When we receive instructions to enter the national phase in Japan with respect to a PCT application, we are sometimes requested to submit amendments of claims and/or specification of the PCT application which were made in the international phase or are proposed for the national phase entry.
However, under the current Japanese Patent Law and practice, the standard for the new matter judgement is extremely strict, and therefore, we make it a rule to refrain from translating any amendments at the time of entering the national phase in Japan so that we can avoid the possibility of putting a reason for rejection or invalidation into the application.
Under the circumstances, we translate the originally filed documents at the time of filing a national phase entry into Japan. Then, we will review and file the amendments later, usually at the time of filing a request for examination. For the clients who wish to preserve rights for filing a future divisional application directed to the original claims of the PCT application, we will revise the specification to incorporate all the original claims of the PCT application into the end of the specification.
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