New matter problems under JP laws

MARCH 1, 2002
HARAKENZO WORLD PATENT & TRADEMARK PATENT LAW FIRM
Patent and Trademark Attorney Kenzo HARA
Patent and Trademark Attorney Ryuichi KIJIMA

We have been in service of handling a number of patent applications for filing in Japan (entering into the national phase). For the majority of the PCT applications which we take pleasure in handling, we have been kindly provided in advance with an English translation of the specification and, if any, an Amendment, in addition to the originally filed specification. This has helped us tremendously in cutting the cost of translation.
As you may be aware, English is more familiar to us than other foreign languages.
For your information, the majority of our total staff members are capable of translating from English into Japanese.
This organization of our firm enables us to offer a reasonable translation fee, when provided with an English translation, for the preparation of a Japanese translation of the specification/Amendment of PCT applications, which is required for entering into the national phase in Japan.
In regard to the preparation for entering into the national phase or preparation of a Japanese translation, there have been some concerns over the Japanese Patent Law and its practice.
Please let us now explain our concerns for your information and reference, along with our suggestions which we believe are effective in overcoming these concerns. The purpose of our suggestions here is to help you obtain strong patents which can be fully enforced without any trouble at low cost.
Please review our suggestions set out below to decide whether or not they suit your requirements. It would be our biggest reward if the following information could help you in any ways for your benefit.

[INDEX]
I. A SUMMARY
OF OUR SUGGESTIONS
II. CONCERNS OVER ADDITION OF NEW MATTER
III. CONCERNS OVER INCONSISTENT USE OF TERMS
IV. CONCERNS OVER ENFORCEMENT OF PATENT RIGHTS
V. APPENDIX A - D
VI. REFERENCES

I. A SUMMARY OF OUR SUGGESTIONS
A. An English translation of PCT applications and of any accompanying Amendment (under PCT Article 19 and/or 34) of the originally filed specification should preferably be a literal translation of the originally filed specification.
B. In a PCT application, an Amendment made under PCT Article 19 and/or 34, and a Voluntary Amendment which may be submitted after entering into the national phase should preferably contain terms and phrases which were used in the description of the PCT application as filed.
C. An English translation of PCT applications and of any accompanying Amendment (Article 19 and/or 34) of the originally filed specification, which we use to prepare a Japanese translation, should preferably use the same technical terms and phrases as consistently as possible throughout the description and claims of the specification.
D. In case where you instruct us to translate an Amendment (Article 19 and/or 34) or a Voluntary Amendment of a PCT application and file it with the JPO, it would help us greatly if you could inform us where in the originally filed specification supports the amendments, for example, by underlining the relevant parts of the specification. Our intention here is to reduce the risk of the amendments from being pointed out as "addition of new matter" by the Examiner. This can be done by indicating the parts of the originally filed specification supporting the amendments, and submitting it as a supplementary explanation with the Amendment (or a Japanese translation thereof) to the JPO, and optionally by stating and submitting it in a Written Opinion with the Amendment.
E. In the event where you have no alternative but respond to a notification of reasons for refusal by introducing technical matters which are not described in the originally filed PCT application , we respectfully recommend that you introduce the technical matters in a Written Opinion , rather than amending the Japanese translation of the specification (particularly the claims) which was filed when entering into the national phase, so that the Examiner's alleging that the introduction of the technical matters will violate the requirements for amendments can be avoided.
F. We would like to remind you that under current Japanese Patent Law, PCT applications must enter into the national phase before the expiration of 20-months or 30-months from the priority date, and a Japanese translation must be submitted before the expiration of 20-months or 30-months from the priority date. These time limits cannot be extended under any circumstances.
[Law Revision] The Diet currently in session is set to discuss a bill to extend the time limit for entering into the national phase to 30-months uniformly.
The bill also intends to set a 2-month period of grace for the time limit for submitting a Japanese translation.
[Note] As to the PCT revised provision concerning the extension of the time limit of PCT applications for entering into the national phase in Japan up to 30 months from the priority date, the Japanese Patent Law must be revised before the PCT revised provision is implemented.
Currently, the Japanese government has not yet passed legislation for implementing the PCT revised provision. Accordingly, the PCT revised provision is not in compliance with the Japanese Patent Law, so that the PCT revised provision will NOT be effective on the 1st day of April, 2002 . We would like to keep you updated on this matter and inform you as soon as the PCT revised provision becomes effective in Japan.
G. In the following we have listed some of the major patent-related bills which are to be introduced in the Diet currently in session. We hope that the following information will help you in devising your future patent strategies.

(1) A bill to revise the provision of how inventions are carried out
The Patent Law will be revised to protect a program per se . The provision under Section 2(3)(i) will be revised to read as a "product invention" includes a "program", and software itself will
be protected*. *The current Patent Law protects "product invention" and "process invention". Software is currently regarded as a "product" and protected if it is carried in a device or a storage medium. The current Patent Law, however, is not decisive with regard to software which is traded on a communication network without a carrier. The Patent Law will be revised to widen a scope of patent rights to further cover the act of, for example, distribution on a network.
(2) A bill to extend and supplement applicability of the law concerning contributory infringement Under current law, only the act of supplying parts or material specifically designed for the product or manufacture of a patent is considered as contributory infringement. The revised law will provide that the simple act of supplying any parts will also be considered as contributory infringement if the act is intended to infringe the patent with bad faith.
(3) A bill to introduce the system of Information Disclosure Statement
1.Patent Law Section 36(4), which lays down requirements for a description of the invention, will be revised to require applicants or inventors to describe in the specification information (e.g., serial number of the documents) which identifies any related prior inventions (Section 29(1)(iii); known publications) which he or she was aware of at the time of the filing of the application.
No submission of the documents will be necessary.
2.Where the requirement 1. for information disclosure is not met, the Examiner shall contact the applicant as required before sending a notification of reasons for refusal to request the applicant to satisfy the requirement. The applicants shall respond to the Examiner's request by way of a Response (an Amendment and/or a Written Opinion).
3. A failure to satisfy the requirement 2. results in a notification of reasons for refusal. However, a failure to obey the duty of information disclosure does not become a reason for opposition or invalidation

II. CONCERNS OVER ADDITION OF NEW MATTER
1. New Matter beyond the Original Specification of PCT Applications
(1) We have seen some cases where an English translation of the specification of PCT applications which was prepared in accord with your examination guidelines is not entirely consistent with the originally filed specification*1). Consequently, when we prepare a Japanese translation based on the English version which was prepared in accord with your examination guidelines, it is most likely that the language used in the Japanese translation may be recognized as addition of new matter in Japan, even though it is not a concern in your country.
*1) It is our policy to prepare a Japanese translation from the English version according to your instructions, but, to save the cost of translation, we do not cross check the English version with the originally filed specification to see if the languages accurately match. We refer to the originally filed specification only when it is seemed to us that we cannot catch the meaning of the English version or it is seemed to us that the English version has a part which is not naturally translated.
We would like to note here that handling of new matter by your Patent Office is relatively tolerant in terms of how it is interpreted. On the other hand, the criteria used by the JPO to judge addition of new matter is far more strict than that adopted by your Patent Office, which necessitates us to prepare a literal Japanese translation to preserve the content of the originally filed specification. Therefore, additions of terms and phrases which may be acceptable by your Patent Office are usually judged as addition of new matter by the JPO.
(2) We generally submit "a written correction of incorrect translation" to the JPO when the JPO recognizes that the Japanese translation (national form paper) contains new matter beyond the content of the originally filed specification. To submit "a written correction of incorrect translation", aside from the fact it is costly, the applicant must prove, both objectively and reasonably, that the incorrect translation in the Japanese translation (national form paper) was caused by an accident or a mistake in the process of translation from the originally filed specification into Japanese.
(3) The addition of new matter in a Japanese translation (national form paper) beyond the originally filed specification becomes a reason for refusal of the application in the subsequent prosecution of the application by the JPO. It also becomes a reason for opposition or invalidity when the application mistakenly matures into a patent [Appendix A]. The possibility of the Japanese national phase application whose translation contains new matter to mature into a patent is actually high because the Examiner carries out examination based solely on the Japanese translation and does not compare the Japanese translation with the originally filed specification in the prosecution.
A patent with addition of new matter has always a possibility of being attacked by a third party by way of an opposition or a trial for invalidation, which obviously makes it difficult to enforce the patent right.

2. New Matter in the Original PCT Amendment
(1) When a PCT Amendment (Article 19 and/or 34) contains new matter which is not described in the originally filed specification , and when a Japanese translation is prepared in accordance with the originally filed specification or English translation of this Amendment, the matter contained in the Amendment will be judged as new matter by the JPO, despite the fact that the Amendment was entered in the international phase, and it becomes a reason for refusal, opposition, or invalidation [Appendix B].
In other words, a Japanese translation of a PCT Amendment (Article 19 and/or 34) may be considered to contain new matter when the Amendment includes terms or phrases which were not used in the originally filed specification and added, for example, for the purpose of improving the content of the specification, even when the Amendment was entered in the international phase.
(2) The JPO does not compare a Japanese translation of the specification with the originally filed
specification. However, the Examiner does compare a Japanese translation (national form paper) of the International specification with a Japanese translation of the Amendment (Article 19 and/or 34). Therefore, there will be a notification of reasons for refusal which points out the addition of new matter when the matter contained in the Amendment (Article 19 and/or 34) is judged as new matter by the Examiner with respect to the Japanese translation (national form paper) of the specification.
It should be noted however that the "new matter" in the Amendment (Article 19 and/or 34) does not become a reason for opposition or invalidation of a patent when the Examiner grants a patent to the application without being aware of this new matter.

3. New Matter in a Translation of Amendments
(1) The JPO requires that the terms and phrases used in a Voluntary Amendment, which is submitted to the JPO after the entry into the national phase, and in a PCT Amendment and its Japanese translation, be described in the originally filed specification as well as in its Japanese translation (national form paper) which was filed when entering into the national phase.
Inclusion of new matter will cause a reason for refusal when the content of the Japanese translation of the PCT Amendment and of the Voluntary Amendment submitted in the national phase are not described in the Japanese translation (national form paper) which was filed when entering into the national phase.
[Note] With regard to "PCT Amendment" in the international phase and "Voluntary Amendment" in the national phase,
1. addition of new matter with respect to the originally filed specification becomes reasons for refusal, oppositin, and invalidation, whereas
2. new matter added with respect to the Japanese translation (national form paper) in the national phase but not with respect to the originally filed specification becomes a reason for refusal but not reasons for opposition and invalidation.
(2) As to the judgement explained above in (1), it would be relatively easier for the Examiner to decide whether new matter is included or not because the Examiner only needs to compare Japanese texts (in the case of a Voluntary Amendment, it would be a simple comparison between its Japanese translation and a Japanese translation of the originally filed International specification).

4. Problems in Responding to a Notification of Reasons for Refusal concerning Addition of New Matter in PCT Amendment/Japanese Translation (national form paper)/Voluntary Amendment
(1) An applicant is notified of reasons for refusal when the Examiner finds new matter in a Japanese translation (national form paper) which was filed when entering into the national phase, a Japanese translation of a PCT Amendment, or a Voluntary Amendment filed after entering into the national phase.
(2) An applicant is given an opportunity to submit an Amendment and/or a Written Opinion in response to such a notification of reasons for refusal. However, we are afraid that this may give rise to the following problems.
1. " A first notification of reasons for refusal", which points out inclusion of addition of new matter, often does not include any examined result concerning other substantive patent requirements such as novelty and inventive step.
Particularly, when the Examiner judges that new matter is contained in the claim amendments , "a first notification of reasons for refusal" often points out only a violation of requirements for amendments . On the other hand, when an Amendment including new matter is made to the part of the specification other than claims , such as "Detailed Description of the Invention", "a first notification of reasons for refusal" often includes examined results concerning other substantive patent requirements as well.
2. The applicant typically responds to a first notification of reasons for refusal which points out only a violation of requirements for amendments by filing an Amendment which, for example, deletes parts of the specification recognized as the addition of new matter. While filing of such a response may be successful in overcoming the rejection concerning addition of new matter, the applicant is only notified of withdrawal of the rejection and no substantive examination is given this time. Next, the applicant will be given "a final notification of reasons for refusal" which has examined substantive patent requirements for the first time [Appendix C]. In this case, the applicant is forced to overcome the substantive rejections by amending the claims under heavily restricted conditions. As a result, it often becomes very difficult to obtain a patent right at this stage [Appendix D].

5. A Written Correction of Incorrect Translation
(1) Japanese Patent Law Section
17bis(2) provides that an incorrect translation in a Japanese translation of PCT applications may be corrected based on the originally filed specification in exchange for the submission of a written correction of incorrect translation.
It is therefore theoretically possible, by submitting a written correction of incorrect translation, to add, delete, or even replace terms or phrases found in a Japanese translation (national form paper) which was filed when entering into the national phase with the appropriate ones. Specifically, the terms or phrases which are described in the originally filed specification but not in its Japanese translation can be added to the Japanese translation.
Inversely, the terms or phrases which are not described in the originally filed specification but described in its Japanese translation can be deleted therefrom. Further, an obvious incorrect translation can be corrected by replacing the incorrectly translated terms or phrases with the correct ones.
(2) However, the following
disadvantages are intrinsic to a written correction of incorrect translation. It costs to prepare a written correction of incorrect translation. The applicant must prove, both objectively and reasonably, to the Examiner or a judge that the incorrect translation in the Japanese translation (national form paper) was caused by an accident or a mistake in the process of translation from the originally filed specification into Japanese. For these reasons, it is not common practice to submit a written correction of incorrect translation. III. CONCERNS OVER INCONSISTENT USE OF TERMS

1. Inconsistent use of terms in the specification (including the PCT Amendment) of PCT applications, or inconsistent use of English terms translated from the consistent terms of the originally filed specification may leads us to prepare and file to the JPO a Japanese translation which contains the inconsistent terms as they are.
2. In this case, the specification, because it contains terms which are inconsistently used throughout the specification, may be deemed indefinite and objected to on examination by the JPO because the content of the invention is "unclear" (Section 36). The consequence of this is that the application, which otherwise might have been issued as a patent, may be rejected. This stems from the practice of prosecution adopted by the JPO which tends to stress more on formalities, such as consistent use of terms in the specification to require applicants to use terms relatively more consistently throughout the specification.
3. An Examiner's objection to such indefiniteness in the specification on examination needs to be overcome by amendments. However, in actual practice, it is often difficult to amend the specification during the prosecution to bring in consistent terms, because whether or not the application contains new matter is judged based on the Japanese
translation (national form paper) which was filed when entering into the national phase in Japan.
Further, such indefiniteness in the specification causes a reason for refusal, or a reason for objection or invalidation after patent issuance.
[Note] It would be desirable if the terms were used as consistently as possible throughout the originally filed specification, so as to comply with Japanese practice which requires relatively strict use of terms in terms of consistency.

IV.CONCERNS OVER ENFORCEMENT OF PATENT RIGHTS
1. As has been explained above, the JPO interprets and handles new matter differently from yours in actual practice. Therefore, there is a possibility that deficiencies, such as addition of new matter or indefiniteness, in the specification may be pointed out, even after a patent is issued.
A patent specification including such deficiencies has always a high risk of being attacked by a third party by way of an opposition or a trial for invalidation, which obviously makes it difficult to enforce the patent right.
2. Section 126(1) of the Japanese Patent Law provides that patentees may demand a trial for correction to protect his or her patent rights. However, a trial for correction prohibits addition of terms or phrases which are not included in the Japanese translation (national form paper) which was filed when entering into the national phase (Section 126(2)). Therefore, it is generally difficult to remove the deficiencies in patent specifications.
In a situation like this, it is common practice to delete or cancel those claims which correspond to alleged new matter or indicated deficiencies in the specification, so as to keep the remaining claims. The obvious consequence of this is that it becomes impossible to enforce the patent right for the deleted or cancelled claims.

V.APPENDIX
[Appendix A]
Judgement of Addition of New Matter
1. Striction of Criteria for Judging Addition of New Matter
(1) Japanese Patent Law Section 17bis(3) provides that an Amendment of the specification or drawings filed by the applicant shall remain within the scope of the features disclosed in the specification or drawings originally attached to the application. It should be noted here that under Japanese Patent Law, claims are handled as part of the specification*. * In light of international harmonization and facilitation of electronic proceedings, the Diet currently in session is set to discuss a bill which relates to a form of application to separate "claims" from "the specification."
(2) The interpretation of the requirements for amendments as set out in Item (1) above had not been so strict according to the conventional examination guidelines, and an Amendment of the specification and drawings had been entered as long as the gist disclosed in the originally filed specification and drawings was not changed.
Revision of Patent Law and revision of examination guidelines of 1993 made the interpretation of the requirements for amendments more strict, and amendments which add "new matter" to the specification and drawings of patent applications filed on or after January 1, 1994 are now prohibited.
(3) Any addition of matters which a person ordinally skilled in the art cannot derive "directly and unambiguously" from the disclosure of the originally filed specification and drawings is defined as "addition of new matter." Here, when we say "directly", one must be able to derive the content of the amendment based solely on the originally filed specification and drawings.
"Unambiguously" indicates reversible and indicates that no other corresponding matter exists.
(4) However, the interpretation of requirements for amendments in actual examination proceedings in Japan is notably strict. Please see the examples 1 through 3 below.

1. In the event where an originally filed specification describes, for example, "rubber" without any specific example, an amendment which amends "rubber" to "elastic body" is in principle prohibited because it introduces new matter.
The term "elastic body" does not only mean "rubber" but has other meaning such as "spring". The amendment therefore fails to satisfy the requirement of "unambiguously" in this case.
2. Addition of prior art or common art to the specification and drawings is judged as addition of new matter and is prohibited when it is not described in the originally filed specification and drawings, because the amendment does not satisfy the requirement of "directly" in this case.
3. Addition of names (reference numbers) of prior art documents in the PRIOR ART section of the application is acceptable, but any amendment which changes the problems or effects to be achieved by the invention for the purpose of further delimiting the differences from the prior art will be in principle regarded as addition of new matter.
(5) Before these strict interpretations of requirements for amendments, we can say that acceptable matters which can be derived "directly and unambiguously" are actually limited to only those matters which are described in the originally filed specification and drawings.

In fact, in the usual office action procedures, the JPO very strictly judges if amendments meet the requirements therefor.

2. Penalty against Addition of New Matter
The Japanese Patent Law provides that the applicant shall be heavily penalized when the applicant does not comply with the requirements for amendments as set out in Item 1 above, i.e., when the applicant amends the specification
or drawings to introduce new matter.
Specifically, a failure to comply with the requirements for amendments during the prosecution becomes a reason for refusal (Section 49(i)), and after patent issuance becomes a reason for opposition (Section 113(i)) and a reason for invalidation (Section 123(1)(i)).

3. Handling of Addition of New Matter in PCT Applications in the National phase
(1) The requirements for amendments as set out in Item 1 above are not only applied to domestic applications in Japan but also equally applied to PCT applications which have been entered into the national phase in Japan.
(2) Specifically, in the event where a Japanese translation of an originally filed International specification and a Japanese translation of, if any, an Amendments under Article 19 and/or Article 34 are submitted to the JPO in the entry of the PCT application into the national phase in Japan, whether or not new matter is contained will be judged based on the originally filed International specification having the International filing date.
Therefore, when the content of the Japanese translation is not supported by the originally filed specification, it becomes reasons for refusal, opposition, and invalidation (Japanese Patent Law Section 184duodevicies).
It should be noted however that the Examiners at the JPO usually do not refer to the amendments to the originally filed specification during the prosecution.
In a usual course of action, addition of new matter is pointed out by a third party during an opposition or a trial for invalidation, after issuance of a patent.
(3) Further, in addition to the judgement in Item (2) above, whether or not a Japanese translation of an Amendment under PCT Article 19 and/or 34 contains new matter is judged based on a Japanese translation (national form paper) of the specification which was submitted when entering into the national phase (Japanese Patent Law Section 184sexies).
Consequently, when the content of the translation of the Amendment does not have support in the national form paper, it becomes a reason for refusal (Section 49(i)).
In order to make this judgement, the Examiner only needs to compare Japanese texts, and it is more likely that addition of new matter is found and pointed out by the Examiner during the prosecution. The applicant is notified of a reason for refusal when the Examiner judges that the translation of the Amendment under Article 34 contains new matter which is not supported in the national form paper.
(4) As in the case of the translation of the Amendment under Article 19 and/or 34, whether or not a Voluntary Amendment, which is submitted in the national phase, contains new matter is judged based on the originally filed International specification and the national form paper.
Thus, the addition of new matter with respect to the originally filed International
specification becomes reasons for refusal, opposition, and invalidation (Section 184duodevicies). On the other hand, addition of new matter with respect to the national form paper becomes a reason for refusal (Section 49(i)) but not reasons for opposition and invalidation.

[Appendix B]
Judgement of Addition of New Matter in an Amendment made in the International Phase
1. As you may be already aware, whether or not amendments under PCT Article 19 and/or 34 in the international phase contain new matter is in the end to be decided by each national bureau, and it is not to be bound by the procedures of the PCT, which is a treaty for harmonization of formalities (Article 19(3), Article 33(1)).
[Note] The JPO has expressed the following view:
"Any amendments which are judged to contain new matter during the prosecution in the national phase in Japan should be ineffective and rendered to constitute reasons for refusal, even if such amendments were entered under Article 19 and/or 34 in the international phase. This handling of amendments by the JPO does not violate the provisions of the PCT in any ways, because the amendments entered under Articles 19 and/or 34 in the international phase do not impose any restrictions on the national bureau, the JPO. Rather, it merely characterizes itself as a preliminary opinion."

2. Thus, the JPO makes its own judgement as to whether an Amendment under PCT Article 19 and/or 34 introduces new matter, based on the originally filed International specification. When the result of judgement is such that the content of the Japanese translation of the Amendment does not have support in the originally filed specification of the PCT application, the addition of new matter causes reasons for refusal, opposition, and invalidation (Japanese Patent Law Section 184duodevicies).
It should be noted however that the Japanese examiners usually do not compare the content of the Amendment with the originally filed International specification during the prosecution. In a usual course of action, the addition of new matter is pointed out during an opposition or a trial for invalidation after issuance of a patent.

[Appendix C]
"First (Non-Final) Notification of Reasons for Refusal" and "Final Notification of Reasons for Refusal"
1. By the revised Patent Law and revised examination guidelines of 1993, all notifications of reasons for refusal directed from the Examiner to the applicant are now classified into either "a first (non-final) notification of reasons for refusal" or "a final notification of reasons for refusal".
"A final notification of reasons for refusal" refers to those notifications which were necessitated by an applicant's amendments in response to previous notifications of reasons for refusal, whereas "a first notification of reasons for refusal" refers to all notifications of reasons for refusal other than the final notification of reasons for refusal.
Therefore, in cases where the Examiner needs to indicate a reason for refusal which the Examiner became aware of after he has once issued a notification of reasons for refusal, the second and subsequent notifications of reasons for refusal may be classified into "first notifications of reasons for refusal".

2. The purpose of classifying notifications of reasons for refusal as in Item 1 above is to avoid re-examination which is caused by a change in subject of matter, and thus to speed up examination. This is accomplished by imposing additional requirements for amendments on the applicant for responding to "a final notification of reasons for refusal" which is caused by a response of the applicant (please refer to [Appendix D]). [Appendix D]
Additional Requirements for Amendments in Responding to a Final Notification of Reasons for Refusal
1. Contents of additional requirements for amendments In responding to a "final notification of reasons for refusal", the applicant must amend the claims in compliance with one of the following requirements 1. through 4. (Section 17bis(4)), in addition to the requirements for amendments of the specification and drawings, which provides that the amendments must remain within the scope of the features disclosed in the specification and drawings as originally filed. 1. cancellation of the claim or claims 2. limited restriction of claims By "limited restriction", it is meant to indicate a claim amendment which limits the claimed subject matter by "a narrower concept." For example, "external addition" (e.g., A + B to A + B + C) is unacceptable, whereas "internal addition" (e.g., A + B to a + B) is acceptable.
3. correction of errors
4. clarification of ambiguous description
Here, "clarification" is meant to refer to only slight amendments for correcting indefiniteness indicated by the Examiner. However, in order to restrain free ride, the clarification is only limited to the amendments with respect to the matters pointed out in the reasons for refusal.
2. Penalty against a violation of the additional requirements for amendments
(1) The provisions in Section 53 of the Japanese Patent Law provides that applicant's amendments to claims will be declined when the amendments do not comply with the additional requirements as set out in Item 1 above.
In the event where amendments are declined under the provisions in Section 53, the applicant in almost all cases will not have another chance of overcoming the reasons for refusal, and the patent application is rejected.
(2) On the other hand, when the Examiner overlooks a violation of the additional requirements during the prosecution and the application matures into a patent, the violation will not become a reason for opposition or invalidation.
The very purpose of the additional requirements is to avoid re-examination which is caused by a change in subject of matter and thus to speed up examination. As such, there is no need to impose a penalty on the applicant once a patent is granted.

VI.REFERENCES
EXAMINATION GUIDLINES FOR PATENT AND UTILITY MODEL IN JAPAN (JPO)
Part III AMENDMENT OF SPECIFICATION AND DRAWINGS
Part VIII FOREIGN LANGUAGE APPLICAION