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2007 amendment to japanese patent law Question & Answer

KYOWA PATENT AND LAW OFFICE
Tokyo, Japan
March 2007

Summary

The bill to make some revisions of the japanese patent law passed the Japan's diet on June 1st, 2006. The amendment will come into effect on April 1st, 2007. The amendment includes a revision concerning divisional applications and prohibition of "Shift Amendment". Thus, we believe that the revisions would be of some importance to our clients. We summarize the gist of the amendment this time in Q & A style for your reference. The revised points are outlined below.

  1. The time period for filing divisional applications will be relaxed. You will be able to file a divisional application even after the grant of a patent to the parent application (only before filing an appeal to the appeal board in the JPO to revoke a final decision of rejection to the parent application) as well as after a final decision of rejection to the parent application (article 44).
  2. The claim to be filed in a divisional application will be restricted to some extent in light of prevention of "abuse" of divisional applications (article 50bis, 17bis).
  3. So-called "Shift Amendment" will be prohibited. This means that, after you receive an office action on the merits from the examiner, it is prohibited to change the claimed invention into a "Different" invention which fails to comply with the unity of invention requirement with the originally claimed invention of which the patentability has already been examined (article 17bis(4)).
  4. The time period for filing of a Japanese-Language translation for an English-Language application will be relaxed (article 36bis).

Question & Answer

Question 1
When will these series of revisions be effective ?
Answer

The revised law will be applied to any patent applications to be filed on or after April 1st, 2007. The new law, however, will not be applied to a divisional application based on a parent application filed before April 1st, 2007 even if the divisional application is filed on or after April 1st, 2007.

Question 2
When can we file a divisional application under the new law ? Is this revision beneficial to us ?
Answer

Under the current law, you can file a divisional application on the following occasions

  • Period from a filing date to the issue date of a first office action
  • When you file a request for examination
  • When you file a response to a first/non-final office action
  • When you file a response to a final notice for rejection
  • When you file an appeal to the appeal board in the JPO to revoke the final decision of rejection to the parent application (within 30 days of the date of filing an appeal notice)

Under the revised law, the time period for filing a divisional application has greatly been relaxed. That is, in addition to the above-mentioned currently allowed opportunities, you can also file a divisional application within 30 days after you receive a final decision of rejection or a notice of allowance from the examiner (not including a notice of allowance after filing an appeal to the appeal board in the JPO to revoke a final decision of rejection to the parent application).

Under the current law, as compared to the above, you cannot file a divisional application after grant. Further, if you wish to file a divisional application after you receive a final decision of rejection, you have to file a notice of appeal for the rejected application in order only to obtain an opportunity of filing the divisional application. Under the new law, you do not have to take such a useless procedure, if you do not intend to file an appeal to the appeal board of the JPO to revoke the final rejection of the parent application.

Under the new law, you can also file a divisional application within 30 days after you receive a notice of allowance (not including a notice of allowance after filing an appeal to the appeal board in the JPO to revoke a final decision of rejection to the parent application). This is also beneficial to you because you will have a chance to redraft the claim to assure more sufficient patent coverage of your products or to reconsider further aspects of the patent protection in the case where the application is particularly important to your company.

Question 3
In the case where a patent application is pending in the board of appeals and a notice of allowance is issued by the appeal board, can we file a divisional application under the new law ?
Answer

No. You cannot file a divisional application in that case (article 44(1)). Please note, however, that if you receive an office action from the appeal board, you can of course file a divisional application when you reply to the office action as is currently admitted under current practice.

Question 4
Can the thirty-day term for filing a divisional application be extended ?
Answer

It depends. the term for divisional applications corresponds to the term for paying the issue fee or the term for filing an appeal against the examiner's final decision of rejection. This means that, if these terms are extended under article 4, the terms for filing a divisional application will be extended by the same period. However, please note that once the establishment of a patent right is registered upon payment of the issue fee, you cannot file a divisional application even within the thirty-day term, because the parent application is no longer pending.

Question 5
Is there any important change or restriction in respect of examination of divisional applications ?
Answer

Yes, there is. The new restriction is more stringent than before. Therefore, when you file a divisional application under the new law, you should carefully review the claim to be filed.

The new law states that if the claim in the divisional application in question includes the subject matter to which the same rejection reason as raised in the parent application is applicable, then the examiner will issue a specific notice under article 50bis, which imposes more stringent requirements on claim amendment as in the case where you receive a final notice of rejection, namely (i) cancellation of the claim(s), (ii) restriction of the claim(s) in a limitative way, (iii) correction of typographical error(s), and (iv) clarification of an ambiguous description (article 17bis).

Thus, the JPO intends to reduce the "Abuse" of divisional applications with this new practice. This practice seems to be similar to current U.S. practice in which you will receive a final action as the first office action in the case you file a continuing application with the same claims as those in the parent application before the USPTO.

Please note again that if the claim in the divisional application in question includes the subject matter to which the same rejection reason as raised in the parent application is applicable, then the examiner will issue a notice under article 50bis and that the notice under article 50bis makes the non-final notice of rejection issued at the same time substantially function as a final notice of rejection as far as amendment requirements are concerned.

Question 6
How can we avoid receiving a notice under article 50bis ?
Answer

In order to avoid receiving a notice under article 50bis and to ensure flexibility in claim drafting, the following tactics are suggested.

  1. At the time of preparing and filing a divisional application, claims should be drafted carefully so that the previously raised rejection reason for the parent application can no longer apply to the divisional application.
  2. If there is not sufficient time for claim drafting, it is possible to file a divisional application with temporary claim(s) such as previously rejected or originally filed claim(s) by the due date for filing a divisional application and then to prepare and file a voluntary amendment at the time of filing a request for examination, which can be filed within 30 days of the filing date of the divisional application.
  3. Even after the filing of a request for examination, it is still possible to amend claim(s) in a flexible way, insofar as no new matter is added, before receiving a notice of rejection with a notice under article 50bis. However, in light of unpredictability of when to issue the notice of rejection, a voluntary amendment should be filed as soon as possible after filing a request for examination.
Question 7
What do you mean by the term "Shift Amendment" and why is such amendment to be prohibited ?
Answer

Under the new law, so-called "Shift Amendment" will be prohibited. This means that amendment to shift the examined invention into another invention is prohibited. Thus, after you receive an office action on the merits from the examiner, it is prohibited to change the claimed invention to a "Different" invention which fails to comply with the unity of invention requirement with the originally claimed invention of which the patentability has already been examined (article 17bis(4)).

Under current japanese practice, you can amend the claim as you like so long as the amendment is duly supported by the original specification. You can therefore change the claimed invention into another invention that fails to comply with the unity of invention requirement. This situation means, from the JPO's standpoint, that the examiner has to search and examine the application double, in spite of a single application, in comparison with a normal application that contains no shifted claim. Thus, "Shift Amendment" is against the spirit / doctrine of unity of invention. the JPO also states that the prohibition of "Shift Amendment" meets current U.S. and European patent practices.

Question 8
Could you explain some examples of "Shift / Non-Shift Amendment" ?
Answer

According to JPO's announcement including the new examination standard which has been issued on march 23rd, 2007, the following examples are listed as criteria for consideration of "Shift Amendment".

Example 1
Claim 1: A polymer (a) having a good oxygen barrier property.
Claim 2: A food wrapping container comprising a polymer (a).

Example 2
Claim 1: A method for light shielding from a light source.

Claim 2: A lighting apparatus comprising a light-shielding means for shielding a light from a light source.

In examples 1 and 2, claims 1 and 2 comply with unity of invention because the claimed inventions have the same technical feature. Thus, deleting claim 2 or adding claim 2, for instance, does not correspond to "Shift Amendment".

Example 3
Claim 1: An eyeglass frame comprising a titanium alloy X.
Claim 2: An eyeglass frame comprising a titanium alloy X coated with a nitride Y.
Claim 3: A method for producing an eyeglass frame comprising integrally molding a titanium alloy X.

Claim 4: A method for for producing an eyeglass frame comprising integrally molding a titanium alloy X and then depositing a nitride Y on the thus molded titanium alloy X.

In example 3, claims 1-4 comply with unity of invention, and therefore there is no "Shift Amendment" problem if you make amendments among these claims.

however, the following examples could raise a "Shift Amendment" problem.

Example 4
[Before Amendment]
Claim 1: A high sensitive antenna for a cellular phone.
[After Amendment]
Claim 1: A folding hinge for a cellular phone.

The above amendment is a typical "Shift Amendment". The subject matter of claim 1 has been changed from an antenna to a hinge to differentiate the claimed invention from a cited prior art in reply to a non-final notice of rejection. In this case, however, amended claim 1 does not comply with the unity of invention requirement with original claim 1, and, therefore, in reply to the amendment, the examiner will issue a final notice of rejection due to "Shift Amendment" (article 17bis(4)). It should also be noted that the examiner is not obliged to examine the patentability of amended claim 1.

In this case, in reply to a non-final notice of rejection, it is possible only to limit the scope of the original claim 1.

In detail, if the original claim 1 has no special technical feature over cited prior art, that is, if the original claim 1 lacks novelty, the original claim 1 cannot comply with the unity of invention requirement with any other claimed invention, in accordance with JPO examination guidelines regarding the unity of invention requirement. That is, if a claim lacking novelty has been examined, the application including such a claim cannot be amended at all (you can file a divisional application: please see question 9), in accordance with JPO examination guidelines regarding the unity of invention requirement. This situation is too severe to applications. Thus, JPO examination guidelines regarding the "Shift Amendment" were added as follows.

  1. If claim 1 lacking novelty has been examined and the application includes no other claims, it is possible to amend to limit the scope of such a claim.
  2. If claim 1 lacking novelty has been examined and the application includes one or more other claims, the examiner examines a series of claims originating from claim 1 and serially limiting the scope of them (basically based on the order of claims). Herein, in order to identify "A Series of Claims", the examiner can divide multi-dependent claims into correspondent single-independent claims (a multi-dependent claim can be examined only partially).

    1. If all examined claims lack novelty, it is possible to amend to limit the scope of the finally examined claim that had the narrowest scope.
    2. If the examiner finds a claim that complies with novelty, that is, if an examined claim has a special technical feature over prior art, it is possible to amend to limit the scope of the claim while maintaining having the special technical feature, regardless of other examined claims. Precisely speaking, the restriction is that each amended claim has the (common) special technical feature. Thus, in theory, it is also possible to amend to broaden the scope of the claim while maintaining having the special technical feature. (although it is important how "A Special Technical Feature" is determined (judged) by the examiner, JPO examination guidelines are not so informative on this point.)

Example 5
[Before Amendment]
Claim 1: A cellular phone comprising a receiver for tv broadcasting and a recorder for compression to record the received tv broadcast.
[After Amendment]
Claim 1: A cellular phone comprising a tv broadcasting receiver and a recorder for compression to record the received tv broadcast by varying a compression ratio according to the content of the broadcast.
Claim 2: A cellular phone comprising a tv broadcasting receiver and a power controlling means for intermittently providing a power source to the receiver to be capable of receiving an emergency alarm broadcast.

In example 5, claim 1 was limited to differentiate claim 1 over cited prior art, and claim 2 was added. As a result of the amendment, claims 1 and 2 have no common special technical feature over cited prior art, and therefore claim 2 does not comply with the unity of invention requirement. Thus, the addition of claim 2 will be deemed to be "Shift Amendment". In this case, the examiner will continue to examine the patentability of amended claim 1 only and, even if the examiner concludes that claim 1 is patentable, a final notice of rejection will be issued.

Example 6
[Before Amendment]
Claim 1: An ink composition for an inkjet printer, comprising a component X.
Claim 2: An inkjet printer comprising a specific nozzle capable of regulating a dropping amount of an ink composition.
[After Amendment]
Claim 1: Deleted.
Claim 2: An inkjet printer comprising a specific nozzle capable of regulating a dropping amount of an ink composition.

In example 6, original claim 2 does not comply with the unity of invention requirement. In this case, therefore, the examiner will examine only claim 1 and will issue a non-final notice of rejection for reasons of (i) lack of inventive step and (ii) lack of unity of invention. although claim 1 was canceled in reply to the non-final notice of rejection, this amendment is deemed to be "Shift Amendment" under the new law. Thus, the examiner will simply issue a final notice of rejection due to "Shift Amendment" (article 17bis(4)). In this case as well, the examiner is not obliged to examine the patentability of claim 2.

Question 9
How can we avoid "Shift Amendment" ? What do you recommend to cope with a "Shift Amendment" situation as referred to in above-mentioned examples 4, 5 and 6 ?
Answer

In order to avoid "Shift Amendment", careful consideration should be paid to claim amendment to be made after you receive a notice of rejection from the examiner.

In the case where unity of invention is denied by the examiner, leaving claim(s) unexamined for patentability, shift amendment can easily be avoided by simply deleting the unexamined claim(s) and filing a divisional application covering the unexamined claim(s).

For instance, in the cases referred to above in examples 4, 5 and 6, you can file a divisional application covering amended claim 1 (example 4), added claim 2 (example 5), and claim 2 (example 6), respectively, in response to a notice of rejection due to "Shift Amendment" under article 17bis(4).

In the case where unity of invention is established but a claim / claims is / are about to be amended drastically, it is important to carefully consider if the amended claim(s) establishes unity of invention with the already examined invention. If it seems to be difficult to establish(es) such unity, it is recommendable to file a divisional application with the amended claim(s) instead of prosecuting the claims(s) in the same application.

Question 10
In the case where we ask you to file an English-Language patent application, by when must a Japanese-Language translation be filed under the new law ?
Answer

The term for filing a Japanese-Language translation of an English-Language patent application will be extended up to 14 months after the filing date, which is retroactive to the priority date, if applicable. This brings no significant change as far as an English-Language patent application claiming priority under the Paris convention is concerned since, even under the current system, it is possible for you to enjoy 14-month period including a 2-month grace period for filing a Japanese-Language translation and a 1-year priority period under the Paris convention.

However, in the case of an English-Language application with no priority under the Paris convention, the term for filing a Japanese-Language translation will also be extended up to 14 months after the filing date in Japan. Thus, in the case where a patent specification is drafted in English at the beginning, it would be a possible option to file an English-Language patent application in Japan as the first-filing country and then to file a Japanese-Language translation within 14 months of the filing date.