IP NEWS:SOEI Patent & Law Firm

In accordance with the amendment of Japan Patent Law effective from April 1, 2007, "Examination Guidelines for Patent and Utility Model" were partially revised on March 23, 2007. The outline of the partial revisions is as follows:

1. Divisional Application
(1) Additional time limits to file a divisional application
In addition to the currently prescribed time limits (same time limits for amending the specification, claims and drawings), the revision will enforce following additional time limits for filing a divisional application:
    (I) Within 30 days after the transmittal of the copy of the examiner's decision that a patent is to be granted (except the examiner's decision after demanding an appeal against a decision of refusal)
    (II) Within 30 days after the transmittal of the copy of a "first" examiner's decision of refusal

The additional time limits above may be extended at the discretion of Patent Office or at the request from the applicant (New Sections 44(5) and (6)).

Note that these additional time limits will be applied to a divisional application ofnew application filed after April 1, 2007.

(2) Additional substantive requirements
The specification, claims or drawings of a divisional application enjoying the benefit of the above-mentioned time limit (I) or (II) must remain within the matters described in the specification, claims or drawings of the application right before the concerned division.

(3) Submission of a petition
Forany divisional application filed after April 1, 2007,the applicant is required to submit a petition to show changes from the original application and to explain that the divisional application satisfies the substantive requirements for a divisional application.

2. Notification of Section 50bis
(1) Overview of newly introduced Section 50bis
The Examiner will issue a "notification of Section 50bis" if he/she finds that a divisional application includes the substantially "same reason" for refusal as one already notified in the prosecution for the parent applications. If the notification of Section 50bis is issued, an amendment to the divisional application must satisfy the requirements same as the restrictive ones (such as further limitation of the subject matter claimed) admitted in a response to a "final" notice of reasons for refusal (new Section 17bis (5)).

(2) Criterion for the "same reason"
Whether the divisional application includes the "same reason" is judged by supposing that the specification, claims and drawings for the divisional application are equivalent to the specification, claims and drawings that reflect the amendment of the parent applications. If the divisional application does not overcome the reason for refusal which was already notified, the divisional application will be regarded as including the "same reason".

(3) Remarks
The revisions regarding "Notification of Section 50bis" will be applied to anew application filed after April 1, 2007.

3. "Shift Amendment" (Amendment to another Invention including a different "Special Technical Feature")
(1) Overview of "shift amendment"
The invention subjected to examination must not be changed into another invention which does not satisfy unity of invention (prohibition of "shift amendment"; new Section 17bis (4)). If an amendment includes a "shift amendment", the Examiner will issue a notification of reasons for refusal without examining a claimed invention regarded as the "shift amendment". If an amendment including such a "shift amendment" is filed after a "final" notice of reasons for refusal, the Examiner must dismiss the amendment (new Section 53) and will reject the application.

(2) Criterion for "shift amendment"
As a whole, the invention after the amendment must maintain the "unity of invention" regarding the invention subjected to examination. For example, if original claims are directed to a mobile phone comprising a "TV receiver" and a "memory for storing compressed data" (which is regarded as a "special technical feature"), amended claims must not include a claim directed to a mobile phone comprising a "TV receiver" and a "power source" (which is regarded as a different "special technical feature").

(3) Handling of Section 17bis (4)
If the originally claimed invention (that is, all claims) before an amendment does not include a "special technical feature", the Examiner will examine amended claim(s) which is/are closely related to the originally claimed invention for further prosecution.

(4) Remarks
The revisions regarding "shift amendment" will be applied to anew application filed after April 1, 2007.