Filing A “Request For Consideration” When Making Preliminary Amendments
Filing the Request for Consideration is not a legal requirement, and so we believe you do not need to file it when the foundation of the amendments is sufficiently clear, such as when correcting typographic errors or deleting claims. However, if the amendments add description not directly stated in the specification but can be derived or inferred from the specification or drawings or both, it is preferable to file the Request for Consideration to explain how the amendments meet the requirements under the Japanese Patent Law.
When the examiner questions the legality of the preliminary amendments, the examiner will state objections to the amendments in the first office action, that is, a first Notice of Reasons for Rejection. In this case, the examiner is unlikely to examine the invention for substantial issues related to patentability such as novelty and inventive step. The examiner will examine the application for these issues only after the examiner’s questions about the legality of amendments are resolved by applicant’s response to the first office action. Then if the examiner finds a lack of patentability, he or she may issue a Final Notice of Reasons for Rejection, which strictly restricts the scope of allowable amendments to the Claims.
In view of the above, you should also consider filing a Request for Consideration when making preliminary amendments. You do not need to file the Request together with the amendments, but it should be filed in due course, preferably before the actual examination begins.