Japan Patent Office (JPO): Request for deferral of examination on a divisional application filed after a decision of refusal on a patent application


JPO website link (Japanese only):


The JPO started a new practice that, on request of the applicant, it may defer the examination of a divisional application filed after issuance of a decision of refusal on its direct parent application until a certain result of the appeal examination comes up, provided that the examination request on the divisional application is filed on or after April 1, 2023.


An applicant who received a decision of refusal often files a precautionary divisional application in case of unsuccessful appeal, but the appeal proceedings take more time than the examination of a divisional application.  The applicant generally receives a notice of reasons for refusal (office action) against the divisional application much earlier than the result of the appeal in the parent application and thus is compelled to respond to it at an unexpectedly earlier timing.


Under the new JPO practice, examination of the divisional application may be deferred when the following three requirements are met: (1) the divisional application is filed after the issuance of a decision of refusal against its direct parent application; (2) an appeal against the decision of refusal has been filed for the parent application and is pending; and (3) a request for examination is filed for the divisional application on or after April 1, 2023 with substantial claims and the request for deferral is filed within 5 working days from the date of the examination request.


When the deferral request is granted, the examination will not be started unless the applicant receives a decision to grant a patent issued by the prosecution examiner who conducted the “pre-appeal review”, receives an appeal decision, or withdraws the appeal or the parent application.  Then, upon occurrence of any of these events, the applicant is required to submit the applicant’s comments on the divisional application in view of the details of such event.


This new practice of deferral of examination of a divisional application is expected to be utilized as a standard option for many applicants who file an appeal against a decision of refusal.