Examination Procedure Japan Patent Office 0
Outline I. Overview II. First Action (FA) III. Second Action (SA) 1
Outline I. Overview II. First Action (FA) III. Second Action (SA) 2
I. Overview A. General Flow of Patent Examination Filing Examination Publication Notification of reasons for refusal Amendment & Opinion Decision to grant Decision of refusal 3
I. Overview B. Flow of Patent Examination (JP) Within 3 years JPO Filing Publication Request for examination Examination Notification of reasons for refusal Amendment & Opinion 18 months Decision to grant a patent Decision of refusal
I. Overview C. How about your country? Filing Within years Request for examination needed? Publication months Examination Notification of reasons for refusal Amendment & Opinion Decision to grant a patent Decision of refusal 5
I. Overview D. Flow of Examination of PCT Application PCT IA Filing to RO e.g. JP, EP, US PCT: Patent Cooperation Treaty IA: International Application RO: Receiving Office ISR established by ISA e.g. JP, EP, US Publication with ISR by IB ISR: ISA: IB: International Search Report International Search Authority International Bureau (WIPO) If requested IPER established by IPEA e.g. JP, EP, US IPER: International Preliminary Examination Report IPEA: International Preliminary Examining Authority Country A Country B Country C Examination Examination Examination Notification Notification Notification Amendment & Opinion Amendment & Opinion Amendment & Opinion National Phase Grant Refuse Grant Refuse Grant Refuse 6
I. Overview E. Sample PCT Publication with ISR Cited from WO 2013/019268 A1 7
Outline I. Overview II. First Action (FA) III. Second Action (SA) 8
II. First Action (FA) A. Flow of FA 1/2 Understand the application & the claim Filing Examination Notification Amendment & Opinion Grant Refuse [0001] [0002] 1. 2. Fig.1 Sample Patent Application Cited from WO 2012/029692 A1 9
II. First Action (FA) A. Flow of FA 2/2 Filing Understand the application & the claim Examination Notification Search for prior arts Select the closest prior art Amendment & Opinion Compare the closest prior art with the claim Grant Refuse Determine whether any reasons for refusal exist? Draft a notification 10
II. First Action (FA) B. Flow of FA - Search DB in JPO - Understand the application & the claim Search for prior arts Select the closest prior art Compare the claim with the closest prior art Determine whether any reasons for refusal exist? Internal Databases - Domestic Patent DB search key: IPC, FI, F-term, Text (Ja.) - Foreign Patent DB search key: IPC, CPC (ECLA), USC, Text (En.) - NPL DB (NPL: Non Patent Literature) Papers in science journals, etc. External Databases - IEEE Xplore, ACM-DL, JDreamIII, STN on the Web, Google Scholar, etc. Draft a notification Internet - Web pages 11
Outline I. Overview II. First Action (FA) III. Second Action (SA) 12
III. Second Action (SA) A. Flow of SA Any reasons for refusal exist? Yes FA Notification of reasons for refusal SA Filing No Amendment & Opinion Examination Notification Amendment & Opinion Have the reasons been resolved? Yes No Grant Refuse Other reasons for refusal exist? Yes No FA SA SA Grant Refuse 13
III. Second Action (SA) B. Criteria for Final Decision or Another Notification (JP) FA SA Notification of reasons Amendment & Opinion * In some cases, neither amendment nor opinion is made. Have the reasons been resolved? Grant Yes Other reasons for refusal exist? No SA No Yes SA Refuse Criteria for choosing Refuse or notification of new reasons: The reasons stated in FA are deemed not to be resolved. Refuse (draft unresolved reasons) The reasons stated in FA are resolved, but other new reasons for refusal are found. Notification of New Reasons 14
III. Second Action (SA) C. Examples of Refuse or Notification of New Reasons Amended part of a claim is mentioned in the prior art document cited in FA Addition of a well-known art to a claim Addition of a commonly used art to a claim The reasons are deemed not to be resolved Refuse Against the amended claim, a new prior art document is found other than the well-known art and the commonly used art Amendment made the claim or description unclear Amendment added a new matter to the claim or description The reasons stated in FA are resolved, but other new reasons for refusal are found Notification of New Reasons for Refusal 15
III. Second Action (SA) D. Examples of Refuse 1/2 Amended part of a claim is mentioned in the prior art document cited in FA Prior art doc D1 cited in FA [A] [B] Original application [A] [B] 1. [A] Fig. 1 * [A]: feature A [B]: feature B AMENDMENT D1 cited in FA [A] [B] Current application [A] [B] 1. [A] + [B] Fig. 1 The reasons are deemed not to be resolved Refuse 16
III. Second Action (SA) D. Examples of Refuse 2/2 Addition of a well-known art to a claim Addition of a commonly used art to a claim Prior art doc D1 cited in FA [C] * [C]: feature C D1 cited in FA [C] Original application [C] [well-known art] [commonly used art] 1. [C] Fig. 1 AMENDMENT [C] [well-known art] [commonly used art] 1. [C] + [well-known art] Fig. 1 Current application or [C] [well-known art] [commonly used art] 1. [C] + [commonly used art] Fig. 1 The reasons are deemed not to be resolved Refuse 17
III. Second Action (SA) E. Examples of Notification of New Reasons for Refusal 1/2 Against the amended claim, a new prior art document is found other than the well-known art and the commonly used art Prior art doc D1 cited in FA [D] Original application [D] [E] 1. [D] Fig. 1 * [D]: feature D AMENDMENT The reasons stated in FA are resolved, but other new reasons for refusal are found Notification of New Reasons for Refusal New D1 (will be cited in SA) [D] [E] Current application [D] [E] 1. [D] + [E] Fig. 1 * [E]: feature E 18
III. Second Action (SA) E. Examples of Notification of New Reasons for Refusal 2/2 Amendment made the claim or description unclear Amendment added a new matter to the claim or description Prior art doc D1 cited in FA [F] Original application [F] [G] 1. [F] Fig. 1 * [F]: feature F * [G]: feature G AMENDMENT [F] [G] 1. [F] + unclear [G] Fig. 1 The reasons stated in FA are resolved, but other new reasons for refusal are found Notification of New Reasons for Refusal D1 cited in FA [F] Current application or [F] [G] 1. [F] + [new matter] Fig. 1 19
III. Second Action (SA) F. Points to consider Opportunity for amendment The applicant s opportunity for amendment may not be unreasonably limited. Suggestion of amendment In a notice of reasons for refusal, the examiner may suggest an amendment, which enables applicants to easily respond and thus contributes to prompt and precise examination. Communication When it is considered to contribute to prompt and precise examination, examiners could communicate with the applicant through an interview, by telephone, or by facsimile. 20