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Q16. Requirements for Divisional Application

Q16. Requirements for Divisional Application
(1) What are the other requirements to file a divisional application besides a time period?
(2) What does an applicant filing a divisional application after April 1, 2007 have to pay attention to?
(3) In a divisional application, is it necessary to submit a priority document, even though it is submitted in its parent application?

A16. (1a) In the Patent Law, a divisional application satisfying the following requirements has the benefit in which the divisional application is deemed to have been filed on the filing date of its parent application (Art.44(1)).
 (1a-i) The parent application includes two or more inventions; and
 (1a-ii) Only a part of the inventions in the parent application is claimed in the divisional application.
If a divisional application does not satisfy the above-requirements, the divisional application cannot obtain the benefit. In this case, the filing date of the divisional application is the actual filing date of the divisional application.
 (1b) In the Examination Guidelines issued by the JPO, the above-requirements (1a-i) and (1a-ii) are interpreted as follows:
 (1b-i) An invention claimed in a divisional application has to be described in the specification and drawing at the time when the divisional application is filed;
 (1b-ii) (An) invention(s) claimed in a divisional application is/are not all of inventions 9
described in the specification and drawing at the time when the divisional application is filed; and
 (1b-iii) A divisional application must not include a new matter not disclosed in the original claims, specification and drawings of its parent application.
 (1c) If a divisional application filed in the time period according to the aforementioned A23.(1c-i or 1c-ii), the subject matter which used to be claimed in the original specification but not claimed in the last specification immediately before the Office Action or Decision of Rejection cannot be claimed in the divisional application. This is because the subject matter not claimed in the last specification must not be recaptured by any amendments.
 (2a) In the case where a divisional application whose parent application was filed on or after April 1, 2007, even though the Office Action is not made FINAL, there is a case the Office Action is substantially treated as FINAL as follows.
If a reason of rejection notified in an Office Action in a divisional application is the same as the reason already notified in the prosecution in its parent application, even though the Office Action is not FINAL, an amendment for the Office Action is restricted in accordance with the manner of amendment in the case of a FINAL Office Action (Art.17-2(5), 50-2).
 (2b) Regardless of the filing date of the parent application, an applicant who files a divisional application has to submit a Statement. In the Statement, the applicant has to state:
 (2b-i) If the divisional application has a portion modified from its parent application, that the modified portion is substantially included in the description of the original specification of the parent application;
 (2b-ii) That the rejection notified in the prosecution in the parent application has been already overcome; and
 (2b-iii) That each invention claimed in the divisional application is not identical to any inventions claimed in the parent application.
 (3) No. As long as documents (e.g. a priority document, a written statement required in the article for exceptions to lack of novelty) are submitted in its parent application, it is unnecessary to submit those documents in the divisional application (Art.44(4)). The documents submitted in the parent application are deemed to be submitted on the actual filing date of its divisional application.