1 LAW DIVISION PATENT DIVISION TRADEMARK & DESIGN DIVISION ACCOUNTING & AUDITING DIVISION YUASA AND...

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YUASA AND HARALAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING


Pre-meeting of American Intellectual Property Law Association Mid-Winter Institute

January 27 - 28, 2004 at La Quinta, California, U. S. A.

Revision of Examination Guidelines Regarding Amendments

Kazuaki OkimotoPatent Attorney

YUASA and [email protected]

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Summary of revision of Examination Guidelines

1. Scope of Amendment

The Japanese Patent Office (JPO) may allow amendment of claims, descri

ption or drawings based on “a matter which is inherently presented in the de

scription, the claims or drawings originally attached to the request” in applyi

ng revised Examination Guidelines.

Under the old Examination Guidelines, the scope for amendment at this sta

ge is severely restricted. Any amendment must be clearly and unambiguous

ly supported by the specification. In the subject case, the base text is the spe

cification as of the filing date.

Kazuaki Okimoto mail to: [email protected]

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YUASA AND HARALAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING Summary of revision of Examination Guidelines

2. Lawful amendments

The JPO may allow amendment of claims having generic concept or more

specific concept by a total review of the amendment alongside the embodim

ents separately described in the description, the claims or drawings originall

y attached to the request and the other matters, for example, the problem to

be solved by the invention.


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Basic concept of Revision of Examination Guidelines

(1) An amendment which goes beyond “a matter presented in the descriptio

n, the claims or drawings originally attached to the request”, including a ne

w matter, is not allowed.

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(2) “A matter presented in the description, the claims or drawings originally

attached to the request” includes “a matter which is expressly presented in t

he description, the claims or drawings originally attached to the request” as

well as “a matter which is inherently presented in the description, the claims

or drawings originally attached to the request”.

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(3) To meet the requirement “a matter which is inherent in the description, t

he claims or drawings originally attached to the request”, the matter amende

d must be such that those skilled in the art would be able to infer from the d

escription, the claims or the drawings of the specification in view of commo

n general technical knowledge even when the matter is not presented in the

description, the claims or drawings.

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(4) A matter which is intended to amend to the specification as a well-know

n art or commonly used art must also be the matter which those skilled in th

e art would understand as presented in the description, the claims or drawin

gs specification in view of common general technical knowledge even when

the matter is not presented in the description, the claims or drawings.

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(5) It is admissible to assert a matter as inherently presented in the descriptio

n, the claims or drawings from the plural parts of descriptions originally atta

ched to the request.

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Amendment with generic concept or more specific concept

The following amendments are recognized to be matters presented in the

description, the claims or drawings originally attached to the request.

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Case 1: Even if the invention is amended to delete a part of the specific

matter defining the invention and to give the invention generic concept, it is

apparent that it does not introduce a new technical meaning. It is

recognized that a matter deleted is inherently added to the claims from the

description, the claims or drawings originally attached to the request.

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Case 2: It is recognized that the invention having a specific matter defined

by the amended claims is presented in the description, the claims or

drawings, when reviewing totally the amendment alongside the

embodiments separately described in the description, the claims or drawings

originally attached to the request and other matters, for example, the

problem to be solved by the invention.

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Applicable patent applications

This revised Examination Guidelines will be applied to patent applications

filed on or after January 1, 1998.

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Expecting amendments allowable

Amendment of claims with generic concept or more specific concept

Amendment by deleting a group selected from Markush type claim

Amendments with numerical limitation

Amendments by disclaimer.

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The JPO provides some examples of amendment on its web site. All

examples allowed are amendments which are made within “a matter

presented in the description, the claims or drawings originally attached to

the request”.

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Whether the amended matter is recognized to be within “a matter presented

in the description, the claims or drawings originally attached to the request”

is judged on a case by case basis.

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Practitioners may make more amendments under the new guidelines than

under the old ones. Please bear in mind that under the old guidelines any

amendment must be clearly and unambiguously supported by the

specification as of the filing date.

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Applicable Patent Laws

The requirements and restrictions on amendments to patent specifications,

including claims, have been changed twice in recent last years.

Consequently, the filing date determines which of the three different

versions of the patent law the JPO applies to a particular application.

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Applicable Patent Laws

The latest change in the patent law that affects amendments went into effect

on July 1, 1995, and applies to applications filed on or after that date.

Earlier applications are governed by either the law in effect from January 1,

1994, to June 30, 1995, or the law as it stood on or before December 31,

1993. Since the more recent versions of the law are likely be of most

interest to you, this summary will discuss the current amendment

requirements.

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Current practice- Amendment to Applications Filed on or after July 1, 1995

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Timing of Amendments

(1) Before receiving a Notice of Allowance or a Notice of Reasons for Reje

ction

The revision of the law that went into effect on July 1, 1995, dramatically ea

sed the limitations on the timing of amendments. The specification and draw

ings in these applications may now be amended and divisional applications f

iled at any time prior to the transmittal to the applicant of a notice that a pate

nt is granted or that reasons for rejection exist

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(2) After receiving a Notice of Reasons for Rejection

If a Notice of Reasons for Rejection has been sent, the applicant must respo

nd within the time limit set, generally, for applicants domiciled outside Jap

an, three months, which may be extended once for an additional three mont

hs. The official fee for the extension is 2,100 yen. Japanese applicants are a

llowed 60 days with no extension.

When a final Notice of Reasons for Rejection is issued, applicants are allow

ed to also make amendments within the time limit set, which is usually the s

ame as for the initial Notice of Reasons for Rejection.

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(3) After receiving a Final Rejection

If the JPO issues the final rejection against the application, the applicant may file

an appeal against the final rejection to the Appeal Board of the Patent Office wit

hin 90 days from the certified copy of the decision. Once the appeal is filed, the

applicant has an additional 30 days (unextendible) to prepare and file an amend

ment designed to overcome the reasons for rejection. If an amendment is filed, t

he original examiner re-examines the application to determine if the amendment

overcomes the reasons for final rejection. If so, he or she reverses the previous f

inal rejection decision and issues a decision to grant a patent. If not, the applicat

ion is transferred to the Appeal Board, which considers the amendment and the a

rgument in the appeal brief.

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Scope of Amendments after receiving a final Notice of Reasons for Rejection

We expect a more flexible way of amending the claims, the description and

drawings in applying the new guidelines.

After receiving a final Notice of Reasons for Rejection, however, the

amendment is limited to the following according to Section 17bis (4) of the

Patent Law:

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(i) the cancellation of the claim or claims;

(ii) the restriction of the claim or claims;

(iii) the correction of errors in the description;

(iv) the clarification of an ambiguous description.

Scope of Amendments after receiving a final Notice of Reasons for Rejection

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Thank you for your attention !

Kazuaki OkimotoPatent Attorney

YUASA and [email protected]

1 LAW DIVISION PATENT DIVISION TRADEMARK & DESIGN DIVISION ACCOUNTING & AUDITING DIVISION YUASA AND...

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