Enforcement 2007 of Japanese Patent Law Amendment
1. Amendment
More Limited After Official Action
After the first official action, the amendment is accepted
only within the scope of the unity of the invention
of the examined claims, or the amendment constitutes
a reason of rejection. When claims A and B lacking unity
of the invention are originally presented and only claim
A is examined, canceling claim A to leave claim B is
not accepted.
Our Suggestion: When claims A and B may not satisfy
the unity of the invention, more important claim should
be presented in front.
2.More Chance to File Divisional Application
A divisional application may be filed not only within
a period for responding to the official action, but
also within 30 days after receiving the allowance or
the decision of rejection.
Our Suggestion: When an allowance is made without any
official action on the merit, it is suggested to confirm
that the allowed claims cover what the applicant wants.
If not, a divisional application should be filed.
3. Amendment Also Limited in Divisional Application
If a reason of rejection made in a parent application
is not cured in the divisional application before the
first official action is made in the divisional application,
the amendment is limited to 1) cancel claims, 2) narrow
the claims, 3) correct errors or 4) clarify the indefinite
description, as same as the amendment after the final
rejection.
Our Suggestion: The Office Action issued for the parent
application should be reviewed when or before the request
for the examination is filed for the division application.
4. Longer Term to File Translation of Foreign
Language Application
A translation of an application may be filed within
one year and two months from the filing date of the
priority application, if the application was filed in
English in Japan.
Our Suggestion: It is advisable to file an English application
and the request for the examination at an early stage
without translation, particularly when the English language
applicant desires to obtain a patent in Japan earlier,
while deferring the payment of the translation fee.
It is likely that the above changes are effective for
the applications filed on or after April 1, 2007, although
the effective date is not published yet.
I hope that the above information can be of your help.
Should you have any question, please do not hesitate
to contact us.
