Japanese Intellectual Property, Patent and Trademark Law Firm in Japan

When can I file an amendment for my patent application?

(1) You can file an amendment at any time until you receive a first office action (a notice of reasons for rejection) from the Japan Patent Office.
(2) After you receive an office action from the Japan Patent Office, you can file an amendment for your patent application within three months from the day of the receipt of the office action.
(3) After you receive a decision for final rejection from the Japan Patent Office, you can file an amendment for your patent application within four months from the day of receipt of the decision only when the amendment and an appeal trial against the decision are filed at the same time.  

 

What are the substantive requirements for amendments for my patent application?

(1) You are not allowed to add “new matter” to your patent application by an amendment.  In other words, an amendment needs to be supported by the disclosure of your application originally filed.
Failure to fulfill this requirement could be the reason for rejection.
(2) When you make an amendment to claims after receiving an office action from the Japan Patent Office, the amendment that significantly shifts the examined inventions to the other unexamined inventions is not allowed (so-called “Prohibition of Shift Amendment”).  More specifically, all inventions recited in claims have to fulfill the requirements of unity of invention before and after the amendment.
Failure to fulfill this requirement could be the reason for rejection.
(3) When you make an amendment after receiving a final office action (a final notice of reasons for rejection) or a decision for final rejection from the Japan Patent Office, your amendment is only allowed for the following purposes:
1. Deletion of a claim;
2. Restriction of the scope of a claim;
3. Correction of errors; and
4. Clarification of an ambiguous statement.
Failure to fulfill these requirements, the amendment shall be dismissed.  In addition, for the purpose of item 2, the amended claim must be patentable. 

Is it possible to correct an error in Japanese translation of my PCT application?

You can make an amendment to Japanese translation of your PCT application in order to correct an error therein.  In this case, you have to explain the reason of the incorrect translation in a statement.


If you need more information in this matter, please contact us at http://en.aigipat.com/contact/index.html.

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