Very strict restrictions to amendments

Very strict restrictions to amendments on claims of patent application in Japan

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.