1

Desirable Forms of Divisional Patent Application System
and Patent Amendment System

The review of the amendment system and the divisional application system was discussed at the Working
Group on Patent Strategic Plan Issues established under the Patent System Subcommittee of the Intellectual
Property Policy Committee of the Industrial Structure Council, from the perspective of achieving international
harmonization, improving equality among applicants in the processing, helping front-runners' strategic or
multilateral efforts to obtain patents, and reducing burden on applicants as well as the Patent Office in theprocess of obtaining or granting patents. In October 2004, the working group compiled a report titled "Directionof the Review of the Amendment System and the Divisional Application System," presenting existing issues to bestudied and pointing out additional issues needing further study.
This study conducted analysis and examination on the relaxation of the restrictions of the divisional
application system in terms of the time limit and the contents of division, and also discussed the introduction of
the continuation-in-part application system and the one-year grace period from the United States to Japan. It
also conducted more concrete review and analysis, from various perspectives, as to the period of response to thenotification of reasons for refusal and the relationship between the divisional application system and the systemof appeal against the examiner's decision of refusal, and made specific proposals.
It is hoped that this study will be the basis of the future discussion and designing of specific measures toimprove the Japanese patent system.

Ⅰ Purpose of the Study
Some issues of the divisional patentapplication system in Japan have been emerged,
due to its strict restrictions in terms of the time
limit and the contents of division, as being an
obstacle to the strategic efforts to obtain patents
and failing to appropriately protect front-runners.
For this reason, the review of the amendment
system and the divisional application system wasdiscussed at the Working Group on Patent
Strategic Plan Issues (hereinafter referred to as
the "Patent Strategy Working Group") establishedunder the Patent System Subcommittee of theIntellectual Property Policy Committee of theIndustrial Structure Council. In October 2004, thePatent Strategy Working Group compiled a report
titled "Direction of the Review of the Amendment
System and the Divisional Application System,"presenting basic ideas on the amendment systemand the divisional application system as well as on
existing issues to be studied in close relation tothese systems, and pointing out additional issues
needing to be further studied. The purpose of thisstudy is, based on the discussion at the Patent
Strategy Working Group, to investigate overseas
divisional application systems (including similarsystems such as the continuation application
system) and more concretely consider desirable
forms of the divisional application system inJapan, aiming to strengthen Japan's industrial
competitiveness and further promote international
harmonization.

IIP Bulletin 2005

Ⅱ Relaxation of the Time Restriction
under the Divisional Application
System1

Details of the relaxation of the time
restriction of divisional application

Regarding the view that it should beallowable to file a divisional application within acertain time limit after a decision has been madeto grant a patent or refuse the application, we
discussed the specific details of the "certain time
limit." One proposed time limit was "within 30
days from the transmittal of the decision of patent
grant or decision of refusal." This time limit is set
for the consistency with the time limit for paying
the patent registration fee and the time limit forfiling an appeal against the examiner's decision ofrefusal. However, legislative measures should beconsidered including assuring a period of time
during which divisional application shall beallowed after the decision is made, irrespective ofwhether or not the application is in the pendency
before the Office. Another possible idea may be to
set the time limit at about three months,
following Europe and the United States where adivisional application is allowable within about
three months after the notice of allowance isgiven. On the other hand, it seems appropriate tomaintain the current time limit for divisional
application pending in an appeal against theexaminer's decision of refusal.

● 2 ●

2

Measures to prevent abuse of the system

With the expected increase in the number ofdivisional applications along with the relaxation of
the time restriction on the filing of divisional
applications, we considered specific measures toreduce burden and prevent abuse of the divisional
application system. Such measures relate to: (1)streamlining of the treatment of a divisional
application containing a new matter; (2) reductionof procedural work for filing a divisional
application; (3) effect toward a divisional
application of a notification of reasons for refusal
given to the original application; (4) public
inspection of a divisional application upon the
publication of the original application; (5)provision by the Intellectual Property Digital
Library (IPDL) of information on the parental
relationship between a divisional application andthe original application; and (6) priority to adivisional application in processing. It is desirable
to take various measures while giving
consideration to avoiding an excessive increase in
the JPO's workload.
3

Effectiveuseofapplication system

thedivisional

Allowing a divisional application to be filed
after a decision of patent grant is made is being
called for from companies in connection with
R&D activities (e.g. products on the market andtechnical standards). It would also be helpful inaccelerating the processing as required due to theshortening of the period during which
examination may be requested from seven years
to three years. On the other hand, if the filing of adivisional application is allowable after a decisionof refusal is made, it will be possible to prevent an
appeal against the examiner's decision of refusalfrom being filed only for the purpose of obtaining
the opportunity to file a divisional application.
The relaxation of the time restriction of division
may also be favorable from the perspective ofinternational harmonization, for in Europe andthe United States, a divisional application isallowable even after the notice of allowance isgiven.

Ⅲ Relaxation of the Content
Restriction under the Divisional
Application System
1

Handling of same inventions in foreigncountries

In the United States, the handling of same
inventions
differs
betweencases
of"identity-type" double patenting and cases of"obviousness-type" double patenting. Double

patenting can be avoided by filing a terminal
disclaimer only for cases of "obviousness-type"
double patenting and both applications are filed by
the same applicant. In EPC Member States, thehandling of same inventions is basically in
conformity to the provisions of the EPC, withsome differences in judgment criteria amongstates. More specifically, two or more patents
may exist in respect of same inventions claimed
in two or more applications filed by the same
applicant on the same day. Where applications
claiming same inventions are filed by different
applicants on the same day, either application
shall be chosen or the invention claimed in either
application shall be changed into anotherinvention by amendment, and if these applications
are filed on different days, they shall be subject
to examination as to novelty. Other countries
adopt various characteristic systems, such as
distinguishing applications claiming same
inventions depending on the filing date, theapplicant or the inventor, or determining theidentity of inventions by comparing different
objects depending on the applicant. In Japan,
when discussing a review of the handling of same
inventions with the aim of protecting frontrunners, we should proceed through deliberationon the introduction of a new system or operation
while giving due consideration to thecharacteristics of overseas systems and grounds
thereof.
2

U.S. terminal disclaimer system

A terminal disclaimer is a declaration todisclaim part of the terminal phase of the durationof a patent. Where an obviousness-type double
patenting rejection (non-statutory-type double
patenting rejection) is found in respect of theapplications assigned to the same person, suchrejection may be avoided by filing a terminal
disclaimer stating that patents to be granted on
the applications shall not be exercised unlessthey are owned by the same person. This
procedure allows a single person to own patents
for two inventions claimed in different
applications, one of which is obvious from theother. In the United States, for some time after
the legislation of the disclaimer system, concerns
were raised as to various adverse effects ofallowing obviousness-type double patenting, but
an understanding has finally been reached thatsuch adverse effects can basically be removed bya terminal disclaimer that requires double patents
to be owned by the same person and this system
has potential for benefiting not only the applicant
but also the public (through the disclosure of theinvention by the applicant). It may not be asnecessary in Japan as in the United States toobtain relief by filing a terminal disclaimer● 3 ●IIP Bulletin 2005

because such cases provided in Section 39 of the
Patent Law, in which two or more applications
claiming the same invention are filed, in principle,
do not occur so frequently as an obviousness-type
double patenting rejection is found in the UnitedStates. However, Japan shares with the UnitedStates the circumstances in which adverse effectsof double patenting can basically be removed by aterminal disclaimer that requires double patents
to be owned by the same person. Should it beallowable for a single applicant to obtain, by filinga terminal disclaimer, patents for two
substantially identical inventions, one of which isclaimed in a divisional application and the other inthe original application, the applicant will be able
to carry out various strategic measures to obtainpatents, including establishing the "second line ofdefense," demonstrating that the inventions
relate to a specific subject matter, obtaining rights
for inventions pertaining to conceptually adjacent
fields, expanding the scope of right, and obtaining
rights for substantially identical inventions
belonging to different categories, which willconsequently help him obtain all necessary rights.
On the other hand, concerns cannot be precluded
over indirect adverse effects such as frequent
occurrence of divisional applications, but it may
be highly possible to remove such adverse effects
by operating the requirements for division as
appropriate. Considering all these matters, it
seems to be sufficiently reasonable to positively
consider the introduction of the terminal
disclaimer system to Japan.

Sections 29-2 and 44 of the Patent Law. Dueconsideration should be given to the impact onthese provisions of any change in therequirements for identity of inventions.
For the purpose of relaxing the content
restriction on the filing of divisional applications,the requirements provided in Section 39(2) can berelaxed in the following manners. (i) By changing
the operation so as to reduce the scope of
application of "substantially identical": This has
the advantage that no legal revision is necessary,and also has an effect on the scope of "the same"as provided in Section 29-2 in addition to that in
Section 39. (ii) By eliminating the necessity tosatisfy the requirements provided in Section
39(2) if the applications claiming the same
invention are filed by the same applicant: This
enables the applicant to obtain rights for two or
more substantially identical inventions of his own.
The introduction of a terminal disclaimer like thesystem of the United States would be anotherpossible measure to prevent two ore more rightsthat have the same contents from beingtransferred separately to two or more persons.
Section 44 of the Patent Law provides that apatent application claiming two or moreinventions may be divided. This provision can beconstrued as meaning that the inventions to be
divided are different from each other. When
allowing division of applications claiming thesame invention, due consideration should also begiven to the consistency with this provision.

Consistency with the principle of one
property right for one article

4

Handling of same inventions under thedivisional
application
system:In
connection with technical standardization

Under the Civil Code, only one property
right shall exist for one article. Since a patentright is similar to a property right in nature, thisprinciple should also be followed under the Patent
Law. Furthermore, under the Civil Code, no
special difficulties arise from treating theownership for land as one property right so that it
will not belong to two or more persons as two or
more rights, whereas under the Patent Law, more
complex problems arise because a patent right isa right of intangible property granted for"technical idea." The provision of Section 39 of
the Patent Law is intended to prevent the
granting of two or more rights with the samecontents. When examining whether or not it isappropriate, as relaxation of the content
restriction on the filing of divisional applications,
to allow division of an application claiming
substantially identical inventions, we should take
into consideration the consistency with theprinciple of one property right for one article
under the Civil Code. The issue of identity of
inventions is also related to the provisions of

For the purpose of affording multiphased andsufficient protection to the patentee, allowing
divisional application claiming substantially
identical inventions is desired from theperspective of technical standardization. The
process of obtaining a patent in line with technicalstandardization is outlined as follows. Once acertain technical standard is fixed and thespecification is published, patent cannot be
obtained in respect of a new application claiming
the contents of the technical standard due to lackof novelty. In such case, the applicant makes anamendment to his other application that is
pending at that time, aiming to obtain a patentthat also covers the descriptions in thespecification. On the other hand, as the final
details of a technical standard are uncertain until
the specification is published, the person who is
working on the technical standard has to avoid
completely fixing the contents of a patent that heseeks to obtain, so that he can respond to various
changes. In particular, where technology
development has started early but technical3

IIP Bulletin 2005

● 4 ●standardization is making slow progress, theexaminer's decision may be made in respect of
the application relating to the technology before
the standardization is completed. In order toprepare for uncertainty in the future, theapplicant inevitably needs to file a divisional
application so as to maintain the possibility ofobtaining a patent based on the claims describedclosely to the description in the specification later
decided. In the present circumstances, due to thedifference in the handling of same inventions,patent can be obtained based on a divisional
application by filing a terminal disclaimer in the
United States, whereas in Japan, patent cannot be
obtained on the grounds that the invention
claimed in the divisional application is deemed tobe "substantially identical" to that claimed in theoriginal application. For this reason, it is desired
to allow the filing of a divisional application
claiming such substantially identical invention.
If filing a divisional application claiming asubstantially identical invention is allowed, aproblem will arise with regards to the tendency toobtain more patents than should have been
granted in relation to a technical standard,
because, in most cases, the share of royalty
within a patent pool for a technical standard isdetermined based on the number of patents
related to the technical standard. However, therules for the share of royalty should basically be
decided independently among the participants inthe patent pool, and there seems to be no need toregulate this issue by the Patent Law.
Amid the current globalization in businessactivities including the efforts for technicalstandardization, we should eliminate thepossibility that disadvantage (failure to obtainpatent) that would not occur in Europe or theUnited States occurs only in Japan. Also, if Japantakes the lead in introducing an advanced patent
system, it will have a favorable impact on other
Asian countries toward the amendment of theirpatent systems.

Ⅳ Introduction of the U.S. ContinuationIn-Part Application System andGrace Period
1Outline of the U.S. continuation-in-partapplication system and grace period

Under the U.S. continuation-in-part application
system, the patentability requirements relating to
the matters that have already been disclosed in
the original application are determined as of thedate of the filing of the original application
whereas such requirements relating to a newmatter added by a continuation-in-part application
are determined as of the date of the filing of thecontinuation-in-part application (the term ofpatent based on a continuation-in-part applicationis 20 years from the date of the filing of theoriginal application). On the other hand, there is agrace period of one year from the disclosure of an
invention until the filing of a patent application onthat invention, which also applies to thedisclosure by the publication of the earlier
application filed by the same applicant. With thecontinuation-in-part application system, thepublication system, and the one-year grace period
all being brought together, in the United States,
within one year from the publication of the original
application, a continuation-in-part application
disclosing a new improvement invention shall not
be rejected due to the publication of the original
application. Consequently, within the period of
two years and six months, which consists of one
year as the grace period and one year and six
months from the filing until the publication of theoriginal application, an improvement invention
and other new matter can be added by acontinuation-in-part application. This means thatthe period during which the addition of an
improvement invention is allowable in the UnitedStates is longer than that in Japan, i.e. one year
under the domestic priority system. Furthermore,
the U.S. publication system admits an exceptionthat an application may remain unpublished at therequest of the applicant, which benefits theapplicant in filing a continuation-in-partapplication based on the unpublished original
application.
2

Problems of the U.S. continuation-in-partapplication system and grace period(1) From the viewpoint of U.S. patent
practice
In the United States, a continuation-in-partapplication seems to be used, in most cases, forthe purpose of avoiding reasons for rejection
notified by the examiner. However, as moreemphasis is placed on fields in which a lot of timeis required for research and inventions are madebased on research achievements at universities,
such as the biotechnology field, the positive useof the continuation-in-part application system ismore frequently seen with the objective ofconducting R&D and filing patent applications
strategically. Where a continuation-in-partapplication is filed for the purpose of adding an
improvement to the invention disclosed in theoriginal application, it is useful for the applicant
because by filing it and benefiting from the
one-year grace period, the applicant can add an
improvement within two years and six months
from the date of the filing of the original
application. On the other hand, where acontinuation-in-part application is filed for the
purpose of avoiding reasons for rejection, it is● 5 ●IIP Bulletin 2005

also useful for the applicant because by filing it,
the applicant can avoid reasons for rejection, forinstance, within one year and six months from thefiling of the original U.S. application that was filed
one year after the Japanese application (orwithin two years and six months from the filingof the Japanese application in total). However,considering that in most cases, the applicant
receives the first official action within one year
and six months after the filing in the UnitedStates, the continuation-in-part application
system would be less useful if not for the
one-year grace period.
Thus, since the publication system wasintroduced in the United States and now that
protectionofresearchachievements
atuniversities has become increasingly important,the utility of the U.S. continuation-in-partapplication system is currently assured on thebasis of the one-year grace period. For this reason,
if we introduce a continuous-in-part application
system to Japan, it will be a clear signal for thestrengthening of protection of inventions but wewill also need to consider the introduction of the
one-year grace period in order to assure its
utility.
(2) From the viewpoint of users (Japanesecompanies)
We studied the appropriateness of theintroduction of the U.S. continuation-in-partapplication system to Japan, assuming various
possible cases such as where it is introduced
along with the one-year grace period and where
review is also made to double patenting. If thesole purpose is to protect front-runners, thecontinuation-in-part application system will not
be so effective unless it is introduced along withthe review of the grace period, as in the UnitedStates. However, from the standpoint ofprotecting third parties, this measure would cause
an excessive monitoring burden, significantly
deteriorating the balance, and increase theexamination workload. It would also bequestionable from the perspective of international
harmonization and would make the patent system
unnecessarily complicated.
From the perspective of third party
protection and international harmonization, one
possible measure would be to allow double
patenting of substantially identical inventions
along with the relaxation of the time restriction
on the filing of a divisional application. Thismeasure would help front-runners implement
diverse strategies to obtain patents (build acomprehensive and complete patent portfolio
containing all necessary patents). Also, sincesuch double patenting would not expand thescope of right beyond the bounds of thespecification and drawings attached to the original
application, it would cause less unexpected

IIP Bulletin 2005

damage to third parties and also create harmony
with international practice. As just describedabove, the most realistic idea would be to allow
double patenting of substantially identicalinventions along with the relaxation of the time
restriction on the filing of a divisional application,rather than introducing the continuation-in-partapplication system, and this would be consistent
with legal systems in Japan, which aims to be an
intellectual property-based nation.
(3) From the viewpoint of the pharmaceuticalindustry
As for the grace period, pharmaceuticalcompanies often find new uses for medical
products during clinical tests conducted at
hospitals, or find a new purpose or method ofusing a medical product in follow-up research
conducted after the release of the product. They
make an effort to maintain the novelty of theirinventionsbyconcluding
confidentiality
agreements with the subjects of clinical tests.
However, through the development of theconcept of informed consent, subjects of clinicaltests have been given more opportunities to fully
understand the details of the tests in which they
participate, and so it cannot be denied thatinventions made by pharmaceutical companies
are likely to become publicly known against theirwill. Therefore, we should consider accepting thedisclosure of pharmaceutical inventions in thismanner as an exception to lack of novelty of
invention. Also, clinical data accumulated after
the release of a medical product often relate to its
combination with other medical products or doseintervals and dosage. Given the difficulty inconcluding a confidentiality agreement orproviding proof to avoid lack of novelty, it isnecessary to consider accepting the disclosure ofpharmaceutical inventions in this manner as an
exception to lack of novelty of invention.
As for the continuation-in-part application
system, pharmaceutical companies often employ
the method of researching backup compounds forseveral years in light of the risk that thedevelopment of the intended compound might becancelled. Even if the continuation-in-partapplication system were introduced to Japan, due
to the publication system, it would only grantapplicants an extra six months in addition to thetime granted under the domestic priority
application system. However, it would become
more usable for applicants if the length and scopeof objects of the grace period were expanded. On
the other hand, from the standpoint of third
parties, the introduction of the continuationin-part application system would induce
successive addition of improvement inventions,and it might also cause applications to be, in
effect, determined as of earlier dates, if thewritten description requirements were relaxed.

● 6 ●Consequently, we should discuss the introductionof the continuation-in-part application system
while giving due consideration to the adherence
to the first-to-file principle and the appropriate
procedures for determining rights.
(4) Use and problems of the continuationin-part application system in the UnitedStatesEven universities and companies, and inparticular those that seem to frequently use thecontinuation-in-part application system, do notrecognize themselves as frequently using thesystem. They understand that their frequency ofuse of the system increased only as a result ofcarrying out the necessary procedures from thefiling and until the patent issue depending on thecharacteristics of the development fields concerned(especially biotechnology and pharmaceuticalfields), rather than aiming to use the system forstrategic purposes, and they do not necessarily
regard it as a good system. Furthermore, they
consider the continuation-in-part application
system to have become less attractive due to theceiling of the patent term and the introduction of
the publication system, and they also share acommon understanding that the continuation-inpart application system is likely to increase thepossibility to place them at a disadvantage inlitigation and also has a significant demerit ofreducing the patent term. When considering the
introduction of a system equivalent to the U.S.
continuation-in-part application system to Japan,
we should compare the situations in Japan andthose in the United States from a broader
perspective, focusing on the difference between
the first-to-invent principle and the first-to-fileprinciple and the difference between the JPO andthe USPTO in their role and position, rather thanmerely comparing the Japanese patent systemand the U.S. patent system.
(5) Opinions of U.S. experts on thecontinuation-in-part application system
Though a continuation-in-part application is
filed for the purpose of adding a new matter, theclaims supported by the original application,
including those "inherently" supported, shall beentitled to the benefit of the filing date of theoriginal application under Section 120 of the
Patent Law. Claims "inherently" supported by theoriginal application refer to claims that were notdescribed in the original application but can berecognized by those skilled in the art as if having
being described in it. In order for a matter to be
regarded as being "inherently" described in theoriginal application, it is not sufficient that thematter is likely to be realized. If it seems certain,
as a natural consequence from what is disclosed
in the specification of the original application, thatthe matter can be realized, such disclosure will
suffice.

3

Domestic priority systems in foreigncountries

Possible measures to promote front-runners
in strategically obtaining patents would be torelax the time restriction of domestic propriety
and introduce the provisional application system.
From this standpoint, we studied domestic
priority systems and provisional application
systems in foreign countries, an in particular, thebackgrounds for the introduction of thesesystems. The countries targeted in our study
introduced these systems for the common
primary purpose of correcting inequality in thetreatment between foreign nationals entitled tothe benefit of priority under Article 4 of the Paris
Convention and their own nationals, and to thisend, set the priority period as one year from thefiling of the original application. When we discuss
the review of the Japanese domestic priority
system with the aim of protecting front-runners,
we should give due consideration to harmonization
with the systems of other countries.

Ⅴ Period of Response to
Notification of Reasons
Refusalthefor

As for the extension of the period of
response to the notification of reasons for refusal,
considering that while there is a need andbenefits to an extension, measures should also betaken to prevent moral hazards, so it may beappropriate to discuss the issue toward allowing
the extension on the basis of progressive
payment of fees depending on the length ofextension. Overseas systems can be used as
examples when designing the extension system.
In the case of the failure to respond within the
period of response, it is recommended toconstrue the application to have been abandoned
or withdrawn, rather than making a decision torefuse the application. Also, as for the disparity
between Japanese nationals and foreign nationals
in terms of the length of the period of response,
we should discuss the issue toward eliminatingsuch disparity.

Ⅵ Relationshipbetweenthe
Divisional Application Systemand the System of Appeal Trial
against Examiner's Refusal
In the relationship between the divisional
application system and the system of appeal trial
against the examiner's refusal, the movement
toward relaxing restrictions of the divisional
application system will provide the opportunity toensure appropriate utilization of both systems
while fully realizing the purposes of the systems,● 7 ●IIP Bulletin 2005

but it will also bring about a lot of issues to be
discussed on the system design and operation. In
the future, based on the view arguing thatdivisional application should be allowed within acertain period of time after the decision of refusal,
we should further proceed with the study, while
giving consideration to the impact of the relaxed
requirements for divisional application, thesegmentation between divisional application andappeal trial, the appropriateness of divisionapplication during the pendency of an appeal trial,
and the relationship between examination andappeal trial.
(Researcher: Hiroo Maeda)

IIP Bulletin 2005

● 8 ●