A divisional application allows you to shift the scope of your invention at any time, as long as you are within a permissible period for filing a divisional.
In other words, you may broaden, reframe, or laterally expand your claim scope—as long as it remains within the disclosure of the original application.
The sole requirement for a valid divisional application is whether the invention claimed in the divisional is supported by the description or drawings of the original application.
This determination is made by holistically reviewing the entire specification and drawings.
This means that the judgement is made more flexibly than a strict, literal interpretation of the wording would suggest.
There are also significant timing advantages regarding when a divisional application may be filed:
(1) Within 3 months from the date of service of a notice of decision of refusal (Article 44(1)(iii));
(2) Within 30 days from the date of service of a notice of decision to grant (Article 44(1)(ii)).
・Particularly, filing a divisional at the time of the grant decision can be strategically powerful.
・Moreover, if you request an extension of the time limit for paying the patent registration fee, the deadline for filing a divisional is also extended by 30 days (fee: JPY 2,100).
Key Advantages
★ You can obtain rights in a scope different from that examined in the original application.
→ This enables you to respond flexibly to changes in your company’s business strategy after the original filing.
→ You can adjust or broaden your claim scope to counter the movements of collaborating partners or competitors.
To be continued in Part 3.