Japanese Intellectual Property, Patent and Trademark Law Firm in Japan

Under Japanese patent law, an amendment in response to a non-Final OA sometimes triggers a Final OA.  An applicant should note that an amendment in response to a Final OA is limited to the narrow scope to utilize the examination results that have been already obtained in order to secure an immediate and an appropriate patenting.
In this post we provide an introduction of the permissible scope of an amendment in response to a Final OA.

Permissible scope of amendment in the Japanese patent practice

The following is the list of permissible scope of an amendment of description, claim or drawing attached to the application at specific stages.

Stage	Permissible scope
(1) Voluntary amendment, (2) Amendment in response to a First OA, (3) Amendment in response to a Final OA or Amendment at the filing of a request for an appeal against examiner’s decision of refusal	(a) Addition of new matters is not allowed.  An amendment should be done within the scope of the matters stated in the originally filed application.
(2) Amendment in response to a First OA, (3) Amendment in response to a Final OA or Amendment at the filing of a request for an appeal against examiner’s decision of refusal	(b) “Shift Amendment” is not allowed.
(3) Amendment in response to a Final OA or Amendment at the filing of a request for an appeal against examiner’s decision of refusal	(c)An amendment of the scope of claims shall be limited those for the following purposes:   (c-1) cancel of claims;   (c-2) restriction of claims in a limited way;   (c-3) correction of errors;   and   (c-4) clarification of an ambiguous statement.

An applicant should note that in addition to the items (a) and (B), the limitation of item (c) is also applied to an amendment in response to a Final OA or Amendment at the filing of a request for an appeal against examiner’s decision of refusal.

Brief comments on each item

Here are the brief comments on each item (a), (b) and (c).

(a) Prohibition of addition of new matters (Article 17bis(3))
  This is a very basic scope applied to all amendments of description, claim or drawing attached to the application at any stages.  Please refer to our previous post on “New Matter”.

(b) Prohibition of “Shift Amendment” (Article17bis(4))
  This is a unique requirement in the Japanese patent practice which is applied to amendments in response to OAs.  The Examination Guidelines (revised as of July 1, 2013.) have relaxed the criteria to determine whether an amendment in response to an OA is a “Shift Amendment”.  The detail information of the new criteria of “Shift Amendment” is provided on the JPO’s website.

(c) Limitation applied only to an amendment in response to a Final OA
  As described above, the object of the limitation is to narrow the scope of an amendment to utilize the examination results that have been already obtained in order to secure an immediate and an appropriate patenting.  Here we provide the information on the item (c-2) since it may be most notable for foreign applicants.

(c-2) Restriction of claims in a limited way (Article 17bis(5)(ii) and (6))
  Permissible:  A claim comprising A, B and C → A claim comprising A, B and c  (c ∈ C)
  (limitation of existing features in the claims) 

  Not permissible:  A claim comprising A, B and C → A claim comprising A, B, C and D
  (addition of new features to the claims)
  * This limitation is rather unique in the Japanese patent practice; therefore foreign applicants should note this for an amendment in response to a Final OA or at the filing of a request for an appeal against examiner’s decision of refusal. 

  In addition to the above, the amended claims should be independently patentable (Article 17bis(6))

 

Please refer to “Examination Guidelines for Patent and Utility Model in Japan” for further information.
http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/Guidelines/3.pdf

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

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