IP NEWS:SOEI Patent & Law Firm

On June 7, 2006, Japan published a revision of the Patent Law that provides two new opportunities for applicants can file divisional applications. The effective date on which applicant will be able to avail themselves of these opportunities has not yet been decided, but it will be later than one year after the publication date of the revision, or June 7, 2007.

Under the law presently in effect, applicants are able to file divisional applications only at those times at which they can also file amendments. Once the examiner has issued a first office action, the applicant has the following opportunities to file divisional applications:
1.  Within the period during which a response to an outstanding Notice of Reasons for Rejection (First Office Action) can be filed. (For applicants with addresses outside Japan, three months from the date of the office action. This period can be extended once for three additional months.)
2.  Within the period during which a response to a subsequent Notice of Reasons for Rejection could be filed. (Again, for foreign applicants, three months from the date of the office action, extendible once for three additional months).
3.  Within 30 days following the date on which the applicant files a Demand for Trial against the Examiner's Decision of Rejection. (Not extendible.)

The two new opportunities are
4.  Within 30 days of the examiner's decision to allow the patent application.
5.  Within 30 days of the examiner's Final Decision to Reject the patent application. (Note that this period occurs prior to opportunity 3 above.)

As noted above, the effective date of these important new changes to the Japanese practice have yet to be decided. However, it will be no later than June 7, 2007, one year after the publication date. Please watch this space; we will notify our readers once the effective date has been determined.