3. Office Action | Prosecution

Practice Tips when filing Response to Office Action

As you may know, use of ambiguous words, such as “about”, “approximately”, “preferably”, “optionally”, etc., in claims is basically impermissible in Japan.

We often receive Office Actions in which the Examiner is of the opinion that the word “about” in the claims makes the scope of the claimed invention indefinite. In such cases, in general, we propose to simply delete the word “about” in the claims.

Meanwhile, with regard to the term “substantially consisting of” interpreted in JP, it means that it cannot contain any other element that will have some influence on the claimed composition regarding the aimed object of the claimed invention. For example, if a fining agent is included in a glass composition, it may still fall within the scope of the glass composition claim since inclusion of a fining agent is not special and it may not have a special effect or performance on the claimed glass composition. If the patent should say that the claimed invention is free of fining agent, of course, a glass composition including a fining agent will not fall within the scope of the claim. Further, inclusion of impurities will not change the situation.

Similarly, under the Japanese patent practice, “A consists essentially of X” is interpreted to mean that A may include, in addition to X, minor impurities that cannot technically be completely removed from the batch or a trace amount of components that do not affect the aimed object or the intended results of the claimed invention. Bearing the above in mind, for example, if graphite is included in a glass composition, it may still fall within the scope of the glass composition claim as long as the amount of included graphite is very minor and graphite does not at all affect the performance of the claimed batch mixture in terms of the intended results of the present invention.

This is to announce that as a result of the recent revisions to examination standards in Japan, both enablement requirements and support requirements have become very strict, much stricter than in the U.S. or EP.

Under the current Japanese patent practice, enablement requirements and support requirements are met only in cases where (i) the description of the specification is so sufficient that one skilled in the art can practice the entire scope of the invention encompassed by claims without referring to any documents or materials other than the specification, (ii) it can be recognized, from the description of the specification and the technical knowledge that was very common or had already been well-known at the time the application was filed, that the intended results can be obtained in the entire scope encompassed by claims, and (iii) the significance of each feature recited in claims is clearly supported and verified in the specification. For instance, according to these strict enablement and support requirements in Japan, the critical significance of each of the upper and lower limits of a numerical limitation, if it is recited in claims, must be verified with experimental data included in the specification as originally filed or with convincing technical rationale that was self-evident to one skilled in the art at the time the application was filed.

In this respect, please note that the description of the specification must clearly prove, with specific examples or convincing technical rationale, that the intended results were actually achieved for the entire scope of claims at the time the present application was filed, and must also include specific examples or convincing technical rationale to clearly prove the significance of each feature recited in claims. Further, the breadth of claims must be such that the overall disclosure of the application enables expanding or generalizing the actual explanation or description in the specification to the scope of the claims while achieving the intended results for all the area encompassed by the claims can still be recognized from the description of the specification. Submission of experimental data or technical information after the filing of the application or during the examination procedures cannot serve to remedy defects in satisfying any of the enablement requirements and the support requirements.

In short, in Japan, it is, unfortunately, inevitable, to rely upon Examples, which show data relating to the intended result of the invention, given in the specification in order to verify satisfactoriness of the enablement requirements and the support requirements, especially in chemical fields. Hence, it must be proven that Examples to be used to verify the satisfactoriness of the enablement requirements and the support requirements clearly fall within the claimed invention.

Recently, many of the office actions we have received, especially those for applications involving a chemical aspect, include rejections regarding the enablement requirements and/or the support requirements. In our experience, there were some cases where claims had to be restricted to specific embodiments described in the specification, and there were a few cases, as extreme examples, where the application had to be abandoned because of very insufficient support in the specification. It is unfortunately very rare that the original claims can be retained once a rejection regarding the enablement requirements and/or the support requirements is issued.

In order to avoid the problem caused by rejections regarding the enablement requirements and/or the support requirements, (i) the specification should be formulated to include a sufficient number of examples to fully cover the entire scope of the invention encompassed by claims, and (ii) the description of the specification should be prepared such that it proves that the intended results can be obtained in the entire scope of claims. Please again note that there is substantially no remedy to cure insufficient support or description in the specification as originally filed after the application has been filed.

When filing an Appeal against a Decision of Rejection, the following restrictions are imposed on amendments: new issues which would require a further search cannot be presented, as is the case in the U.S. practice after the receipt of a final office action; and adding a new element to the claims, removing a currently existing element from the claims, broadening or changing the gist of the claims, and increasing the number of claims are impermissible.

Also, if amendments do not make the present application finally allowable even though they make the claims patentable over the references cited so far, or if amendments create a new ground of rejection, such amendments will be dismissed by the Board of Appeals, which will most likely result in an unfavorable Decision of Appeal.

If the claims are to be amended to the degree beyond the above-mentioned strict restrictions on amendment after a Decision of Rejection, it will be necessary to file a divisional application in order to have such amended claims duly entered and examined, like an RCE after a final action in the U.S.

Please further note that allowability of the application will be judged on Appeal in terms of whether or not all of the claims are patentable. In other words, if the application includes at least one unallowable claim, the whole application will be rejected even if there are some allowable claims in the application (i.e., a so-called all-or-nothing approach). In Japanese patent practice, the claims are not treated individually on Appeal, and the application will be rejected even with only one unallowable claim. Therefore, it is necessary to ensure that the application includes no unallowable claims when filing an Appeal.

Please note that, under the current Patent Law, the judgment of new matter is very strict, much stricter than that in the U.S. practice.

In this regard, it is impermissible to incorporate any words or expressions which are not directly and exclusively derived from the description of the original specification even if such words or expressions are obvious to one skilled in the art from the specification and the state of the art. In other words, what can be incorporated into the claims and/or the specification in an Amendment are only almost exactly the same words and expressions (perfectly identical support on a word-by-word basis is required) as those given in the original claims and specification. If this rule of amendment is violated, it can constitute a reason for rejection or invalidation as introduction of new matter.

In this connection, we should indicate, in a response, the basis or supporting description in the original specification for each item of amendment.

In addition, under the current Law, if an Amendment filed in response to a first office action necessitates a new ground(s) of rejection, the next office action will be made final.  After the final office action, amendments will be still further restricted so that new issues which are not recited in the claims pending at that time cannot be presented as with the case of the U.S. practice, and increasing of the number of claims will be impermissible.  Also, we do not have a system of continuation applications.  Therefore, in view of the two aspects of very strict restrictions to amendments (i.e., very strict interpretation of new matter and restricted options for amendments after a final office action), utmost care should be taken in formulating and preparing amendments.  Also, it would be advisable to present a variety of claims having different broadnesses of scope and reciting different aspects of the invention in a response to the first office action, in order to have various types of claims examined before the final action.  This will enable us to ascertain the Examiner’s position on the various scopes of the claims and to determine possible courses of action to be taken or the direction in which the claims should be further amended, in order to place the application in condition for allowance.

To a Japanese patent application filed after April 1, 2007, the provisions of “Prohibition of Amendment that changes a Special (Distinguishable) Technical Feature of an Invention” prescribed in Article 17bis (4) will be applied. Under the above provisions, amendments that switch the claims from the subject matter already examined to another are impermissible after a First Office Action is issued by an Examiner. In other words, the applicant is not permitted to amend the claims to those including “a Special (Distinguishable) Technical Feature” which is different from that in the claims present before the amendment to be made, after receiving a First Office Action. In this respect, please note that the term “Special Technical Feature” described herein means the feature lying in the criterion in-between absolute novelty and an inventive step over prior art or the state of the art. In this respect, if claims already examined are judged to have no “Special Technical Feature” by an Examiner, amendments are still further restricted so that only claims having all the features recited in the narrowest claim among the already-examined claims and an additional feature which is very closely related to the features recited in the above-mentioned narrowest claim can be newly presented after a First Office Action.

3 month extension for filing response to Office Action before the Japan Patent Office:

Extension of the term for filing a response

In the case of foreign applicants, the term for filing a response could be extended even under the previous rule. Therefore, the new rule does not substantially affect the extension of the term for foreign applicants.

1) Responding to an Office Action

The legal term for filing a response to an Office Action is 3 months. The term can be extended twice: a two (2) month extension at a first request, and a one (1) month extension at a second request (that is, 6 months in total). Please see the flowchart copied below.

2) Filing an Appeal against a Decision of Rejection

The non-extendible legal term for filing a Notice of Appeal is 4 months (3 months for Japanese applicants). An Amendment can be filed only at the time of the filing of the Notice of Appeal. If an Appeal Brief is not filed together with the Notice of Appeal, the JPO will notify applicants to file the Appeal Brief within 1 month.

3) Responding to an Office Action during an Appeal Procedure

The legal term for filing a response to an Office Action is 3 months. Extensions of the term can be obtained in monthly increments, up to 3 months (that is, 6 months in total). Please see the flowchart copied below.

メニューを閉じる