PATENT:SOEI Patent & Law Firm

1 : Is there a fee for using the PPH program?

No official fees are necessary for the procedures to request accelerated examination with or without the PPH system. Our fee is a basic fee of 20,000 yen plus our hourly rate. Please note that this fee is in addition to fees for a request for examination and for preparing any necessary amendments.

 

2 : In Japan, is there an Auxiliary Request system as in the EPO (can you submit multiple draft claim amendments)?

There is no such system in Japan. However, the applicant may ask the Examiner to confirm the draft amendments by interviewing the Examiner before submitting the Amendments. Such measure is particularly useful when the reason for rejection is based on an insufficient (inappropriate) description in the claims.

 

3 : What are the restrictions for the claim amendments after receiving the Final Notice of Reasons for Rejection?

After receiving a Final Notice of Reasons for Rejection, amendments to the claims are limited to the followings:

1. Cancellation of the claims
2. Restriction of the scope of the claims (the amendments must be the restriction of one or more elements of the claim prior to this amendment, and the field of the invention and the problem to be solved by the invention must remain unchanged)
3. Correction of errors in the description
4. Clarification of ambiguous description (only if the ambiguous description is mentioned in the Notice)

Adding an element which is not included in the claim prior to this amendment, such as adding an element D to the claim comprising elements A, B and C, does not satisfy limitation 2 above.

 

4 : What is the unity of invention according to the Japanese Patent Law?

It is the same as stipulated in Rule 13.1-13.3 of PCT regulation.
In order to satisfy the unity of invention, the plurality of claimed inventions must share “the same or corresponding special technical feature.” “The same or corresponding special technical feature” must be “a technical feature defining a contribution made by an invention over the prior art.”
The unity of invention is a requirement that must be satisfied. In order to overcome a rejection based on the non-compliance with the unity requirements, the applicant can take the following measures:

1. Delete the claims that do not have unity (the applicant can file a divisional application for the deleted claims).
2. Amend so that all of the claims share “the same or corresponding special technical feature.”

 

5 : What is “Shift Amendment”?

“Shift Amendment” refers to an amendment which changes the claimed invention before amendment to another invention including a different “Special Technical Feature.”
For applications filed on and after April 1, 2007, the Shift Amendment is not allowed in a response to a first Notice of Reasons for Rejection. There are no prohibitions for Shift Amendments before receiving the first Notice of Reasons for Rejection. If an amendment includes a “shift amendment,” the Examiner will issue a Notice of Reasons for Rejection without examining the claim that results from the “shift amendment.” If an amendment including such a “shift amendment” is filed after a “final” Notice of Reasons for Rejection, the Examiner must dismiss the amendment and reject the application.
Whether the amendment is found to be a shift amendment or not is mostly determined based on whether all of the claims before the amendment and all of the claims after the amendment share “the same or corresponding special technical feature.”

 

6 : I filed a US application claiming compounds without any physical or chemical data. Then I filed a Japanese application, with physical and chemical data on the compounds, and claimed priority to the US application. Will the priority claim be accepted?

If the addition of the physical or chemical data that were added at the time the Japanese application was filed is what makes it possible for one skilled in the art to work the invention, it is highly likely that the examiner will determine that the invention was not sufficiently disclosed at the time the US application was filed. Therefore, it is highly likely that the priority will be denied and the patentability of the invention will be evaluated based on the state of the art as of the Japanese filing date.

 

7 : I first filed a U.S. application, and then filed a Japanese application claiming priority to the U.S. application. I wish to have the Japanese claims identical with those issued in the U.S. patent. Is it advisable to amend the Japanese claims so as to conform to the issued U.S. claims when requesting examination?

No. Examinations in Japan are carried out independently regardless of the results of examination in the U.S. The applicant in Japan is not currently required to report any prior art references discovered in other countries. Therefore, it would be wise to try to obtain a broadest patent protection in Japan regardless of the claims in other countries.

 

8 : Continuing from the situation described in “Q7”, should I wait until the Examiner issues a Notice of Reasons for Rejection (First Office Action) to amend the claims?

Case by case. However, it is quite conceivable that restricted claims would lead to quick issuance of a patent, particularly if the prior art references cited in the U.S. application seem to be very close to the claimed invention.

 

9 : I hear that the Japanese Examiner is more likely to give favorable consideration, if the Japanese claims were amended so as to conform to the granted U.S. claims. Is this correct?

No. If you amend the claims to conform to the issued U.S. patent and inform the Japanese Examiner of this fact, it will not cause the Examiner to view the application more favorably. Rather, it is possible to offend the Examiner if the applicant gives too much weight to the U.S. prosecution, because the Japanese Examiner is to examine the application according to the Japanese Examination Standards and the prior art references discovered in Japan.

 

10 : Is an interview recommended to expedite examination procedures?

Yes, an interview with an Examiner is helpful in expediting the examination. An interview with the Examiner is most helpful at any stage of the examination in obtaining favorable results for the patent.

 

11 : Is it possible to request refund of the Examination Fee?

Yes. Half of the examination fee can be refunded provided that;
- The applicant submits a written petition withdrawing or abandoning the application before a first Office Action is issued,
- The applicant requests the refund no later than 6 months following the submission of the withdrawal or abandonment petition.

 

12 : When can I file a divisional application?

You can file a divisional application within the following time limits:

1. During the period in which applicants are allowed to file Amendments, that is,
   - Before the first Office Action,
   - Within 60 days (or three months plus extensions up to three more months for applicants residing abroad) of an Office Action, or
   - At the same time of filing an Appeal against Final Rejection,
2. Within 30 days following a Notice of Allowance, but before registration of patent; or
3. Within three months (or four months for applicants residing abroad) following the first Notice of Final Rejection*, regardless of whether or not an Appeal has been filed.

However, please note that items 2 and 3 apply only to divisional applications out of parent (earliest) applications filed on or after April 1, 2007.

*Although rare, an application on appeal can be returned to regular examination. If the examiner rejects it again, divisional applications can only be filed together with the appeal against the second final rejection.

 

13 : Can I file a divisional application after having filed an appeal against the Examiner's decision to reject the application?

If the Appeal Examiner issues a Notice of Reasons for Rejection during the appeal, you can file divisional applications within 60 days (or three months plus extensions up to three more months for applicants residing abroad) of the Notice. However, it is rare for the Appeal Examiner to issue a Notice of Reasons for Rejection during the appeal.