Tsubame IP Law Firm

Unfortunately, there are cases where even submission of amendments and arguments won't lead to an application being registered.

 

Upon receipt of a Final Refusal, these are the possible measures:

(1) appeal against decision of rejection,

(2) file a divisional application and

(3) filing an amendment and appeal against decision of rejection,

 

With this newsletter, we would like to explain above-mentioned option (3).

 

If you have received a refusal decision, you may would like to review the details and make amendments again to aim for registration.

However, in the process of patent application filing, the number of possible amendments is not indefinite.

 

In this case, by filing an appeal you gain another opportunity for amendment will be given at the same time as requesting a trial against decision of rejection.

As a general rule, the original examiner will review this amended content before entering the proceedings. This is called preliminary examination.

 

In the case of a foreign applicant, the appeal against the decision of rejection can be filed within 4 months from the date of receipt of the Final Rejection.

The deadline to file an amendment falls within this period.

 

Unlike the normal amendment, amendments that are made at the time of an appeal have certain limits for the correction range.

Specifically, acceptable amendments are the following:

deletion of the claims, reduction of the claims, correction of typographical errors, and unexplained descriptions.

Care should be taken to avoid shift amendment when reducing the scope of claims.

 

In the preliminary examination, the examiner first considers whether the amendment at the time of appeal is legal. If the examiner determines that the amendment is legal, the examiner proceeds with the preliminary examination based on the amended specification, claims and drawings.

On the other hand, if the amendment is illegal, preliminary examination will proceed based on the specification, claims and drawings at the time of the decision of refusal.

Depending on the result of the preliminary examination, the examiner will issue a Notice of Allowance, another Office Action with reasons for refusal, or report the result of the preliminary examination to the JPO Commissioner.

If the preliminary examination does not result in an allowance, you will proceed to the trial stage. If it is determined that the amendment is inappropriate, it is possible to appeal the decision to declining of amendment at the trial stage.

 

Therefore, if you are appealing against the decision of rejection and file an amendment at the same time, you can effectively return to the examination stage.

 

Tsubame Patent Office (APA) has been actively utilizing the above-mentioned means even for cases that have been rejected, and has issued many patent registration cases. In addition, procedures for appealing rejections are also provided at a low cost.

 

Further, we assist you with the filing of your patents, utility models and trademarks as well as with rights management in Japan, China and Korea. Please feel free to contact us.