1. Excerpts from the decision (“Wiring Box” case decision)
“The following are the substantive requirements to find the divisional application to be legal: [i] the description or drawing of the original application includes two or more inventions; [ii] the invention contained in the new application is part of the invention stated in the application or drawing of the original application; and [iii] the invention contained in the new application falls within the matters stated in the original description, etc., attached to the original application. In order to deem that the application in question (the “Application”), which is the fifth generation counted from the first application, was filed at the time when the first application was filed, the Application, fourth application, third application and second application must respectively satisfy the requirements for divisional application prescribed in [i] to [iii] above and the Invention must fall within the scope of matters stated in the original description etc.”
2. If amended after filing a child application ⇒ Amendment has retroactive effect
This point is well established by court decisions. Even if the child application did not add a new matter at the time of filing, if the amendment was made after filing and resulted in the addition of a new matter, the retroactive effect of the amendment makes the child application illegal for violating the division requirement/added new matter, and the filing date of the grandchild application is not retroactive to the filing date of the parent application.
・Tokyo District Court Case No.14649 (Wa) 2004“The call control system of the telephone” case (Presiding Judge Shitara).
・Tokyo High Court Case No.65 (Wa) 2003 “The buried concrete object” case (Presiding Judge Shinohara)
・Oosaka High Court Case No.2776 (Ne) 2002 “The buried concrete object” case (Presiding Judge Wakabayashi)
3. Some Consideration (Measures to be taken when a child application is refused for addition of new matter)
In light of the court decisions introduced above, when a child application is refused for addition of a new matter, the child application should never be left unexplored when it is further divided into a grandchild application, and even if the child application is finally refused, an amendment should be made to eliminate the reason for refusal for addition of a new matter.
Writer: Hideki TAKAISHI
Supervising editor: Kazuhiko YOSHIDA
Attorney at Law & Patent Attorney
Nakamura & Partners
Room No. 616, Shin-Tokyo Building,
3-3-1 Marunouchi, Chiyoda-ku,
Tokyo 100-8355, JAPAN