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Utilization of the International Preliminary Report on Patentability (IPRP) in the PCT National/Regional Phase

Nov.2013

JAPAN PATENT OFFICE

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Contents

Examination Flow (Outline)

Entering National Phase

Utilization of the IPRP

Prior Art Search

2

Examination Flow (Outline)

Decision of RefusalDecision to Grant a Patent

Notification of reasons for refusal

Substantive examination

Entering National Phase

Written amendment,Written argument

no reasons for refusal

No response

Resolved Not

resolved

Finding reasons for refusal

International Phase

Request for examination

Utilization of the ISR, IPRP , Prior art Search, Examination

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Contents

Examination Flow (Outline)

Entering National Phase

Utilization of the IPRP

Prior Art Search

4

Entering national phase

Entering national phase

Utilization of IPRP, prior art search, examination

A patent application in Japanese language

A patent application in foreign language

Under Article 36(2)

deemedThe description

The scope of claim(s)

The drawing(s)

deemed

deemed

The description

The scope of claim(s)

The drawing(s)

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Entering national phase

Entering national phase

A patent application in Japanese language

A patent application in foreign language

deemedA translation of the description

A translation of the scope of claim(s)

A translation of the drawing(s)

The description

The scope of claim(s)

The drawing(s)

Under Article 36(2)

deemed

deemed

Utilization of IPRP, prior art search, examination

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Entering national phase

Amendment

A patent application in Japanese language

A patent application in foreign language

deemed An amendment under Article 17bis(1)

deemedA translation of the amended scope of claim(s) under Article 19(1)

A copy of the written amendment submitted under Article 19(1)

An amendment under Article 19(1) of the treaty

The scope of claim(s) submitted with the application under Article 36(2).

Utilization of IPRP, prior art search, examination

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Entering national phase

Amendment

A patent application in Japanese language

A patent application in foreign language

deemed An amendment under Article 17bis(1)

deemedA translation of the written amendment

A copy of the written amendment

An amendment under Article 34(2)(b) of the Treaty

An amendment under Article 17bis(1)

Utilization of IPRP, prior art search, examination

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Contents

Examination Flow (Outline)

Entering National Phase

Utilization of the IPRP

Prior Art Search

9

Utilization of the IPRP

IPRP(I) = Written Opinion of the International Searching Authority (WOISA)

When no demand for International Preliminary Examination is filed

IPRP(II)= International Preliminary Examination Report (IPER)

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Utilization of the IPRP

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Utilization of the IPRP

citations

explanations

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Utilization of the IPRP

Entering national phase

Category [X]

Category [Y]

Category [A]

Under Article 29(1):

Novelty

Reference

Under Article 29(2):

Inventive Step

Judgement

Utilization of IPRP, prior art search, examination

Utilization of IPRP

These categories are indicated in ISR

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Utilization of the ISR

Entering national phaseUtilization of the ISR

Category [E,P]

Under Article 29bis

Identical invention is disclosed in description, claims or drawings

Reference, etc

Under Article 39

Identical invention is claimed

Judgement

domestic patent documents, etc

Utilization of ISR, prior art search, examination

When a priority claim is invalid, documentswith category “P” in the ISR could also berelevant to novelty or inventive step

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Contents

Examination Flow (Outline)

Entering National Phase

Utilization of the IPRP

Prior Art Search

Amendment

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Entering national phase

Prior art search

Prior art search (1)Examiners considers it possible, based on their knowledge and experience, to conduct an examination precisely and efficiently by using ISR,IPRP.

The examiners are not required to carry out an additional prior art search .Utilization of IPRP,

prior art search, examination

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Entering national phase

Prior art search

Prior art search (2)

Examiners consider it impossible, based on their knowledge and experience, to conduct an examination precisely and efficiently by using only ISR, IPRP.

The examiners shall carry out an additional prior art search .

Utilization of IPRP, prior art search, examination

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Entering national phase

Prior art search

Prior art search (3)

Examiners consider it possible, based on their knowledge and experience, to find relevant prior art documents more efficiently by carrying out a prior art search by themselves, rather than referring to an ISR,IPRP.

The examiners may carry out an additional prior art search before referring to the IPRP.

Utilization of IPRP, prior art search, examination

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Entering national phase

Prior art search

Prior art search (4)

To search earlier filed but later published applications which were not searched by ISA(Top-up search)

To search in order to avoid duplicate patenting

Utilization of IPRP, prior art search, examination

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Entering national phase

Amendment

Prior art search (Amendment)

Additional prior art search

If amendments add any features that necessitate additional prior art search.

Ex Claim: A+B

Claim: A+C

Amendment

Utilization of IPRP, prior art search, examination

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Thank you!