Patent: The last opportunity for a divisional patent application after a Decision of Refusal is issued

Patent: The last opportunity for a divisional patent application after a Decision of Refusal is issued

After a Decision of Refusal is issued…

Attention!

(1) After a Decision of Refusal is issued, amendments can be filed only together with the Appeal. However, in such a situation, amendments will be limited to:
i) Canceling the claims, ii) Restricting description of current claims, and iii) Clarifying unclear description (only if it has been indicated as a reason for rejection). No new issue can be added.
(2) Further, it is possible to file divisional applications at the time of filing the Appeal. New claims can be also submitted with the divisional application since amendments will not be limited as described above. (Divisional applications are possible for the applications, whose filing (priority) date are after April 1, 2007, within four months from the issued date of the Decision of Refusal without filing the Appeal.)
(3) At the stage of the Appeal, if an argument is submitted by the applicant without an amendment, further examination is carried out by the Appeal Examiner instead of the current Examiner. Please note, depending on the situation, cases proceed to an Appeal Decision without any opportunity of filing an amendment or a divisional application. In a suit against the Appeal Decision, further amendment or divisional application is no longer possible anymore.
(4) After the Appeal is filed, there is no opportunity for further amendment unless a new reason for rejection is notified. In addition, there is also no opportunity for a divisional application unless the new reason for rejection is notified.

Please be aware that the current stage could be the last opportunity for an amendment and a divisional application.

Alex

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