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YUASA AND HARALAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING
Pre-meeting of American Intellectual Property Law Association Mid-Winter Institute
January 27 - 28, 2004 at La Quinta, California, U. S. A.
Revision of Examination Guidelines Regarding Amendments
Kazuaki OkimotoPatent Attorney
YUASA and [email protected]
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Summary of revision of Examination Guidelines
1. Scope of Amendment
The Japanese Patent Office (JPO) may allow amendment of claims, descri
ption or drawings based on “a matter which is inherently presented in the de
scription, the claims or drawings originally attached to the request” in applyi
ng revised Examination Guidelines.
Under the old Examination Guidelines, the scope for amendment at this sta
ge is severely restricted. Any amendment must be clearly and unambiguous
ly supported by the specification. In the subject case, the base text is the spe
cification as of the filing date.
Kazuaki Okimoto mail to: [email protected]
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YUASA AND HARALAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING Summary of revision of Examination Guidelines
2. Lawful amendments
The JPO may allow amendment of claims having generic concept or more
specific concept by a total review of the amendment alongside the embodim
ents separately described in the description, the claims or drawings originall
y attached to the request and the other matters, for example, the problem to
be solved by the invention.
Kazuaki Okimoto mail to: [email protected]
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Basic concept of Revision of Examination Guidelines
(1) An amendment which goes beyond “a matter presented in the descriptio
n, the claims or drawings originally attached to the request”, including a ne
w matter, is not allowed.
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Kazuaki Okimoto mail to: [email protected]
Basic concept of Revision of Examination Guidelines
(2) “A matter presented in the description, the claims or drawings originally
attached to the request” includes “a matter which is expressly presented in t
he description, the claims or drawings originally attached to the request” as
well as “a matter which is inherently presented in the description, the claims
or drawings originally attached to the request”.
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Kazuaki Okimoto mail to: [email protected]
Basic concept of Revision of Examination Guidelines
(3) To meet the requirement “a matter which is inherent in the description, t
he claims or drawings originally attached to the request”, the matter amende
d must be such that those skilled in the art would be able to infer from the d
escription, the claims or the drawings of the specification in view of commo
n general technical knowledge even when the matter is not presented in the
description, the claims or drawings.
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YUASA AND HARALAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING
Kazuaki Okimoto mail to: [email protected]
Basic concept of Revision of Examination Guidelines
(4) A matter which is intended to amend to the specification as a well-know
n art or commonly used art must also be the matter which those skilled in th
e art would understand as presented in the description, the claims or drawin
gs specification in view of common general technical knowledge even when
the matter is not presented in the description, the claims or drawings.
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Basic concept of Revision of Examination Guidelines
(5) It is admissible to assert a matter as inherently presented in the descriptio
n, the claims or drawings from the plural parts of descriptions originally atta
ched to the request.
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Amendment with generic concept or more specific concept
The following amendments are recognized to be matters presented in the
description, the claims or drawings originally attached to the request.
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Amendment with generic concept or more specific concept
Case 1: Even if the invention is amended to delete a part of the specific
matter defining the invention and to give the invention generic concept, it is
apparent that it does not introduce a new technical meaning. It is
recognized that a matter deleted is inherently added to the claims from the
description, the claims or drawings originally attached to the request.
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Amendment with generic concept or more specific concept
Case 2: It is recognized that the invention having a specific matter defined
by the amended claims is presented in the description, the claims or
drawings, when reviewing totally the amendment alongside the
embodiments separately described in the description, the claims or drawings
originally attached to the request and other matters, for example, the
problem to be solved by the invention.
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Applicable patent applications
This revised Examination Guidelines will be applied to patent applications
filed on or after January 1, 1998.
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Kazuaki Okimoto mail to: [email protected]
Expecting amendments allowable
Amendment of claims with generic concept or more specific concept
Amendment by deleting a group selected from Markush type claim
Amendments with numerical limitation
Amendments by disclaimer.
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Kazuaki Okimoto mail to: [email protected]
Expecting amendments allowable
The JPO provides some examples of amendment on its web site. All
examples allowed are amendments which are made within “a matter
presented in the description, the claims or drawings originally attached to
the request”.
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Kazuaki Okimoto mail to: [email protected]
Expecting amendments allowable
Whether the amended matter is recognized to be within “a matter presented
in the description, the claims or drawings originally attached to the request”
is judged on a case by case basis.
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Kazuaki Okimoto mail to: [email protected]
Expecting amendments allowable
Practitioners may make more amendments under the new guidelines than
under the old ones. Please bear in mind that under the old guidelines any
amendment must be clearly and unambiguously supported by the
specification as of the filing date.
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Kazuaki Okimoto mail to: [email protected]
Applicable Patent Laws
The requirements and restrictions on amendments to patent specifications,
including claims, have been changed twice in recent last years.
Consequently, the filing date determines which of the three different
versions of the patent law the JPO applies to a particular application.
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Kazuaki Okimoto mail to: [email protected]
Applicable Patent Laws
The latest change in the patent law that affects amendments went into effect
on July 1, 1995, and applies to applications filed on or after that date.
Earlier applications are governed by either the law in effect from January 1,
1994, to June 30, 1995, or the law as it stood on or before December 31,
1993. Since the more recent versions of the law are likely be of most
interest to you, this summary will discuss the current amendment
requirements.
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Current practice- Amendment to Applications Filed on or after July 1, 1995
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Timing of Amendments
(1) Before receiving a Notice of Allowance or a Notice of Reasons for Reje
ction
The revision of the law that went into effect on July 1, 1995, dramatically ea
sed the limitations on the timing of amendments. The specification and draw
ings in these applications may now be amended and divisional applications f
iled at any time prior to the transmittal to the applicant of a notice that a pate
nt is granted or that reasons for rejection exist
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Kazuaki Okimoto mail to: [email protected]
Timing of Amendments
(2) After receiving a Notice of Reasons for Rejection
If a Notice of Reasons for Rejection has been sent, the applicant must respo
nd within the time limit set, generally, for applicants domiciled outside Jap
an, three months, which may be extended once for an additional three mont
hs. The official fee for the extension is 2,100 yen. Japanese applicants are a
llowed 60 days with no extension.
When a final Notice of Reasons for Rejection is issued, applicants are allow
ed to also make amendments within the time limit set, which is usually the s
ame as for the initial Notice of Reasons for Rejection.
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Kazuaki Okimoto mail to: [email protected]
Timing of Amendments
(3) After receiving a Final Rejection
If the JPO issues the final rejection against the application, the applicant may file
an appeal against the final rejection to the Appeal Board of the Patent Office wit
hin 90 days from the certified copy of the decision. Once the appeal is filed, the
applicant has an additional 30 days (unextendible) to prepare and file an amend
ment designed to overcome the reasons for rejection. If an amendment is filed, t
he original examiner re-examines the application to determine if the amendment
overcomes the reasons for final rejection. If so, he or she reverses the previous f
inal rejection decision and issues a decision to grant a patent. If not, the applicat
ion is transferred to the Appeal Board, which considers the amendment and the a
rgument in the appeal brief.
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Scope of Amendments after receiving a final Notice of Reasons for Rejection
We expect a more flexible way of amending the claims, the description and
drawings in applying the new guidelines.
After receiving a final Notice of Reasons for Rejection, however, the
amendment is limited to the following according to Section 17bis (4) of the
Patent Law:
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(i) the cancellation of the claim or claims;
(ii) the restriction of the claim or claims;
(iii) the correction of errors in the description;
(iv) the clarification of an ambiguous description.
Scope of Amendments after receiving a final Notice of Reasons for Rejection
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Thank you for your attention !
Kazuaki OkimotoPatent Attorney
YUASA and [email protected]