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CONTENTS
CONTACT

HARAKENZO
WORLD PATENT & TRADEMARK


OSAKA
HEAD OFFICE

DAIWA MINAMIMORIMACHI BLDG.,
2-6, 2-CHOME-KITA, TENJINBASHI,
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HIROSHIMA
OFFICE

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E-Mail:


In the background of the HARAKENZO trademark is a global map wherein countries/regions are sized according to the number of patents registered there in 1991.

Privacy policy


Support for resident abroad

1. Necessary Documents for filing an application

2. Limitation of Amendment

2 - (1) Restriction of Amendment in Japanese Patent Applications
(When responding to a “first notification of reasons for refusal”)

2 - (2) Restriction of amendment in Japanese Patent Applications
(When responding to a “final notification of reasons for refusal” or a “decision of refusal”)

3. New Restriction on Amendment to Divisional Application
(Amendment in the case of receipt of notice under Section 50 bis)

4. Amendment to the Patent Law:Revision to allow a longer period for filing an Appeal against Decision of Refusal etc.

5. Patent Prosecution Highway (PPH)

6. PPH Portal Web Site

7. Examination Guidelines for Patent and Utility Model in Japan

8. Submission of Information by Third Parties

9. Half Refund System on Examination Request Fees

10. Accelerated Examination timeline





1. Necessary Documents for filing an application

Necessary Documents for a Convention Priority Application in Japan
(1) Information with regard to priority, inventor’s and applicant’s name, address and so on;
(2) English or Japanese Specification, Abstract and Drawings;
(3) Priority Documents (*except Korean applications and EP applications)
(4) Power of Attorney Form
(* the form can be downloaded from our Website (http://www.harakenzo.com) and submitted to the JPO after filing the application)


Necessary Documents for National Phase in Japan of PCT Application
(1) English or Japanese translation of the original PCT application
 * English or Japanese translation of the amendment (if any)
(2) A copy of International Publication and Search Report;
(3) A copy of PCT Request (Form PCT/RO/101);
(4) A copy of Notification Concerning Submission of Priority Document
(Form PCT/IB/304) ;
(5) A copy of International Preliminary Examination Report;
(6) A copy of Notification of Change (of address etc.) on international stage, if any; and
(7) Power of Attorney Form
(* the form can be downloaded from our Website (http://www.harakenzo.com) and submitted to the JPO after the entry into national phase).



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2. Limitation of Amendment

(1) In October 2003, the JPO revised its Examination Guideline as to the limitation of Amendment. Besides a matter directly and unambiguously derivable from the description/recitation in the specification, claims, and drawing (hereinafter the “specification etc.”) originally attached to the request, the revised Examination Guideline allows to add a matter that is self-evident from the description/recitation in the specification etc.
The interpretations of the requirements for amendments will be explained later. The interpretation tells that the acceptable matters that are self-evident from the content of the originally filed specification etc. are indeed only those matters that are described/recited in the originally filed specification etc. The specification etc. has been accepted as a matter to be amended in accordance with the Examination Guideline revised in October 2003.
In fact, in the usual office action procedures, the JPO very strictly judges if amendments satisfy the requirements.

(2) In April 1, 2007, the JPO enforced the revised Patent Law including new limitation of Amendment for “claims”. According to the revised Patent Law (Section 17bis(iv)), so-called Shift Amendment is prohibited. That is, a claim cannot be amended to an invention that has a Special Technical Feature (STF) different from that of an invention to which a judgment on patentability has been shown in a Notification of Reasons for Refusal (i.e., an invention whose patentability has been examined). Thus, the revised Patent Law does not allow an Amendment that significantly changes the contents of an invention which has been examined.
The revised Patent Law is applied to a patent application filed on and after April 1, 2007. The “patent application filed on and after April 1, 2007” means: in a case of a patent application under PCT, a patent application filed internationally on and after April 1, 2007; and in a case of a patent application filed in Japan with priority under the Paris Convention, a patent application actually filed in Japan on and after April 1, 2007.



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2 - (1) Restriction of Amendment in Japanese Patent Applications
(When responding to a “first notification of reasons for refusal”)


Restriction of Amendment

(A) Japanese Patent Law Section 17 bis (3) provides that an amendment to the specification, claims or drawings (hereinafter the “specification etc.”) filed by the applicant shall remain within the scope of the features disclosed in the specification etc. originally attached to the application.

(B) As the law states, “addition of new matter” is not allowed in Japanese patent applications. To say more specifically, the content not within the scope of the features disclosed in the originally filed specification etc. shall not be added in the specification etc. by the amendment under the Japanese Patent Law.
Here, the “description of the originally filed specification etc.” includes not only a matter written in the specification and drawings originally filed, but also a matter that is self-evident from the content of the originally filed specification etc. “A matter that is self-evident” from the content of the originally filed specification etc. is a matter (a) that is not specifically written in the originally filed specification etc., but (b1) that is explicitly meant by the originally filed specification etc. in a view point of a person ordinary skilled in the art in the light of the technical common sense at the time of filing, and (b2) that a person ordinary skilled in the art can read what the matter means as if the matter is written therein.

(C) The interpretation of requirements for amendments in actual examination proceedings in Japan is stricter. The following amendments would be rejected as being “addition of new matter” under the Japanese Patent Law.

- An amendment that changes, for example, “elastic body” to “a spring” when the originally filed specification etc. only describe “elastic body” without giving a concrete example of a specific elastic body.
(If a person ordinary skilled in the art can read, in common sense, from the illustration of the drawings or the like that the “elastic body” is “a spring”, it is possible to amend as such because it is self-evident that the elastic body is “a spring”.)

- Any amendment that changes the problems to be solved or effects to be achieved by the invention for the purpose of further delimiting the scope of the invention over the prior art.
(However, addition of only the name (reference number) of the prior art document and the content thereof in the PRIOR ART section of the application is acceptable.)

(D) From these interpretations of the requirements for amendments, however, we should say that the acceptable matters that are self-evident from the content of the originally filed specification etc. are indeed only those matters which are described/recited in the originally filed specification etc.
In fact, in the usual office action procedures, the JPO very strictly judges if amendments satisfy the requirements.

(E) When the applicant amends the specification etc. to introduce new matter, the amendment that was made during prosecution may become a reason for refusal (Section 49(i)), and after patent issuance, may become a reason for invalidation (Section 123(1)(i)).

Restriction of Amendment in accordance with the revised Patent Law enforced on April 1, 2007

(A) According to the revised Patent Law (Section 17bis(iv)), so-called Shift Amendment is prohibited. That is, a claim cannot be amended to an invention that has a Special Technical Feature (STF) different from that of an invention to which a judgment on patentability has been shown in a Notification of Reasons for Refusal (i.e., an invention whose patentability has been examined).

(B) When a patent application is filed in Japan, its patentability is examined only in a group of inventions which comply with the requirement for unity of invention (i.e., a group of inventions having a common STF or a corresponding STF to each other). According to the revised Patent Law, a judgment of whether or not an STF is changed by an Amendment is made based on whether or not the requirements for unity of invention are satisfied as a whole between (a) all inventions to which a judgment on patentability has been shown in a Notification of Reasons for Refusal and (b) all inventions recited in amended claims. The “STF” herein means a technical feature clearly showing a contribution to a prior art of the invention. That is, the “STF” should be an arrangement having a novelty over a prior art.

(C) If a Shift Amendment is made in a claim, the patentability of the claim is not examined. Further, the applicant is notified of a reason for refusal telling that the claim does not satisfy the requirements for amendments.

(D)According to the revised Patent Law, in a case where a STF (i.e., novelty) is found in an invention according to a judgment on patentability in a Notification of Reasons for Refusal, an invention in the same category as the invention with a STF and having all elements of the invention with a STF will be subjects of the examination for amended claims. That is, the subject to be examined is determined in accordance with Pattern 1 described below:

- Pattern 1
Before Amendment:

After Amendment:

Claim 1 A (without STF)
Claim 2 A+B (with STF)
Claim 1 A+B+C
Claim 2 A+B+C+D
Claim 3 A+C

The amended claims 1 and 2 become the subjects to be examined because the original claim 2 has a STF (A+B) and the amended claims 1 and 2 include all elements (A+B) of the invention recited in the original claim 2.
On the other hand, the amended claim 3 does not become the subject to be examined because the amended claim 3 does not include a part of the elements (B) recited in the original claim 2. Further, the amended claim 3 may become a reason for rejection as being violation of a Shift Amendment (Section 17 bis (iv)).

(E) On the other hand, in a case where a STF (i.e., novelty) is not found in all inventions according to a judgment on patentability in a Notification of Reasons for Refusal, an invention having a STF will be looked for in the examination for amended claims in the following manner. Firstly, an invention recited in a claim whose claim number (a number given to claims) is the smallest is selected. This claim is selected from among the inventions in the same category as the invention that was judged the most lately whether or not it had a STF and having all elements of the invention thus judged. Then, the selected invention is judged whether or not it has a STF. This judgment is repeatedly carried out until an invention having a STF is found. When a STF is found, the subject to be examined is: (a) an invention that has judged so far whether or not the invention has a STF in the scope of the amended claims; and (b) an invention in the same category as the invention with the STF and having all elements of the invention with the STF. That is, the subject to be examined is determined in accordance with Patten 2 described below:

- Pattern 2
Before Amendment:

After Amendment:

Claim 1 A (without STF)
Claim 2 A+B (without STF)
Claim 1 A+B+C (with STF)
Claim 2 A+B+C+D
Claim 3 A+C

In this example, firstly the amended claim 1, whose claim number (a number given to amended claims) is the smallest, is selected. At this time, the amended claim 1 is selected from among the inventions including all elements (A+B) of the invention recited in the original claim 2. The original claim 2 is the claim that was judged the most lately whether or not it had a STF. Then, the amended claim 1, which is selected this time, is judged whether or not it has a STF. As a result, a STF is found in the amended claim 1. Therefore, the subject to be examined is the amended claims 1 and also 2 (the amended claim 2 includes all elements (A+B+C) of the invention recited in the amended claim 1).
On the other hand, the amended claim 3 does not become the subject to be examined because the amended claim 3 does not include a part of the elements (B) recited in the amended claim 1. Further, the amended claim 3 may become a reason for rejection as being violation of Shit Amendment (Section 17 bis(iv)).

(F) An Amendment which does not satisfy the requirements ruled in Section 17 bis (iv) raises rejection (Section 49 (i)). After receipt of a Final Notification of Reasons for Refusal, such an Amendment raises dismissal of amendment (Section 53 (1)). However, such an Amendment does not become a reason for invalidity of the patent (Section 123 (1)(i)). In order to overcome the rejection, the applicant may file a Divisional Application.


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2 - (2) Restriction of amendment in Japanese Patent Applications
(When responding to a “final notification of reasons for refusal” or a “decision of refusal”)


Restriction of Amendment

(A) Japanese Patent Law Section 17 bis (3) provides that an amendment to the specification, claims or drawings (hereinafter the “specification etc.”) filed by the applicant shall remain within the scope of the features disclosed in the specification etc. originally attached to the application.

(B) In responding to a “final notification of reasons for refusal” or demanding for an appeal against a "decision of refusal", the applicant must amend the claims in compliance with one of the following additional requirements (I) through (IV) (Section 17 bis (5)).

(I) Cancellation of the claim or claims

(II) Limited restriction of claims
By "limited restriction", it means a claim amendment that limits the claimed subject matter by “a narrower concept.” For example, “internal addition”(e.g., A + B to a + B) is acceptable, but “external addition” (e.g., A + B to A + B + C) is unacceptable.

(III) Correction of errors

(IV) Clarification of ambiguous descriptions
Here, “clarification” refers to only slight amendments for correcting indefiniteness indicated by the Examiner. However, in order to restrain the applicant from making the other types of amendments by taking this opportunity, the clarification is only limited to amendments with respect to matters pointed out in the reasons for refusal.

(C) The provisions in Section 53 of the Japanese Patent Law provides that claim amendments that were made by the applicant during prosecution shall be declined when the amendments do not comply with the additional requirements. If amendments were declined, the applicant seldom has another chance of overcoming the reasons for refusal and the patent application will be rejected.

Restriction of Amendment in accordance with the revised Patent Law enforced on April 1, 2007

(A) According to the revised Patent Law (Section 17bis (iv)), so-called Shift Amendment is prohibited. That is, a claim cannot be amended to an invention that has a Special Technical Feature (STF) different from that of an invention to which a judgment on patentability has been shown in a Notification of Reasons for Refusal (i.e., an invention whose patentability has been examined).

(B) When a patent application is filed in Japan, its patentability is examined only in a group of inventions which comply with the requirement for unity of invention (i.e., a group of inventions having a common STF or a corresponding STF to each other). According to the revised Patent Law, a judgment of whether or not an STF is changed by an Amendment is made based on whether or not the requirements for unity of invention are satisfied as a whole between (a) all inventions to which a judgment on patentability has been shown in a Notification of Reasons for Refusal and (b) all inventions recited in amended claims. The “STF” herein means a technical feature clearly showing a contribution to a prior art of the invention. That is, the “STF” should be an arrangement having a novelty over a prior art.

(C) If a Shift Amendment is made in a claim, the patentability of the claim is not examined. Further, the applicant is notified of a reason for refusal telling that the claim does not satisfy the requirements for amendments.

(D) According to the revised Patent Law, in a case where a STF (i.e., novelty) is found in an invention according to a judgment on patentability in a Notification of Reasons for Refusal, an invention in the same category as the invention with a STF and having all elements of the invention with a STF will be subjects of the examination for amended claims. That is, the subject to be examined is determined in accordance with Pattern 1 described below:

- Pattern 1
Before Amendment:

After Amendment:

Claim 1 A (without STF)
Claim 2 A+B (with STF)
Claim 1 A+B+C
Claim 2 A+B+C+D
Claim 3 A+C

The amended claims 1 and 2 become the subjects to be examined because the original claim 2 has an STF (A+B) and the amended claims 1 and 2 include all elements (A+B) of the invention recited in the original claim 2.
On the other hand, the amended claim 3 does not become the subject to be examined because the amended claim 3 does not include a part of the elements (B) recited in the original claim 2. Further, the amended claim 3 may become a reason for rejection as being a Shit Amendment (Section 17 bis (iv)).

(E) On the other hand, in a case where a STF (i.e., novelty) is not found in all inventions according to a judgment on patentability in a Notification of Reasons for Refusal, an invention having a STF will be looked for in the examination for amended claims in the following manner. Firstly, an invention recited in a claim whose claim number (a number given to claims) is the smallest is selected. This claim is selected from among the inventions in the same category as the invention that was judged the most lately whether or not it had a STF and having all elements of the invention thus judged. Then, the selected invention is judged whether or not it has a STF. This judgment is repeatedly carried out until an invention having a STF is found. When a STF is found, the subject to be examined is: (a) an invention that has judged so far whether or not the invention has a STF in the scope of the amended claims; and (b) an invention in the same category as the invention with the STF and having all elements of the invention with the STF. That is, the subject to be examined is determined in accordance with Patten 2 described below:

- Pattern 1
Before Amendment:

After Amendment:

Claim 1 A (without STF)
Claim 2 A+B (without STF)
Claim 1 A+B+C (with STF)
Claim 2 A+B+C+D
Claim 3 A+C
In this example, firstly the amended claim 1, whose claim number (a number given to the amended claims) is the smallest, is selected. At this time, the amended claim 1 is selected from among the inventions including all elements (A+B) of the invention recited in the original claim 2 since the original claim 2 is the claim that was judged the most lately whether or not it had a STF. Then, the amended claim 1, which is selected this time, is judged whether or not it has a STF. As a result, a STF is found in the amended claim 1. Therefore, the subject to be examined is the amended claims 1 and 2 (the amended claim 2 includes all elements (A+B+C) of the invention recited in the amended claim 1).
On the other hand, the amended claim 3 does not become the subject to be examined because the amended claim 3 does not include a part of the elements (B) recited in the amended claim 1. Further, the amended claim 3 may become a reason for rejection as being Shit Amendment (Section 17bis (iv)).

(F) An Amendment which does not satisfy the requirements ruled in Section 17 bis (iv) raises rejection (Section 49 (i)). After receipt of a Final Notification of Reasons for Refusal such an Amendment raises dismissal of amendment (Section 53 (1)). However, such an Amendment does not become a reason for invalidity of the patent (Section 123 (1)(i)).


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3. New Restriction on Amendment to Divisional Application
(Amendment in the case of receipt of notice under Section 50 bis)


(1) In the revised Japanese Patent Law effective on April 1, 2007, in order to restrain abuse of the divisional application system, a substantial restriction on amendment with respect to a divisional application is added. Under the revised Japanese Patent Law, in the case where rejections that are notified in relation to a divisional application are the same as rejections that have been already notified in relation to a parent application or other divisional applications based on the parent application, the same restriction on amendment as that which would be imposed on applications under final Notification of reasons for refusal shall be imposed on the divisional application (Section 17bis(5), Section 50bis).

(2) The revised Patent Law applies to a divisional application whose parent application has been filed on or after April 1, 2007. Accordingly, the revised Patent Law does not apply to a divisional application that is filed on or after April 1, 2007, but whose parent application has been filed on or before March 31, 2007.

(3) Under the revised Patent Law, in the case where rejections to be notified in relation to a divisional application are the same as rejections that have been already notified in relation to the parent application or other divisional applications filed based on the parent application, that notice under Section 50 bis will be notified at the same time when a Notification of reasons for refusal is issued. Even if the office action notified with the notice under Section 50 bis is a first office action in relation to the divisional application, the same limitation on amendment that would be applicable to applications under final Notification of reasons for refusal is imposed on amendments of the divisional application (Section 17 bis (3) to (5)).

(4) On this account, in the case where the notice under Section 50 bis is notified, if amendments that breaches the regulations of Section 17 bis (3) to (5) are made, rejections of amendments (Section 53(1)) will be notified. Further, the notice under Section 50 bis shall be notified even in appeal against decision of refusal and reconsideration by the same Examiner before appeal (Sections 159 and 163).


Amendment to the Patent Law:Revision to allow a longer period for filing an Appeal against Decision of Refusal etc.

One amendment in the 2008-revised Patent law becomes effective as of April 1, 2009, which allows a longer period for filing an appeal against decision of refusal etc. We summarize the amendment to the period of filing the appeal, etc. below.

1.Outline of Revision
(1) The period for filing an appeal against Decision of Refusal is prolonged from 30 days to 3 months (for overseas residents, from 90 days to 4 months).

(2) The period in which claims etc. may be amended after filing an appeal is amended from “within 30 days” to “only at filing of the appeal”.

 
Before
After
An appeal against decision of refusal may be filed…
…within 30 days (90 days for overseas residents) from transmittal of Notification of Decision of Refusal.
…within 3 months (4 months for overseas residents) from transmittal of Notification of Decision of Refusal.
Post-appeal amendment to claims etc. may be filed…
…within 30 days from filing the appeal.
…only at filing the appeal.



(3)In conformity with the amendment, the following amendment is made in the Patent Law.
・ The period in which a divisional application may be filed after receiving Decision of Refusal is prolonged from “within 30 days (90 days for overseas residents)” to “within 3 months (4 months for overseas residents)”.
・ As the period for filing an appeal against Decision of Refusal is prolonged for design application, the period in which conversion from/to a patent application/utility model application to/from a design application may be filed is amended.

 
Before
After
After decision of Refusal, a divisional application may be filed…
…within 30 days (90 days for overseas residents) from transmittal of first Decision of Refusal.
…within 3 months (or 4 months for overseas residents) from transmittal of first Decision of Refusal.
Patent Application may be converted to Design Application…
…within 30 days (90 days for overseas residents) from transmittal of first Decision of Refusal.
…within 3 months (4 months for overseas residents) from transmittal of first Decision of Refusal.
Design Application may be converted to Patent Application…
…within 30 days (90 days for overseas residents) from transmittal of first Decision of Refusal, or 3 years from filing date.
…within 3 months (for overseas residents as well) from transmittal of first Decision of Refusal, or 3 years from filing date.
Design Application may be converted to Utility Model Application…
…within 30 days (90 days for overseas residents) from transmittal of first Decision of Refusal, or 9 years and 6 months from filing date.
…within 3 months (for overseas residents as well) from transmittal of first Decision of Refusal, or 9 years and 6 months from filing date.

(4)It should be noted that the revision does NOT amend the period (30 days (120 days for overseas residents) for filing a suit with the Intellectual High Court against decision in appeal filed against decision of refusal.

2.Effective Date
The amendment becomes effective for all applications for which a notification of decision of refusal is received on or after April 1, 2009.


Accelerated examination system

Applicants often wish examination results could be issued more quickly. This can be realized by using the Accelerated examination system or the Patent Prosecution Highway (PPH). These two systems make it possible to shorten the time required for the examination, and can therefore prove very useful for applicants.

In general, even after an applicant has filed a Request for examination, it takes a relatively long amount of time for the substantive examination to start.
The following table shows the average period of time required for an ordinary examination to take place, from the date of filing of the Request for examination to the date of issue of the first notification of examination result.

Average Period of Time for Ordinary Examination
 
2007
2008
2009
Examination
26 months
28 months
29 months

" However, using the Accelerated examination system or the PPH allows an applicant to receive the examination result more quickly.
The following table shows the average period required from the date of request of the Accelerated examination to the date of issue of the first notification of examination result. "

Average Period of Time for Ordinary Examination
 
2007
2008
2009
Examination
2.2 months
2.0 months
1.8 months

► Kindly be advised that the Accelerated examination system and the PPH can be requested AFTER the filing of the Request for examination.
► Several requirements must be met for an application to be eligible for the Accelerated examination sytem and/or the PPH. For more information, please refer to the links provided below or send us your inquiries.

Please do not hesitate to contact us at any time if you are interested in the Accelerated examination system or the PPH.
*A separate Attorney's fee will be incurred for requesting these systems with the JPO.

Reference:
Information regarding the PPH in English (website of the JPO)
http://www.jpo.go.jp/torikumi_e/t_torikumi_e/patent_highway_e.htm

The PPH Portal Web Site (website of the JPO)
http://www.jpo.go.jp/ppph-portal/index.htm

Patent Support Station
http://www.harakenzo.com/en/patent/application.html

Support for foreign nationals
http://www.harakenzo.com/en/column/resident/

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