examination procedure - jpo.go.jp...more additional alternative similar in property or function...
TRANSCRIPT
-
Examination Procedure.doc
1
EXAMINATION PROCEDURE
1. Basic Direction of Examination
The examination must be carried out with great care so that promptness, accuracy,
fairness a n d transparency are secured. In particular, close attention should be paid to
the following in the course of the examination.
(1) Examinations should be uniformly conducted in accordance with official guidelines
for examinations such as the examination guidelines, the examination manuals, and
the like.
(2) Regarding searches of prior art and determination of patentability of a claimed
invention, efforts should be made to maintain and upgrade the quality of examinations.
(3) Examinations should be conducted so as to secure a completely mutual
understanding between examiners and applicants (including their legal representatives,
as termed hereinafter).
2.Basic Instructions
(1) Prior art search and determination of patentability should be carried out based on
consideration of the trends of combined and advanced technology, while making full use
of the shared knowledge of examiners.
(2) When there are any doubts about requirements for patentability, such as novelty,
inventive step, etc. or about the description requirements of patent specifications
during the examination, the examiners should notify the applicant and take positive
action to fix the problem.
(3 ) In principle, the examiner should make a thorough study of an application in respect
of all reasons for rejection referred to in Section 49 of the Patent Law before issuing the
first notice for rejection.
(4 ) In principle, the reasons for rejection should be notified twice at most, and the first
notice for rejection should be so served that the second notice for rejection
communicates only such reasons for rejection as necessitated by an amendment which
-
Examination Procedure.doc
2
is made by the applicant in response to the first notice for rejection.
(5 ) The examiner's determination should be given to each of the claims since the
invention for which a patent is sought is described in each claim of the application filed
under the multiple claim system, and the exaimner should 'show thoroughly, clear and
sufficient explanations of the reasons for rejection for each of the claims so as to enable
the applicant to respond easily to the notice for rejection, for the reason that the
amendment with regard to the claims is restricted after the final notice for rejection,
and also should establish solid communication with the applicants through interview
and other appropriate means.
(Note) When the examiner in charge has been replaced, notices for rejection or the
details of the interview, once served or confirmed by the former examiner, should be
respected in order to maintain the consistency of the examination. If the examiner in
charge gives a decision which differs from that of the former examiner, (s)he should
inform the applicant of the reasons thereof beforehand, if necessary, since this could
possibly affect the interests of the applicant. Furthermore, if the examiner believes it
necessary, the notice for rejection may be issued again.
3. Examination procedure
3.1 Subject of Examination
The subject of examination on patentability requirements in terms of novelty, inventive
step, first-to-file, etc., among reasons for rejection under Patent Law Section 49, is a
claimed invention. The finding of the claimed invention is made based on the
statements of the claim.
3.2 Procedures
(1) Determination of whether the requirement of unity of invention is satisfied should
be made first.
(2) Where the requirement of unity of invention is satisfied, the claimed inventions of
the application should be examined in respect of the requirements for patentability of
each claim in terms of novelty, inventive step, etc.
-
Examination Procedure.doc
3
(3) If an application lacks unity of invention, the invention set forth in the first claim
and those inventions having unity with said invention should be examined in respect of
other requirements than the requirement for unity of invention. The claims lacking the
requirement for unity of invention can be examined provided that no further work load
is required.
(4) Requirements other than those for claims, such as requirements for description of
specification are examined concurrently with the examination referred to in paragraphs
(2) and (3) above.
(5) In the case of examination in (2) and (3) above, all the respective requirements
should in principle be considered at the same time. For instance, even when the
requirements for description of specification are not satisfied, examination should be
made concurrently in respect of the requirement for patentability in terms of novelty,
inventive step, etc., unless the description of the claimed invention is so obscure that
the examination in respect of the requirements for novelty, inventive step, etc. cannot be
made.
4. Prior Art Search
4.1 Subject of the Search
(1) The search should be directed to inventions set forth in the claims that meet the
requirement for unity of invention. Notwithstanding the above, where the claimed
inventions that do not meet the requirement for unity of invention can be examined
without further work load, such inventions may be the subject of the search. The search
should be directed to all the inventions set forth in the claims described in the patent
specification as of the commencement of examination, ranging from a claim describing
an invention of the broadest concept to one describing an invention of the narrowest
concept.
In a case where there are two or more alternatives involved in matters to define the
invention and these alternatives are not similar in property or function, at least one
more additional alternative similar in property or function should be chosen and
searched. It is recommended that alternatives containing examples be chosen.
In a case where a multiple dependent form claim is defined by referring to other
proceeding claims and the other alternatives are not similar in property or function,
-
Examination Procedure.doc
4
then is also applied.
(2 ) The examiner should have due regard to embodiments of the claimed invention (only
those corresponding to constituent elements set forth in the claim).
(3 ) The search should cover the subject matter to which the claims are most likely to be
directed after they have been amended, in addition to those to which the claims are
directed, unless it requires excess work load in terms of search economy.
(4 ) Where the object, constitution and effects of the claimed invention are not
sufficiently described such that a person skilled in the art to which the invention
pertains can easily carry out the invention (in case of unduly broad claims), the
examiner may exclude from a search effort a subject for which there is a reasonable
ground that detailed explanation of the invention is not described sufficiently such that
a person skilled in the art can easily carry out the invention.
(5 ) The search may be exempted for claims to which new matters have apparently been
added, claims apparently directed to unpatentable subject matters, claims apparently
involving non-statutory inventions, claims apparently involving industrially
inapplicable inventions, and claims with descriptions so obscure that they failed to
identify the inventions even with due regard to the description of the invention and
drawings.
4.2 Scope of the Search
(1) The search, in principle, should consult all documents in the relevant technical fields
to which each claimed invention pertains.
Relevant technical fields are:
A) technical fields which are determined in the light of such factors regarding the
claimed invention as the fields of industrial application, the problems to be solved, and
the matters to define the invention , and
B) technical fields which are determined in the light of such factors regarding individual
elements of the claimed invention as their uses, their works, and their works, and their
functions.
-
Examination Procedure.doc
5
(2) Notwithstanding the above, the examiner may, for reasons of search economy, omit
sections of the scope of the search as far as the likelihood of finding any relevant
documents in such sections is not deemed high on the basis of his knowledge and
experience in the relevant technical fields.
4.3 Search Strategy
(1) The examiner should carry out the search paying close attention to the pertinent
official examination guidelines in terms of novelty, inventive step and first-to-file
(Section 29bis and 39), and try to thoroughly discover all relevant prior art documents
within the scope of the search.
(2) The examiner should give precedence to the technical fields in which the probability
of finding relevant prior art documents is considered highest.
Normally, it would be appropriate to start the search with technical fields most relevant
to embodiments of the claimed invention (only those corresponding to constituent
elements set forth in the claim) and to gradually extend the search to other less relevant
technical fields.
(3) Whether or not to extend the scope of search to the fields with less relevance should
be determined depending on whether there is a possibility of finding relevant prior art
documents which may reasonably deny patentability, while taking account of the search
results already obtained.
(4) Searching "Specified Invention" first leads to an efficient examination of all the
claimed inventions since it provides reference information for examination of novelty
and inventive step of other claimed inventions.
In particular, where the search reveals the presence of novelty and inventive step
related to Specified Invention, no further search will be required for other claims
involving all indispensable constituent features of the Specified Invention and
additional limitations because the inventions set forth in such claims are also deemed to
have novelty and inventive step.
(5) The examiner should continuously evaluate the results of his search, and if
necessary, reformulate the subjects of the search accordingly.
-
Examination Procedure.doc
6
(6) When documents have been found clearly demonstrating lack of novelty in the entire
subject matter of the claimed invention and its embodiments (only those corresponding
to constituent elements set forth in the claim) described in the description of the
invention, or when documents have been found showing prior art of which difference
from the embodiment is difference in embodied means to solve a problem and is deemed
very minor, the search may be stopped at this point without searching for the remainder
of the scope of search as to the claim concerned.
(Note) In the application of paragraph (6), the search may be stopped when a document
has been found clearly demonstrating lack of novelty in one or more embodiment (only
those corresponding to constituent elements set forth in the claim) of the claimed
invention, or when documents have been found showing prior art of which difference
from the embodiment is difference in embodied means to solve a problem and is deemed
very minor (hereinafter referred to as "documents denying novelty etc.").
Nevertheless, where the search can be conducted for other embodiments (only those
corresponding to constituent elements set forth in the claim) without further work load,
further search is desirable.
(7) The search may be stopped when the possibility of finding more relevant prior art
documents becomes very low in the scope of the search.
(Note):
1) In the application of paragraph (7), the search should preferably be continued where
there is a high possibility of discovering documents denying novelty, etc. of the
embodiments of the claimed invention (only those corresponding to constituent
elements set forth in the claim).
2) Where a claimed invention covers a wide range of chemical compounds expressed in
Markush formula and has many embodiments, and where it is very difficult for the
examiner to search the full scope of search without undue effort, under the assumption
that all reasonable efforts were made to conduct the search, the search may be
completed without carrying out the full scope of the search if either of the following
conditions (i) or (ii) apply, the search may be terminated before finishing the full scope
of the search.
(i )At least one prior art document denying novelty etc. must have been found with
-
Examination Procedure.doc
7
regard to at least one of the groups of chemical compounds which are expressed as
alternatives in the claim and which involve chemical compounds indicated as working
examples (namely the groups of chemical compounds expressed as specific alternatives
corresponding to working examples).
(ii) A search of all the groups of chemical compounds shown as specific alternatives
corresponding to the above examples has already been carried out , and at least one
prior art document which denies the novelty, etc. has already been found.
4.4 Record of Search Results
Record of the search results which an applicant could use as a reference for making
amendment in response to a notice for rejection, should be made with respect to A)
technical fields searched (expressed using the International Patent Classification
Symbols) and B) relevant prior art documents, and should be attached to the non-final
notice for rejection after the first prior art search.
For instance, records should be made with respect to other than documents cited in the
notice for rejection, documents deemed useful for determining the novelty and inventive
step though not directly denying the novelty and inventive step of claimed inventions,
and documents covering disclosures with a high probability of being incorporated in the
claim after amendment.
The record of search results is not construed as constituting a reason for rejection.
(Notes) : In a case where the search is terminated half-way in accordance with Note ,
for the above 4.3(7), such a note is described in “Records of search results”.
5. Notice for Rejection
In the Patent Law, a notice for rejection is classified into two categories in view of the
provisions governing periods for effective amendments to and amendable contents of a
specification and drawings.
One of the categories is a notice for rejection to be notified first to an applicant under
Section 50 of the Patent Law (hereinafter referred to as the "non-final notice for
rejection"; Patent Law Section 17bis(1)(i)). The other of the categories is the notice for
rejection to be served last in the case where, after a notice for rejection had been served,
further notice for rejection was served (hereinafter referred to as the "final notice for
rejection"; Patent Law Section 17bis(1)(i i)).
After a final notice for rejection has been served, the amendable scope of a claim is
-
Examination Procedure.doc
8
restricted under Section 17bis(4 ) and 17bis(5 ) of the Patent Law.
A "non-final notice for rejection," in principle, is defined as a notice for rejection to be
notified to an applicant with reasons for rejection for the first time. Therefore, in
addition to a first notice for rejection, a subsequent notice for rejection served on the
applicant for reasons for rejection not necessitated by amendments made in response to
the first notice for rejection is also a "non-final notice for rejection."
A "final notice for rejection," in principle, means a notice indicating only reasons for
rejection which is necessitated by amendments made in response to the non-final notice
for rejection.
5.1 Non-Final Notice for Rejection
(1) The examiner should find and communicate all reasons for rejection at the time of
serving the first notice for rejection.
(2) If an application lacks unity of invention, in principle, the examiner should find and
communicate reasons for rejection concerning requirements other than the unity of
invention with respect to the invention set forth in the first one of the claims and those
claimed inventions having the unity with the said invention, unless the claims lacking
the unity of invention can be examined without additional work load of examination.
A notice for rejection should be drafted in such a way as to distinguish between claims
which have not been examined for requirements other than unity of invention and those
examined for such requirements. All reasons for rejection which have been found should
be described.
(3) All reasons for rejection concerning claims which satisfy the requirement for unity of
invention should be notified concurrently at the time of serving the first notice for
rejection as far as possible, except in the following cases:
1) A case where the description of the invention in an application is extremely obscure,
to such an extent that it is difficult to examine requirements for patentability such as
novelty or inventive step;
In such a case, the reasons for rejection related to requirements for description of
specification, etc. alone should be notified, expressly stating that the requirements for
patentability in terms of novelty, inventive step, etc. have not been examined.
-
Examination Procedure.doc
9
2) Cases where it is apparent that new matters have been added to the claim, where the
claim is apparently directed to unpatentable subject matter, where the subject matter
set forth in the claim is apparently a non-statutory invention, or where the claimed
invention is apparently not industrially applicable;
In such cases, the reasons for rejection concerning these cases alone should be notified,
expressly stating that the requirements for patentability in terms of novelty, inventive
step, etc. have not been examined.
(Explanation)
Only when an application is deemed to fall under "apparently" any of the cases
mentioned above, an examination of the requirements for patentability in terms of
novelty, inventive step, etc. may be exempted because a determination on cases
involving uncertainty might be changed later even without amendments.
3) A case where any claimed invention apparently fails to meet requirements for
patentability such as novelty or inventive step, and where there are only minor
descriptive deficiencies in the specification or drawings of which correction would not
violate Section 17bis;
In such a case, it is not necessary to point out reasons for rejection related to such minor
descriptive deficiencies when referring to the reasons for rejection concerning the
requirements for patentability with regard to the claim in the first notice for rejection.
(Explanation)
In such a case, it is expected that minor descriptive deficiencies in the specification and
drawings may be corrected by amendments in response to the notice for rejection to the
effect that the claimed invention fails to meet the requirements for patentability. Even
where the descriptive deficiency remains uncorrected and is pointed out later in the
final notice for rejection, an amendment in response to the final notice is permitted if it
is an amendment to the claim which is deemed as "correction of errors in the
description" or "clarification of an ambiguous description" under Section 17bis(4 )(iii) and
17bis(4 )(iv) or an amendment to the description of invention. They are then processed in
the manner as described above.
(4) Except for reasons for rejection which cannot be determined on the basis of
individual claims (e.g. unity of invention, insufficiency of overall description in the
-
Examination Procedure.doc
10
specification), the reasons for rejection due to lack of novelty, or inventive step, etc.
should be indicated for each claim in order to distinguish between claims bearing
reasons for rejection and those which do not.
(5) The examiner should indicate reasons for rejection clearly and thoroughly to assist
the understanding of applicants, paying close attention to the following:
1) Cited relevant prior art
(i) Reference documents should be identified so as not to cite unnecessary parts as
reasons for rejection. Therefore, the particular passage relied upon, if any, should be
specified.
(ii) When determining relevant prior arts to be cited in the notice for rejection out of the
prior arts discovered, prior arts most relevant to the claimed invention should be chosen,
taking its embodiments into account.
(iii) Citations of two or more prior arts with the same or similar contents against a
single claim could incur extra cost and time for an applicant. Therefore, no excessive
citations should be attempted, more than those which are essential to logically justify
the reasons for rejection.
In a case where the description of the specification s and drawings violate the
provision of the Patent Law Section 36 (4) or 36 (6), the notice for rejection should
specify which part of the application is deficient and the specific reasons therefor.
(6) In a case where prompt and exact examination is difficult, notification by an
examiner can be given under the provision of the Patent Law Section 194(1)
(Submission of document, etc.), and an applicant can be required to submit of
documents and other articles necessary for examination.
For example,
When it is difficult to identify the claimed invention because of the confusing make-
up of the invention or the overwhelming volume of the specification s, an examiner can
require the applicant to submit a reference to clarify the make-up of the invention , such
as a document to explain which part of each example corresponds to each function for
defining the invention, or papers that briefly explain the gist of the invention.
In a case where it is difficult to understand a written argument submitted by the
applicant after notification of reasons for refusal, and it is agreed that such difficulties
will have a significant effect on whether the application for patent is approved or not,
-
Examination Procedure.doc
11
an examiner may require the applicant to submit a document that explains the
assertion in written argument more clearly.
An examiner may require the applicant to provide models, samples or certified
experimental results, together with a notice of rejection within the designated time
limit if they are necessary for examination.
(Note):
“if they are necessary for examination ” means a case in which detailed description of
the invention does not explain the invention in a manner sufficiently clear and
complete for the examination to be carried out by a person skilled in this area, because
operations or effects of the invention described in the claim can not be confirmed.
In this case, without requiring the applicant to submit samples individually, an
examiner will only notify of the reasons for refusal, stating that detailed description of
the invention does not describe the invention in a manner sufficiently clear and
complete for it to be examined by a person skilled in this area , because operations or
effects of the claimed invention can not be confirmed, with the proviso that the above
will not be applied if operational effect is confirmed by submission of samples.
In a case where an examiner judges that samples, etc. of the patent application for
which the reasons for refusal have already been notified are necessary for examination
as the result of receiving written argument, the examiner may require the applicant to
submit the samples individually.
In a case where amendment of the specifications or drawings makes the detailed
description of the invention sufficiently clear and complete for it to be examined by a
person skilled in the area , or this amendment is merely used as reference in
examination, samples will not be required to be submitted.
(6) Suggestion of amendment, etc.
Suggestions should be made on amendments or divisions of the application when
notifying reasons for rejection if it is expected to facilitate a response by the applicant to
the notice and thereby contribute to a prompt and appropriate examination.
Notwithstanding, it must be noted that such suggestions do not produce any legal effect,
and that the manner of describing claims is to be left to the applicant's own desires and
responsibility.
5.2 Final Notice for Rejection
A "final notice for rejection" is defined as the last notice for rejection in the case where,
after a notice for rejection had been notified, a further notice for rejection was notified.
(Section 17bis(1)(i i) of the Patent Law) In principle, the "final notice for rejection" notifies
-
Examination Procedure.doc
12
only the reasons for rejection which are necessitated by amendments made in response
to a previous non-final notice for rejection.
Whether a given notice is to be deemed as the final or non-final notice for rejection
should be determined under paragraphs 5.2.1 and 5.2.2 below.
5.2.1 Cases Which Should Be Final Notice for Rejection
(1) A notice for rejection which notifies only the reasons for rejection necessitated by
amendments made in response to a previous non-final notice for rejection.
(Explanation)
In the second or any subsequent notice for rejection, a notice which communicates only
the reasons for rejection which are necessitated by amendment made in response to a
previous non-final notice for rejection means that the examiner is required to further
examine the contents of the application which have been changed by the amendments
after the initial examination.
Thus, such a notice should be deemed as the final notice for rejection.
"Reasons for rejection necessitated by amendments" refers to the following:
(i) Reasons for rejection necessitated by amendments to specification or drawings (or a
claim, provided that the examination of the claim has been made and that the
statement to that effect is indicated in the non-final notice for rejection) made in
response to the non-final notice for rejection.
(ii) Reasons for rejection of new claims added by amendments made in resp6nse to the
non-final notice for rejection.
(Note 1): The amendment defined herein does not include correction of such minor
errors in descriptions that do not necessitate changes in the results of the examination,
such as changes between rejection and allowance, changes of reasons for rejection, etc.
(Note 2): Where notifying both the reasons for rejection necessitated by the amendment
in response to the first notice for rejection and reasons for rejection not necessitated by
the amendment at the same time, such a notice should be deemed as the non-final
notice for rejection, but not as the final notice for rejection.
(Note3): In a case where new reasons for refusal based on prior art references are found
-
Examination Procedure.doc
13
on a claim terminated halfway during the search process in accordance to (Note) in
4.3(7), after the above reasons for refusal were dissolved by amendment, as a general
rule these are given as the final notice for rejection.
(Examples)
A) With regard to description of the invention:
a. A case where new matters such as new examples have been introduced by
amendments in response to the non-final notice
b. A case where the description has become obscure due to amendments in response to
the non-final notice
B) With regard to claims:
a. A case where new reasons for rejection concerning lack of novelty or inventive step
have become necessary to be notified due to amendments by which new technical
elements have been added to examined claims
b. A case where new reasons for rejection concerning lack of novelty or inventive step
have become necessary to be notified due to amendments by which claims have been
broadened, altered or restricted by means of deleting or limiting technical elements in
examined claims
c. A case where new reasons for rejection concerning lack of novelty, inventive step have
become necessary to be notified due to amendments by which new unexamined claims
have been added
d. A case where new matters have been introduced into examined claims by
amendments, or where descriptions of the examined claims have become obscure due to
amendments
e. A case where amendments have been made in a manner to conflict with the
requirement for unity of invention
f. A case where, when amendments are made to a claim to which the reasons for
rejection based on requirements for description of specification alone have been notified,
with the statement to the effect that requirements for patentability such as novelty or
inventive step have not been examined because the description of an application are
extremely obscure, and examination on such patentability is difficult to be carried out,
reasons for rejection concerning requirements for patentability are subsequently found
with respect to the amended claim
g. A case where, when amendments are made to a claim to which the reasons for
rejection based on the grounds that new matters have been added to the claim have
-
Examination Procedure.doc
14
been notified with the statement that the requirement for patentability such as novelty
or inventive step has not been examined because it is clear that new matters are added
to the claim and then, reasons for rejection concerning requirements for patentability
are subsequently found with respect to the amended claim
(2) A communication notifying only such a reason for rejection as mentioned below
should be deemed as a final notice for rejection.
(i) A case where, when reasons for rejection were notified after only a part of the claims
was examined and other claims were not examined in terms of patentability due to
lacking the unity of invention, and though reasons for rejection (including violation of
the requirements for unity of invention) were overcome due to amendments to the
claims, but the said other unexamined claims are still maintained in the application
without being deleted or divided to a new divisional application, reasons for rejection
are subsequently found with respect to such unexamined claims.
(Explanation)
Such a procedure should apply since it is practically the same as the further
examination of new claims added by amendments.
(ii) A case where, when only reasons for rejection concerning patentability such as
novelty, inventive step, etc. were notified, but not reasons for rejection concerning the
description requirements, because only minor descriptive deficiencies were found other
than reasons for rejection concerning patentability, and correction of such descriptive
deficiencies are considered not to conflict with the provisions of Section 17bis, for
example, amendments in the claims or the description of the invention admitting as
those falling under Section 17bis(4 )(iii) and (iv), such as correction of errors in the
description or clarification of an ambiguous description, and then, the specification
remain unamended and reasons for rejection regarding requirements for description are
not overcome.
5.2.2 Cases Which Should Not Be Final Notice for Rejection
(Cases Which Should Be Non-Final Notice for Rejection)
(1) First notice for rejection
The first notice for rejection always falls in the non-final notice for rejection.
-
Examination Procedure.doc
15
(2) Second or any subsequent notices for rejection are the non-final in the following
cases:
(A)A case where the notice is not necessitated by amendments after the non-final notice
for rejection:
Where a notice covers other than reasons for rejection necessitated by the amendment
in response to the non-final notice for rejection, such a notice should be deemed as the
non-final notice for rejection, but not the final notice (except those falling under the
above-mentioned 5.2.1 (2)).
The followings are the non-final notice for rejection.
1) Reasons for rejection against a claim or a part of specification or drawings left
unamended after the non-final notice for rejection, which the examiner should have
pointed out in the non-final notice, may not be notified as the final notice for rejection,
except for those to which paragraph 5.2.1 (2) above applies.
(Examples)
a. A case where reasons for rejection, such as descriptive deficiencies in the specification
or drawings or lack of unity of invention, were overlooked upon serving the non-final
notice for rejection regarding lack of novelty or inventive step, and therefore, any
substantial amendments were not made to the deficiencies after the first notice, but
where such reasons for rejection were found later, except for cases falling under the
above-mentioned 5.2.1 (2) (ii).
b. A case where a reason for rejection was subsequently found with regard to a claim for
which a statement that no reason for rejection was found had been notified in the first
notice for rejection, though no amendment was made.
2) Where there is no amendment in response to the non-final notice, any subsequent
notice changing the reason for rejection from the non-final notice may not be deemed as
the final notice for rejection.
(Examples)
A case where there was no amendment in response to the first notice for rejection
concerning lack of novelty or inventive step, but the reason for rejection was withdrawn
either due to the applicant's written argument or at the examiner's own volition, and
-
Examination Procedure.doc
16
new reason for rejection is notified, citing new different prior art.
(Explanation):
In the case of paragraphs 1) and 2) above, it would be inappropriate to deem the cases
as the final notices for rejection because these notices involve reasons for rejection
which have already existed and should have been notified upon serving the non-final
notice but were overlooked by the examiner and because no further examination is
therefore to be newly required.
3) Even where there are amendments to a claim on which reasons for rejection such as
lack of novelty or inventive step were notified in the non-final notice for rejection, any
subsequent notice may not be deemed as the final notice for rejection as in the case of
paragraph 2) above if such amendments to the claim does not change some of the
technical elements described in a preamendment claim and if such notice for rejection is
served citing new different prior arts in lieu of the prior art already cited solely for the
unchanged technical elements.
However, this does not apply to a case where such technical elements are substantially
changed due to amendments to other technical elements in the claim. This is because
such substantial changes are equivalent to amendments to these technical elements.
(Explanation):
In this case, in view of the fact that no change was made to some of the technical
elements and a notice for rejection had been served citing prior art irrelevant to the
unchanged technical elements, it would be severe on applicants to treat the subsequent
notice for rejection as the notice for rejection necessitated by amendments. The above
procedure should thus be applied.
4) In the case of notifying reasons for rejection not necessitated by amendments in
response to the non-final notice for rejection together with reasons for rejection
necessitated by amendments in response to the non-final notice for rejection, such a
notice should not be deemed as the final notice for rejection.
(B) A case where a notice for rejection should be non-final regardless of whether
amendments were made or not after the non-final notice for rejection:
-
Examination Procedure.doc
17
In the case of serving a notice for rejection which notifies only reasons for rejection
necessitated by amendments made in response to the non-final notice for rejection, such
a notice is, in principle, deemed as the final notice for rejection. The following notice,
however, should be deemed as a non-final notice and not as the final notice.
1) In the event that a non-final notice for rejection was served without carrying out
examination of requirements for patentability such as novelty or inventive step despite
the absence of rational reasons justifying this exemption from examination (including
absence of expressing statement that examination was made), and that reasons for
rejection concerning patetability are to be notified in a subsequent notice, such
subsequent notice should be deemed as the non-final notice for rejection, regardless of
presence or absence of amendments in response to the previous notice.
(Note): Presence of rational reasons means that provisions under 5.1. (3) 1) and 2) are
applicable to the case.
(Examples):
a. Where an only descriptive deficiency in the specification or drawings was pointed out
in the first notice without examining the patentability such as novelty or inventive step,
a notice for rejection regarding for patentability citing prior art is to be non-final
regardless of whether amendments were made to the claims or not after serving the
first notice for rejection, except for claims which were extremely obscure to such an
extent that it is difficult to examine the requirements for patentability. (Refer to the
above-mentioned 5.1 (3) 1) and examples B) f. in 5.2.1 (1).)
b. Where reasons for rejection regarding patentability were found in a claim for which
completion of examination had not been indicated in the first notice for rejection, a
notice of such reasons should be non-final regardless of the presence or absence of
amendments in response to the first notice.
2) Where an implication of non-discovery of reasons for rejection had been made with
respect to a certain claim in the non-final notice, and, despite the implication, the claim
was so amended as to restrict, then, any subsequent notices for rejection should not be
final if such notices notify reasons for rejection regarding requirements for patentability
such as novelty or inventive step (except reason for rejection under Section 39) in
respect of the particular claim.
-
Examination Procedure.doc
18
(Example):
The case where a notice for rejection for lack of inventive step is subsequently served
due to subsequent discovery of a new prior art with respect to a claim for which a
statement implying the compliance with the requirements for patentability was
formerly made in the first notice for rejection, and with regard to which as amendment
was made to restrict, despite the implication.
(Explanation):
In either case of 1) and 2) above, the requirements for patentability such as novelty or
inventive step were not examined upon serving the non-final notice for rejection, or the
specific reasons for rejection were overlooked. In these circumstances, serving a
subsequent notice for rejection regarding patentability in terms of novelty or inventive
step as the final notice would be severe on applicants. The above procedure should thus
be applied.
5.2.3 Notes on Final Notice for Rejection
(1) The final notice for rejection should be served according to the following procedures:
1) When serving the final notice, the notice shall contain the indication to the effect that
it is "final" and the reason thereof. In the absence of such an indication, the notice may
not be deemed as the "final notice for rejection."
2). The determination on requirements for patentability such as novelty or inventive
step should be given with regard to each claim involved.
3) Where a written argument has been submitted by the applicant, subsequent notice
should take such an argument into account, and expressly state relevant reasons for
rejection clearly and thoroughly.
In particular, since the amendable scope is restricted with regard to the claim after the
final notice 'has been served, the examiner should clearly specify the claimed invention
having reason for rejection and, if deemed necessary, suggest permissible amendments
in order to facilitate response to the notice.
(2) Furthermore, the final notice should be drafted by applying the relevant provisions
of the above-mentioned 5.1 (non-final notice for rejection).
-
Examination Procedure.doc
19
6. Interview with Applicants
(1) The examiner should positively respond to a request from an applicant for an
interview so as to contribute to a prompt and appropriate examination by developing
mutual understandings between the examiner and the applicant.
(2) To ensure that the interview procedures are transparent, the contents and results of
discussions in the interview should be recorded and stored electronically for public
inspection.
(3) Where the examiner communicates with an applicant by telephone, facsimile, etc.,
relevant records should be maintained and offered for public inspection.
7. Submission of Written Arguments and Amendments
7.1 Applicants' Responses
(1) Applicants may present not only written arguments and amendments, but also any
other documents, including certificates on the result of experiment, as evidence that
reasons for rejection have been overcome.
(2) Where an applicant believes that the examiner's determination that a given notice is
the "final notice for rejection" is wrongful, the applicant may argue his case in a written
argument.
(3) Where an applicant has filed an amendment, the applicant may explain that the
amendment is acceptable by clarifying the relation between the claims before and after
the amendment.
7.2 Examiner
(1) The examiner should carefully review the details of the written arguments,
amendments, etc. and determine if the earlier notice for rejection can be maintained.
Especially, when a written argument is submitted without any amendment in response
to the notice for rejection, the examiner should conduct a careful review of the written
-
Examination Procedure.doc
20
argument and then determine if the reason for rejection specified in the notice can be
maintained.
(2) Where an amendment is submitted in response to a non-final notice for rejection, the
subject of the examination shall be the specification and drawings as amended. If new
matters are introduced by an amendment in response to a non-final notice, relevant
reasons for rejection should be notified the reason for rejection, if any.
In a case where there are other reasons for refusal, those reasons will be notified at the
same time.
(3) Handling of written arguments and certificates on the result of experiment Although
written arguments, certificates on the result of experiment etc. can not be substituted
for the description of the invention in the specification, they can be used by applicants to
explain or prove that the description in the specification as filed is correct and adequate.
The contents should, therefore, be thoroughly considered using the following guidelines.
(4) Refer to paragraph 8. for details of procedures for handling amendments made in
response to the final notice for rejection.
8. Examination of Amendments in Response to the Final Notice for Rejection
(1) The provisions of Section 17bis(4 ) are designed to ensure the results of earlier
examinations are used effectively for examining an application amended in response to
the final notice for rejection in order to establish examining procedures which grant
patents promptly and appropriately, while considering the essential purpose of the
patent system to fully protect the rights to the invention.
Since amendments which violate the provisions of Section 17bis(4 ), if any, do not cause
substantial problems to the contents of an invention, unlike addition of new matter,
such amendments must not be retroactively dismissed after the examiner's decision of
rejection or grant a patent despite a subsequent discovery that a violation under Section
17bis(4 ) has been overlooked.
In this respect, Section 17bis(4 ) differs from Section 17bis(3 ) in the characteristics of the
provisions.
Consequently, when applying the provisions of Section 17bis(4 ), reasonable consideration
should be given to the essential purport of the Law, and excessively strict application of
this provision should be avoided if examination of an application amended after the
final notice for rejection can be promptly carried out by effectively using the results of
-
Examination Procedure.doc
21
earlier examination and the amended invention is deemed worthy of patent protection.
(2) Taking into account an applicant's argument by means of written argument and/or
interview, the "final notice for rejection" is reviewed for propriety.
When the applicant's contention that the notice should have been a non-final notice and
not the final one is deemed justified, the provisions of Sections 17bis(4 ) and 17bis(5 ) and
Section 53 of the Patent Law should not be applied, and no amendment should be
dismissed because these provisions are concerned with the final notice for rejection. (In
this instance, note that violation of provisions of Section 17bis(3 ) constitutes a reason for
rejection.)
When reasons for rejection are not overcome or when new reasons for rejection have
been found with regard to an application whose amendment has been accepted
according to the above, the examiner should serve either the "final notice for rejection"
or "the examiner's decision of rejection" unless otherwise deemed to be a "non-final
notice," if the applicant asserts that the former notice should have been non-final and
the applicant made the amendment on the preposition of that assertion.
In other cases, "non-final notice for rejection" should be served to applicants once again.
(3) Where it is deemed that a notice given as the final notice is appropriate, the
amendments should first be reviewed for lawfulness.
Then, when any violation of the provisions of Sections 17bis(3 ) through 17bis(5 ) is
discovered prior to publication of the examined application, the amendment should be
dismissed by the examiner's decision under Section 53 of the Patent Law.
(4) The following amendments should be dismissed.
1) Amendments to specification and drawings which introduce new matters (Section
17bis(3 ), including cases where new matters mentioned in the final notice for rejection
remain undeleted).
2) Amendments to a claim which do not aim at the following (a) to (d) (Section 17bis (4 )):
(a) Deletion of a claim (Section 17bis(4 ) Item 1);
(b) Restriction of the scope of claim, provided that the amendment limits all or some of
the matters necessary for defining the invention set forth in a claim, so long as the
amended claim maintains the same field of industrial application for the invention and
-
Examination Procedure.doc
22
the same problems to be solved by the invention as those of the invention before the
amendment (hereinafter referred to as "restriction of a claim with limitation of
features." Item 2);
(c) Correction of errors in the description (Item 3); or
(d) Clarification of an ambiguous description, provided that the amendment is related to
the matters mentioned in the reasons for rejection (Item 4).
3) Amendments to restrict a claim with limitation of features which do not make the
amended claimed invention patentable (Section 17bis(5 )).
(5) The procedures of examining amendments are as follows:
1) Each matter of amendments made in response to the final notice for rejection is
determined separately for whether or not it introduces new matter to the specification
or drawings. Each claim is respectively examined for new matter.
2) An amendment to claims is not evaluated on whether or not it violates Sections
17bis(4) and 17bis(5 ) if such claims have been found to introduce new matters based on
the decision of paragraph 1) above. For other claims, amendments to respective claims
are evaluated on whether or not they satisfy items of Section 17bis(4)(i) to (iv). Where
new matter has been introduced only to the description of the invention but not to a
claim, the examiner should deter' mine whether or not amendments are aimed at items
of Section 17bis(4)(i) to (iv) for every amended claim.
3) Where an amendment is found to fall within Section 17bis(4)(ii) (restriction of a claim
with limitation of features) through the determination in paragraph 2), above, under
Section 17bis(4)(i) to (iv), the amendment should be further determined as to whether or
not it satisfies the requirements prescribed in Section 17bis (4).
4) Where amendments are found to be unacceptable through the determination in
accordance with paragraphs 1) to 3) above, such amendments should be dismissed by a
decision indicating all unacceptable amendments.
(6) Application of provisions of Section 17bis(3 ) and Section 53 Provisions in Section
17bis(3 ) and Section 53 dismiss the following amendments.
-
Examination Procedure.doc
23
1) An amendment introducing new matter in response to the final notice for rejection,
and
2) An amendment which leaves undeleted new matter pointed out in the final notice for
rejection.
If a new matter which has been included but has not been pointed out in the final notice
for rejection remains undeleted even after an amendment, such amendment should not
be dismissed and a notice for rejection should be served for the patent application,
stating that the amendment introduced new matter.
(7) Application of provisions of Section 17his(5 ) and Section 53
1) Inventions to which the provisions are applicable
Section 126(3) (setting forth a provision that an invention constituted by the features
described in the amended claim must be one which could have been patented
independently at the time of filing of the patent application) is applied mutatis
mutandis with necessary modifications in Section 17bis(5 ). The Section should be applied
only to a case where an amendment falling within Section 17bis(4)(ii) (restriction of a
claim with limitation of features) was made. Accordingly, Section 17bis(5 ) should not be
applied to an invention set forth in an unamended claim, nor to an invention set forth in
a claim to which only correction of errors in the description (Section 17bis(3)(iii)) or
clarification of an ambiguous description (Section 17bis(3)(iv)) has been made.
2) Provisions for determining whether the amended invention is patentable Provisions
applied to determine whether or not a claimed invention with amendments, which
restrict the claim with limitation of features, is patentable independently at the time of
filing of the patent application, should be limited to Section 29, 29bis, 32, 36(4) a n d 36(6) ,
and 39(1) to (4).
3) Notes
A) Provisions of Section 17bis(5 ) and Section 53 dismiss amendments in the following
cases:
(i) A case where reasons for rejection under provisions mentioned in paragraph 2), above,
which have been pointed out in the final notice for rejection, has not been overcome even
after amendment, or
-
Examination Procedure.doc
24
(ii) A case where new reasons for rejection under provisions mentioned in paragraph 2),
above, are discovered with regard to an amended claimed invention, though reasons for
rejection against an invention set forth in the pre-amended claim were overcome by
amendment to restrict the claim with limitation of features. For instance, 1) a case
where reasons for rejection citing new prior arts or prior applications must be notified
again, because the amendments were made so as to restrict a claim with limitation of
features, and 2) a case where descriptive deficiencies are newly caused by the
amendment.
(Explanation)
Where reasons for rejection indicated in the final notice for rejection can be maintained
even after the amendment to restrict a claim with limitation of features is made, the
apparent purport of the Patent Law is not to accept such an amendment and reject the
amended application, but to dismiss such an amendment, as in the case of finding new
reasons of rejection for amended claimed inventions, in order to ensure equitable
treatment of applications. Therefore, the above procedure should be applied.
B) Notes on application of each provision
(a) Where requirements of Section 36 are not satisfied:
(i) Where a claimed invention, with amendments to restrict a claim with limitation of
features, fails to meet the requirements under Section 36, such an amendment should
be dismissed on the grounds of contravention of provisions of Section 36.
(ii) However, in a case where descriptive deficiencies still remain uncorrected in the
specification or drawings with regard to an amended claimed invention, or, new
descriptive deficiencies are caused by the amendment, although the invention relating
to the claims meets the requirements of patentability such as novelty, inventive step,
etc., if such descriptive deficiencies are so minor that they can be corrected by simple
amendments and the description requirements of the specification can be satisfied and
that the claimed invention can be patented, the examiner should give the applicant the
further opportunity for further amendment by serving the final notice for rejection
against such descriptive deficiencies after acceptance of the amendment.
(b) Where patentability requirement is not met under Sections 29, 29bis or 39:
(i) In principle, prior art cited in the final notice for rejection should be cited at the time
of dismissal of amendment.
Notwithstanding the above, an additional citation of a new prior art, due to restriction
-
Examination Procedure.doc
25
of a claim with limitation of features, is allowed.
(ii) Furthermore, an amendment can be dismissed by indicating reasons why an
application is not patentable by referring only to a prior art which was not cited in the
final notice for rejection. In such a case, however, the prior art cited in the final notice
for rejection may not necessarily be appropriate. It is therefore preferable to reconsider
whether the final notice is pertinent and valid in accordance with paragraph 8.2, below,
"Handling of applications after dismissal of amendments."
C) Upon deciding to dismiss an amendment, reasons for dismissal are given for each
claim and for all the amendments to restrict a claim with limitation of features
determined as unlawful under (5) above.
8.1 Handling of Applications after Acceptance of Amendments
(1) When amendments made in response to the final notice for rejection meet the
requirements defined in Section 17bis(3 ) to 17bis(5 ), the examiner should accept the
amendments and determine whether or not reasons for rejection pointed out in the final
notice for rejection other than the reasons for rejection considered under Section 17bis(5 )
(and Sections 29, 29bis, 32, 36 or 39) have been overcome on the basis of the amended
specification or drawings.
When such reasons for rejection have been overcome and no further reasons for
rejection have been found, the examiner shall make a decision to grant a patent . When
such reasons for rejection have not been overcome, the examiner should make a decision
of rejection.
(2) Where, although the reasons for rejection stated in the final notice for rejection have
been overcome by the amendment made, new reasons for rejection are found, such new
reasons for rejection should be notified. Such notice constitutes a final notice for
rejection if the notice should be so determined in the light of paragraph 5.2, above, for
instance, in a case where such new reasons for rejection are necessitated by
amendments made in response to the first notice for rejection etc. In other cases, a
notice of such new reason for rejection should be a non-final notice for rejection.
(3) When a new notice for rejection has been served after acceptance of an amendment
in response to the final notice for rejection, such an amendment shall not be
-
Examination Procedure.doc
26
retroactively dismissed even if the unacceptability of the amendment is discovered
afterwards.
However, when it is found later that new matter has been introduced, the reason for
rejection therefor should be notified.
(Explanation)
According to Section 53, 159(1) and 163(1) of the Patent Law, when unlawfulness of an
amendment in response to the final notice for rejection is discovered, the patent
registration or the examiner's decision of rejection, such an amendment shall not be
retroactively dismissed, but shall be accepted in order to avoid further examination.
When an amendment in response to the final notice for rejection which has been served
is found unacceptable after notifying new reasons for rejection subsequent to acceptance
of such an amendment in response to the final notice for rejection, such cases should be
processed using the same procedures along with this purport.
8.2 Handling of Applications after Dismissal of Amendments
(1) Since the dismissal of an amendment leaves an application unamended, it is the
reasons for rejection as pointed out in the final notice for rejection which was given for
the pre-amended application that should be reviewed.
(2) The written argument presented by an applicant should be considered upon
reassessment of the correctness of reasons for rejection pointed out in the final notice for
rejection.
(3) Where the examiner finds it inappropriate to make an examiner's decision of
rejection on the basis of the reasons pointed out in the final notice or to make a decision
to grant a patent , a further notice for rejection should be served, citing better prior art
in consideration of the prior art which was referred to as the reason for dismissing the
amendment.
In this instance, a determination is made whether or not such a further notice should be
deemed as the final or the non-final notice for rejection pursuant to the provisions of
paragraph 5.2, including a determination of whether or not the new reasons for
rejection are necessitated by amendment in response to the non-final notice for rejection.
Furthermore, since the reasons for rejection are notified concurrently with the decision
-
Examination Procedure.doc
27
of dismissal of the amendment, it is necessary to expressly state that such reasons for
rejection apply to the pre-amended application when drafting the notice for rejection.
9. Examiner's Decision of Rejection
(l) When the examiner deems that the notified reasons for rejection have still not been
overcome even after reviewing the written argument or amendments in response to the
notice for rejection, the examiner should make a decision of rejection regardless of
whether or not the notice for rejection is a final one or a non-final one.
(2) In drafting an examiner's decision of rejection, all claims for which the notified
reasons for rejection have still not been overcome should be indicated.
(3) The examiner should expressly state all the reasons for rejection which have still not
been overcome in a written decision of rejection, together with the examiner's judgment
on the applicant's written argument and the amendments.
(4) The examiner should refrain from making an unreasonable rejection, such as those
with additional citation of a new prior art only to justify the notice for rejection served
earlier.
In an examiner's decision of rejection, the examiner should not cite new prior art as a
reason for rejection, except well-known or commonly used art.
10. ZENCHI Examination
(Reexamination Prior to Appeal Examination)
This paragraph sets forth procedures applicable to ZENCHI.
(1) In ZENCHI examination, the examiner should determine whether or not an
amendment made at the time of demand for the appeal complies with the provisions of
Section 17bis(3 ) to 17bis(5 ) of the Patent Law.
(2) An amendment made at the time of demand for appeal should be examined on the
basis of the procedures applied to amendment in response to the final notice for
rejection.
Specifically, the examination should be carried out in accordance with the provisions of
-
Examination Procedure.doc
28
paragraph 8 (Examination of Amendments in Response to the Final Notice for
Rejection).
In this instance, the "final notice for rejection" in that paragraph should be replaced
with "examiner's decision of rejection," and "amendments in response to the final notice
for rejection" should be replaced with "amendments made at the time of demand for the
appeal," and "reasons for rejection mentioned in the final notice for rejection" should be
replaced with "reasons for examiner's decision of rejection."
(3) The purpose of ZENCHI examination is to re-assess the correctness of the
examination of applications. ZENCHI examination not only examines the reasons for
examiner's decision of rejection, but also examines if an application contains other
reasons for rejection.
(4) Cases where an amendment made at the time of demand for appeal is not to be
dismissed:
1) The examiner should determine whether or not the reasons for rejection have been
overcome based on the amended specification and drawings, and the examiner should
consider the reasons for demanding the appeal.
2) Where the examiner considers that reasons for rejection can be maintained despite
amendments made at the time of demand for appeal, the original decision should be
upheld, and the examiner should present the results of the examination to the
Commissioner of the Patent Office.
All unovercome reasons for the examiner's decisions of rejection should be expressly
indicated and explained in ZENCHI report, together with new reasons for rejection
discovered later.
3) Where reasons for rejection have been overcome due to amendments made at the
time of demand for appeal;
(i) A decision of publication of the examined application must be made provided that
new reasons for rejection have not been found, or
(ii) Relevant reasons for rejection should be notified upon discovery of reasons for
rejection which differ from the reasons indicated in the examiner's decision of rejection.
-
Examination Procedure.doc
29
4) When notifying the reasons for rejection, specific reasons should be indicated for each
claim so as to clearly distinguish between a claim with reasons for rejection and a claim
without reasons for rejection, in accordance with paragraph 5 above (Notice for
rejection).
(5) Cases where an amendment made at the time of demand for appeal is to be
dismissed:
1) In ZENCHI examination, no decision shall be made to dismiss amendments under
Section 53 of the Patent Law applied mutatis mutandis with necessary modifications in
lieu of Section 163, unless making a decision to grant a patent .
2) Where any amendment made at the time of demand for appeal is to be dismissed, the
correctness of the reasons for an examiner's decision of rejection of pre-amended
applications should be reviewed.
3) The details of the reasons for demand for appeal should be considered when
reviewing the correctness of the reasons for an examiner's decision of rejection.
4) When it is deemed appropriate to uphold the original decision, the results of the
examination should be presented to the Commissioner of the Patent Office. The
ZENCHI report should state the reasons for upholding the original decision together
with reasons justifying the dismissal of the amendment made at the time of the demand
for appeal.
Furthermore, new reasons for rejection if found later should also be stated.
5) Where the original decision cannot be upheld but a new reasons for rejection for pre-
amended applications is found, the results of the examination should be reported to the
Commissioner of the Patent Office. The ZENCHI report should state the new reasons
for rejection, together with reasons justifying the dismissal of the amendment made at
the time of demand for the appeal.
6) When the original decision cannot be upheld and no other reasons for rejection are
found, a decision to grant a patent should be made after making a decision on the
dismissal of the amendment.
-
Examination Procedure.doc
30
(6) After reasons for rejection have been notified in ZENCHI examination, an
examination should be conducted in accordance with provisions of the above-mentioned
"6. Interview with Applicants, etc.;" "7. Submission of Written Arguments and
Amendments" and "8. Examination of Amendments in Response to Final Notice for
Rejection."