Prohibition of Shift Amendment under the Japanese Patent Practice:
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.
If the claims are to be amended in such a manner as to result in violation of the provisions of “Prohibition of Amendment that changes a Special (Distinguishable) Technical Feature of an Invention” prescribed in Article 17bis (4), a divisional application would be required to prosecute such amended claims.