4 (current paragraphs 4 and 5 will be renumbered as paragraphs 5 and 6, respectively).
         Section 17bis (4)　Beside the limitations set forth in the preceding subsections, in the case where an amendment is made to Claims under the items of paragraph 1 (i) the invention whose patentability had been examined and stated on a Notification of Reason(s) for Refusal that had been issued before the amendment was made and (ii) the invention recited by the Claims as amended need to correspond to a group of inventions that fulfill the unity of invention required under Section 37.
         In other words, the unity needs to be established between the Claims before the amendment and the Claims as amended.
         Accordingly, in case 1, the amendment will not be entered because there is no unity between invention A and invention B.
         Furthermore, in case 2, the amendment will not be entered either because there is no unity between invention A, which was already examined, and invention B recited in the Claims as amended.
         Note that, with regard to the Claims before amendment in Case 2, amendments to delete invention B and retain invention A will be entered. This is apparent from the Articles in which the judgmental standard of the unity is defined as “invention to which determination is already made whether or not the invention shall be patented.”
         In order to retain invention B as in Case 2, a divisional application may be filed.

3-3. Merits derived by revision

         There seems to be no direct merit for applicants that is derived from this revision of the Amendment system. There is, however, an indirect merit for applicants that is fairness among applicants. Specifically, as a result of making a Shifting Amendment, two inventions are examined although the fee for filing a request for examination is paid only for one application. This causes unfairness between (i) an applicant who does take the unity into consideration before filing the application and limit the invention to be included in the description and (ii) an applicant who does not. The present revision is made to resolve the problem of unfairness.

3-4. Additional information

         The revised limitations to amendment do not serve as the grounds for invalidation. Furthermore, the Industrial structure Council Intellectual Property Policy Committee suggests that the revised limitations should not be applied more strictly than necessity. Therefore, it is expected that concrete operation thereof will be specified in examination standards that will be established in the future.

4. Conclusion

         The present column schematically describes the revisions of the Divisional Application system and the Amendment system that are likely to be enforced. However, the Industrial structure Council of the Japan Patent Office continues discussions on the revisions of the Industrial Property System. For example, there was a suggestion that addition of new matter in a divisional application should be a reason for refusal, although this was not included in the present revision of the Divisional Application system.
         The above discussions are made in consideration of the overall Industrial Property System and thus overall worldwide Industrial Property System. Accordingly, it is not surprising that not all the revisions are user-friendly. It is, therefore, necessary to promptly keep updated with the movements regarding the systems and develop strategies therefor. We need to continue keeping eyes on the movements regarding the Industrial Property System.

5. Reference

         “How the Patent System Should Be,” Industrial Structure Council Intellectual Property Policy Committee of the Japan Patent Office (February, 2006).