EPO から分割出願条件について規定する EPC 規則 36 についての意見

EPO から分割出願条件について規定する EPC 規則 36 についての意見
現行のEPC規則 36やさらなる改正の必要性に関する意見の提出を受け、さらに、代替案
(2)意見(案)の内容 (【】内がEPOの質問事項)
【1.24 ヶ月の分割出願期限の導入はどのような影響を与えたか。】
【2.現在の EPC 規則 36 の貴殿の総合的な評価はどうか。】
【4.現在の規則で再考すべき点はあるか。例えば、期限を 24 ヶ月から 48 ヶ月又は 60 ヶ
期限の単なる延長では上記問題を解決できない。よって EPC 規則36は元のような制
にすべきである。制度調和の観点から、EPO は他国の規則を参照すべきでもある。
せるためだけの分割に対して EPO が取り組むことができると思うか。
How has the introduction of the time limits for filing divisional applications affected you?
(It would be useful to learn about your background and / or your professional activity, as well as
to get some insights into the extent to which your comments are the result of direct experience)
Dear Sirs,
We, the Japan Intellectual Property Association, are a private user organization established in Japan in
1938 for the purpose of promoting intellectual property protection, with about 900 major Japanese
companies as members. When appropriate opportunities arise, we offer our opinions on the intellectual
property systems of other countries and make recommendations for more effective implementation of the
systems. We would like to offer our comments as follows. Your consideration of them would be greatly
Sincerely yours
Takeshi Ueno
Japan Intellectual Property Association
There are some cases where we have to file a divisional application as a precautionary filing, when the
parent application is still pending. This has resulted in an increase of cost and workload for due date
management for the applicants as well as an increase of workload for monitoring divisional applications for
third parties.
What is your overall assessment of current Rule 36 EPC?
We think that it will not bring any benefits to either applicants or third parties. Furthermore, it is not
user-friendly, because there are many base dates that must be reckoned.
What are, in your opinion, the most positive aspects of the current regime? Would it be possible
to reinforce them? How?
We don’t foresee any positive aspects.
Are there aspects of the Rule you think should be reconsidered? For example, should the time
limits be extended from 24 to 48 or 60 months?
Because the consideration for divisional applications is influenced by the term of the examination for the
parent application or the status of the parent application which are variable and unpredictable, discussion at
the total term is not useful. The extension of the term does not seem to address the above problems.
We think that Rule 36 should be returned to the former rule. That is to say, the term should be based on the
pending term of the parent application. From the view of harmonization, the EPO should refer to the rule in
other countries regarding the term for divisional applications.
Do you think that further amendment of the Rule would help to optimise it? If so, could you
please outline your preferred option?
No, we don’t. It is difficult for the users to understand even the current rule.
What kind of action other than legal measures (e.g. administrative or financial ones) do you
think the EPO could take that would effectively address the issue of divisionals filed merely in
order to prolong pendency?
We think that the EPO should shorten the term of examination.