日本語
Patent System Q&A
Opening up a world of opportunity
4. OFFICE ACTIONS
- (i) the claimed invention lacks novelty or inventive step over the prior art (Arts. 29(1)(iii) & 29(2)) (prior art is regarded as "publicly known or publicly worked worldwide prior to filing");
- (ii) the claims/specification lacks clarity of description (36(6)(ii));
- (iii) the claimed invention lacks support in the specification (Art. 36(6)(i));
- (iv) the disclosure is insufficient to enable working of the claimed invention (Art. 36(4)(i));
- (v) new matter (not originally disclosed in the specification) has been added to amended claims (Art. 17bis(3));
- (vi) the claimed invention lacks unity of invention (Art. 37) (See the 4.5 Unity of invention rejections & special technical features);
- (vii) below);
- (viii) the claimed invention lacks industrial applicability (Art. 29(1)(main paragraph) (i.e., since it contain methods of medical treatment, or operating on or diagnosing a human being; or any information processing by software is not clearly realized using a hardware source);
- (ix) the claimed invention is a non-statutory invention (Art. 29(1)(main paragraph) (i.e., it is not "creation of a technical idea utilizing a law of nature."); or
- (x) the claimed invention is substantively identical to an invention with a different inventor/applicant filed prior to the application concerned, but published after (Art. 29-2);
- The examiner will obviously look at claim 1 first. If the "technical feature(s)" in claim 1 is found to lack novelty, the feature(s) does not "contribute over the prior art" and thus the claim will be classed as not having an STF. All claims will therefore lack unity of invention since claim 1 and other claim(s) cannot possibly share an identical or corresponding STF if claim 1 has no STF to be shared.
- Conversely, if claim 1 is found to have novelty, the claimed feature(s) provides "a contribution over the prior art" and the claim therefore has an STF.
- If the "same or corresponding STF" is found in independent claims examined subsequently (i.e., these claims share or equivalent feature(s) in common with claim 1 that makes the claims novel), unity of invention requirements will be met for these claims.
- If independent claims are found not to share the "same or corresponding STF" as claim 1, these claims will be rejected on unity grounds (and will generally not be examined for other patent requirements).
- Limiting the scope of claim 1 to ensure novelty (a thorough study of prior art is advisable); and
- Load small numbered claims with the important features of the inventions, as these will most likely be examined.
How long does it usually take to receive a first office action?
The Japanese Patent Office has become much more efficient in examination turn around in recent years. Consequently, we can usually expect a first office action (grant or rejection) between 9-12 months after a Request for Examination. This is the fastest turnaround time of the IP5 (US, China, Japan, Korea and Europe)
Japanese office actions are usually called "Notice of Rejection" or "Reason for Refusal/Rejection" in translation; we at KIPB Japan use the former.
Do you provide translations of offices actions?
For the benefit of clients, KIPB Japan generally first provides machine translations of OAs, etc. available from the JPO along with our summarized comments. We can then provide more accurate human translations upon request, or to clients who have specifically asked for this as a regular procedure.
Can you list some of the most common reasons an application is rejected?
Some of the most common reasons for rejections are as follows:
These rejections will be clearly set out in the office action, and KIPB Japan shall provide explanations and suggestions for response in a cover letter or upon request.
See 1.2 Patentable Inventions for more details on some of these concepts.
Or alternatively, see the JPO's Examination guidelines via the following PDF:
What's the difference between a first (non-final) and "FINAL" Office Action? And how does the response differ?
Non-Final Office Actions
Except for divisional office actions in which the reason for rejection is the same as that of the parent application, all first office actions (entitled "Notice of Rejection") will be "non-final". Any subsequent office action which stems from the discovery of new prior art publications or new reasons for rejection, etc. will also be a "non-final" office action.
There are relatively few restrictions to the amendments that can be made in response to a "non-final" Reason for Rejection, and no official fee is levied. As a general rule, you are not permitted to make "shift" amendments. Shift amendments are amendments whereby the examined claims and newly amended claims do not meet unity of invention requirements. In effect, you are not permitted to significantly replace already examined claims with different ones. If you remove limitations, these may be classed as shift amendments ('shifting' away from the examined limitations to unexamined limitations). In this instance, our only option is to pursue the new claims in a divisional application.
Having said that, shift amendment judgments vary quite widely depending on the examiner, and such amendments are often allowed. Therefore, rather than filing a divisional at the first office action stage, a reasonable option is to file amended claims and wait and see how the examiner responds.
As in all instances, amendments should be obvious from the original disclosure, otherwise a new matter rejection will occur. In our experience, this can mean close to verbatim text. If you are relying on figures or tables, the support should be clear and not need interpretation.
Final Office Actions
An office action becomes "final" when a new reason for rejection is found stemming only from any amendment(s) made in response to a first, "non-final" action. The title of the office action issued by the JPO is also "Notice of Rejection", but it will usually have the word "FINAL" written on the cover page to distinguish it from first office actions.
Importantly, there are stricter restrictions to the amendments that can be made after receiving a FINAL office action - e.g., i) cancellation of claims, ii) further restriction of claimed elements (i.e., limitation of claim(s) to components defined in claim(s) before the amendment), iii) correction of errors; and iv) clarification of ambiguous recitations (that have been rejected in the office action). Again, no official fee is levied.
Note that it may be possible to revive any claims cancelled in response to a final office action by making divisional applications (see Section 5 on Divisional Applications.) It should also be noted that the examiner will normally remain the same after a final action has been issued.
Arguments in Response
At this final or non-final office action ("Notice of Rejection") stage, the applicant can also submit an argument detailing the amendments or asserting the contribution over the prior art, etc. However, if an amendment and/or argument fails to overcome the rejection in the Notice of Rejection, a Decision of Rejection action shall be issued, and the prosecution moves to the next stage (Appeal stage) (see 6.1 Decision of Rejection and Section 7 on Appeals.)
Can you give provide an overview of unity of invention rejections and requirements?
Similar to PCT Rule 13.1-13.3, unity of invention requirements in Japan stipulate that all claimed inventions in applications with two or more inventions (i.e., two or more independent claims), must form a "single general inventive concept" by sharing the "same or corresponding special technical features" (hereafter “STF”) (Art. 37 of the Patent Law; and Article 25octies of Regulations under the Patent Act). A "corresponding STF" is a technical feature that solves the same problem of the claimed invention.
The concept of "STF" is thus the key component in judging whether an application containing two or more inventions meets unity of invention requirements.
● "Special Technical Feature" (STF) Definition:
"STF" is defined as "a technical feature providing a contribution over the prior art." Whilst the scope of this "technical feature providing a contribution over prior art" does not map exactly to having novelty or inventive step, if the technical feature in a claimed invention has no novelty, then the claim will always be deemed as not having an STF or not providing a "contribution" over the prior art. Thus, an application’s relationship with the prior art is of paramount importance when judging unity of invention requirements.
● Examination Process:
An examiner will determine unity of invention by judging whether two or more inventions in an application share the same or corresponding STF. Claimed inventions that fail this test will not be considered a "Subject of the Examination" (i.e., inventions in these claims will not be examined for any other patent requirements such as novelty or inventive step.)
The examination procedure for determining the same or corresponding STF is a little complex due to the various permutations arising from the particular structure of the claim set. The following is thus a general example of the procedure for illustration.
Determination of the Subject of the Examination Based on Special Technical Features
If claim 1 does not have an STF, the examiner is only obliged to include claims determined to be of the same category of invention including all invention specifying matters as claim 1 (typically the claim 1 serially dependent claims) as the "Subject of the Examination" (i.e., only these claims will be examined for other patent requirements such as novelty or inventive step, etc.).
When there are such claims, the examiner will determine if the claim with the lowest claim number among them (usually claim 2 or 3) has any STF. If this claim has an STF, the claims examined for STF thus far will constitute the "Subject of the Examination". However, if the claim does not have an STF, the examiner will look for STF in the next dependent claim in series among these claims, and so on until an STF is either found or all these claims are exhausted. Once an STF has been found, or the claims are exhausted, the claims which have been examined for STF thus far will constitute the "Subject of the Examination".
Determination of the Subject of the Examination Based on Examination Efficiency
The examiner will also add other claims to the Subject of the Examination if it is efficient to examine them together with the claims examined according to the procedure above. Such claims can be efficiently examined if they are of the same category that include all matters specifying the invention of the invention first claimed in the claims or the examination can be done without needing additional prior art searches and making a determination as a result of examining inventions that are already the Subject of the Examination.
Notes:
(i) Thus, no subsequent independent claim sets will be examined if claim 1 has no STF. This means that even if an STF is found in subsequent claims of the same category as claim 1, the unity of invention rejection will still hold because the all-important claim 1 has no STF.
(ii) Novelty or inventive step, etc. rejections might also stem from the claims examined for STF
(iii) It will not be known at this stage whether the claims not examined for STF have novelty or inventive step, etc. as they will not be subject to examination for these other patent requirements.
● Dealing with unity of invention rejections:
To avoid unity rejections in the first place, KIPB Japan recommends 1) limiting the scope of claim 1 to ensure novelty (a thorough study of prior art is advisable); and 2) load small numbered claims with the important features of the inventions, as these will most likely be examined.
After receiving a unity rejection, an applicant can respond by:
a) arguing for a shared STF between the two or more inventions (thus unity),
b) amending to incorporate features of unexamined claims so as to claim STF,
c) amending so that all claims share "the same or corresponding special technical feature" or
d) amending to delete the independent claims without unity (divisional applications are available for these cancelled claims with some restrictions).
Note however, that so-called "shift amendments" are not permitted (see 4.6 Shift Amendments)
What are "shift amendments" in the context of unity of invention rejections?
(Before reading on, see the explanation on unity of invention & special technical features (STF) requirements in 4.5 Unity of Invention Rejections.)
"Shift amendments" are amendments that change (shift) the special technical feature of an invention, and have been prohibited for all applications filed on or after April 1, 2007.
Overview:
As we've stated in 4.5 Unity of Invention Rejections, to pass the unity of invention requirement in Japan, two or more claimed inventions in the same application must have the same special technical feature (STF) or a technical feature corresponding to the STF (STF = a technical feature contributing over the prior art).
When an applicant makes amendments to the claimed inventions in response to an office action, the claimed inventions prior to the amendment (i.e., the inventions examined for STF/unity of invention in the office action) and the amended claimed inventions must meet the requirement of unity of invention. That is, the amended claims must have the same STF or corresponding STF to the examined claims pending before the amendment. Any amendment that changes ("shifts") the STF of the original examined claims to a different STF will fail this unity requirement, and is thus regarded as an inadmissible "shift amendment" under Art. 17bis(4).
A simple example of this might be an applicant amending to delete claim 1 and dependent claims which were found to have no STF by an examiner, and replacing them with the next independent claim set which had thus far not been subject to examination (due to lack of unity of invention) and which may have a different STF. The JPO regards this "shifting" of the claimed subject matter to be unfair and time-consuming if permitted.
Applicability:
Note that shift amendments only apply to amendments subsequent to the issuing of an office action. The specification and drawings can be amended without penalty, and there are no shift amendment restrictions prior to receiving a first action. Shift amendments can thus for instance be made at the time of request for examination. Shift amendments in the response to a non-final office action will result in a “final” office action (with consequent amendment limitations), and shift amendments in response to a final action will result in a Decision of Rejection (necessitating an Appeal)
(See more in 4.4. Non-final and Final Officer Actions and 6.1 Decision of Rejection.)
Counteractions:
It should also be noted that any claims rejected for unity or shift amendments can be revived by divisional application (but restrictions apply depending on priority date). - See Section 5. DIVISIONAL APPLICATIONS.
We at KIPB Japan will provide all the necessary guidance and advice on these provisions throughout the prosecution of your application.
How long do I have to respond to an office action?
The basic time limit for response is 60 days for Japanese residents and 3 months for applicants' resident abroad, which is extendable by up to 3 months upon request and payment of a small extension fee (see 4.8 OA response extensions and 4.9 Fees for OA Response).
Is it possible to extend the deadline for responding to an office action?
Yes, overseas applicants can request a two-month extension and a further one-month extension (for a maximum of 3-months extension). These requests can be made together or separately. No grounds are necessary. The JPO fee is JPY2,100 per request. The requests must be made before the deadline expires.
Can I request an extension even after the response deadline has expired?
Yes, it is also possible to obtain a 2-month extension to an already expired deadline by paying a JPO surcharge of JPY51,000. This request and fee payment must be within 2 months of the expired deadline (and is applied to 2 months from the expired deadline, not the date of request.). No grounds are necessary.
However, this extension after an expired deadline is not possible if an extension request within the time limit (above) has been made, or if the applicant has already responded within the time limit.
What are the fees for responding to an office action?
There are no official fees for filing a response, but there are fees for requesting an extension to the period for response*, and if the numbers of claims increase due to amendment (JPY3,600 per extra claim).
KIPB Japan attorney fees depend greatly on content and complexity of the office action, and generally range from JPY50,000 to JPY300,000. This includes making and filing an argument/amendment.
We may also conduct an interview with the examiner if requested and provide translations of the OA, etc. with initial comments/suggestions upon request or arrangement with long term clients.
*Extension request fees:
Official fee: JPY2,100 for the first 2 months, and another JPY2,100 for the 3rd month (or JPY4,200, if 3 months requested at same time.)
Is it possible to hold interviews with examiners concerning rejections or amendments?
Yes, in our experience, interviewing the examiner is often an effective way to help clarify the Examiner's understand of the invention. Interviews may be conducted to gauge an Examiner's acceptance of possible amendments. The Examiner may also suggest allowable amendments. Examiners are also often willing to take another look at inventive step objections (although, unless they have misunderstood the content, it may be difficult to get them to reverse their decision).
Interviews can be done in person, informally just with your Japanese agent over the phone, or via video conferencing with applicants located anywhere in the World.
Your Japanese attorney must be present and lead the interview in Japanese (interpreters are also allowed if necessary). KIPB Japan is particularly experienced in conducting Examiner interviews to the benefit of our clients compared to many other Japanese patent firms.
Is it possible to file auxiliary amendment requests?
No, only one amended set of claims may be filed.
The examiner may discuss proposals before filing the amendment.
What happens if I don't respond to an office action?
Failure to respond to an office action within the prescribed period (3 months from issue of OA + 3 months extendable) will result in a Decision of Rejection (see 6.1 Decision of Rejection.) at which time the applicant can proceed with a Trial/Appeal against examiner’s decision. Note that official fees are payable for an Appeal and possible claim amendments are very restricted compared to a first (non-final) office action.
Is recovery possible?
Note that (at the time of writing*), the JPO allows recovery of some applications that have missed various prosecution deadlines, if failure due to is Covid-19. In regard to responses to office actions, the JPO will be flexible in its approach to allow the response within a certain period of time after the deadline (for example, within the period normally allowed for filing an extension). A simple statement listing the Covid-19 related reason is all that is required
*This relaxed system may change given developments post-Covid. Please contact us for the latest recovery procedures.
For more details on Recovery, see OTHER Q4: Recovery of Application after missed deadline.
Is it possible to use post-filing data to support claims during prosecution in Japan?
Yes. An applicant may submit post-filing data with an opinion or statement in response to office actions or at the time of an appeal, etc. (called “a certificate of experimental results”).
What is post-filing data?
Post filing data is data from the results of trials or experiments, etc. that was not submitted with the original patent application.
This may be because obtaining such data often takes time and money, and the applicant wished to file their invention as soon as possible beforehand in order to prevent rivals from establishing novelty for similar inventions. However, doing so may increase the risk that the application lacks sufficient data to demonstrate inventive step at the time of filing. Hence, the need for new data after filing.
Under what circumstances can post-filing data be used in prosecution in Japan?
Post-filing data can be used to address novelty, inventive step, enablement, clarity rejections. However, it is only deemed as supplementary data for the examiner's consideration. Its purpose is for the applicant to clarify or show that matters stated in the original disclosure are correct and reasonable.
Post-filing data thus cannot be used to add to, replace or correct the original disclosure. That is, when the specification cannot be expanded or generalised to encompass the scope of the claimed invention, the experimental results cannot be used to meet that lack.
In general, whilst post-filing data should not be considered as effective as in other jurisdictions, it is still useful in arguing patentability.