Section 3 Notice of Reasons for Refusal
Where the examiner intends to render an examiner's decision to the effect that an application is to be refused, the examiner shall notify the applicant of the reasons for refusal and give the applicant an opportunity to submit a written opinion, designating an adequate time limit for such purpose (Article 50).
It is unfair for the applicant that the examiner renders the decision of refusal immediately without giving the applicant any opportunities for defense even when the examiner is convinced of the reasons for refusal. Moreover, it's not beyond the realm of possibility that the examiner makes a mistake. Under these circumstances, this provision aims at fair and appropriate operation of the procedures of a patent application, giving the applicant an opportunity for offering an opinion, as well as overcoming the reasons for refusal by amending the description etc., and also giving the examiner an opportunity for reconsidering with a written opinion, etc. (Reference) Decision by the Tokyo High Court, March 30, 1993 [Heisei 3-nen (Gyo Ke) No. 199], "COLORING
METHOD"
The Notice of reasons for refusal falls into the following two types in view of procedure.
(i) Non-final notice of reasons for refusal (Article 17bis(1)(i))
(ii) Final notice of reasons for refusal (Article 17bis(1)(iii))
2.1 Non-final notice of reasons for refusal
The "non-final notice of reasons for refusal" is a notice of reasons for refusal notifying reasons for refusal which should be notified in the first examination. Therefore, the first notice of reasons for refusal is always the "non-final notice of reasons for refusal." A notice of reasons for refusal including reasons for refusal which should have been notified in the first examination is the "non-final notice of the reasons for refusal" in principle, even when the notice is notified after the first notice of reasons for refusal. (As for exceptions, see 3.2.1(2))
It is to be noted that amendments to a descriptions etc. should always meet the provision of Article 17bis(3), while amendments to claims made after receiving the non-final notice of reasons for refusal should meet the requirement of Article 17bis(4) in addition to the requirement of Article 17bis(3).
2.2 Final notice of reasons for refusal
The "final notice of reasons for refusal" is a notice of reasons for refusal notifying only reasons for refusal necessitated by amendments made in response to a "non-final notice of reasons for refusal" in principle.
Whether a second or later notice of reasons for refusal shall be the "non-final notice of reasons for refusal" or not should be substantively determined, not by the formal number of notifications.
As for specific determination as to whether a notice shall be the "non-final notice of reasons for refusal" or the "final notice of reasons for refusal," see 3.
Amendments to claims after receiving the "final notice of reasons for refusal" should meet the requirements of Article 17bis(5) and (6) in addition to the requirements of 17bis(3) and (4).
(Explanation)
If claims can be freely changed whenever a notice of reasons for refusal is received, the examination may have to be restarted on each occasion. This contributes to not only delays in examinations but also damages to fairness in treatment between applications with appropriate amendments and those without it. Therefore, in order to carry out a prompt examination while securing the fairness among applications, a system to issue the final notice of reasons for refusal and limit the content of amendments in response thereto is established so as to limit the amendments in response to the final notice of reasons for refusal to the scope in which the results of the examination that has been already completed can be effectively used.
Where a notice under Article 50bis is given along with a notice of reasons for refusal, amendments to claims should meet the same requirements as the amendments after receiving the "final notice of reasons for refusal" (see "Part VI Chapter 1 Section 2
Notice under Article 50bis").
In principle, the examiner should issue a notice of reasons for refusal at most two times (each of the "non-final notice of reasons for refusal" and the "final notice of reasons for refusal" once) and carry out examination, with effectiveness of the whole procedure being considered.
3.1 First notice of reasons for refusal
(1) The first notice of reasons for refusal is set to the "non-final notice of reasons for refusal."
(2) In principle, the examiner should give notice of all of the reasons for refusal which have been found in the first notice of reasons for refusal.
However, where notification of only a reason for refusal is likely to lead to amendments by which not only the notified reason for refusal but also another reason for refusal will be overcome at the same time, multiple reasons for refusal should not be always notified redundantly. For instance, where notification of only a reason for refusal in terms of lack of inventive step is likely to lead to amendments by which not only the reason for refusal in terms of lack of inventive step but also a reason for refusal in terms of non-compliance with description requirements will be overcome, the reason for refusal in terms of non-compliance with description requirements should not be always notified.
3.2 Second or later notice of reasons for refusal
For the second or later notice of reasons for refusal, the examiner should give notice of the reasons for refusal after determining whether it should be set to the "final notice of reasons for refusal" or the "non-final notice of reasons for refusal" according to the following.
In a case where it is not fallen into the following practical examples shown in 3.2.1 to 3.2.2 and whether the notice shall be the "non-final notice of reasons for refusal" or the "final notice of reasons for refusal" is not clear, the examiner returns to the purport of the system (see (Explanation) of 2.2) and makes a decision so that the applicant's opportunity for amendment may not be unreasonably limited.
3.2.1 Cases where "final notice of reasons for refusal" should be notified
A notice of reasons for refusal notifying only reasons for refusal necessitated by amendments made in response to a "non-final notice of reasons for refusal" shall be the "final notice of reasons for refusal".
(1) Types of the notice of reasons for refusal notifying only reasons for refusal necessitated by amendments
a A notice of reasons for refusal notifying only reasons for refusal necessitated by the amendments to a description, etc. made by the applicant in response to a "non-final notice of reasons for refusal"
Example 1: In a case where the statement of the detailed description of the invention becomes obscure or new matters were added to the statement of the detailed description of the invention by amendments, a notice of reasons for refusal notifying only that effect.
Example 2: In a case where new reasons for refusal in terms of lack of novelty, inventive step, etc. should be notified as to the examined claims to which new technical matters were added by amendments or of which technical matters were deleted or limited by amendments, a
notice of reasons for refusal notifying only the new reasons for refusal.
Example 3: In a case where new reasons for refusal in terms of lack of novelty, inventive step, etc. should be notified due to amendments made to add claims, a notice of reasons for refusal notifying only the new reasons for refusal.
Example 4: In a case where amendments adding new matters to the claims or amendments
causing deficiency in descriptions were made, a notice of reasons for refusal notifying only that effect.
Example 5: In a case where a claim is amended so that it includes any invention which is not the subject of the examination with regard to the requirements other than those described in Article 17bis(4) in accordance with "Part IV Chapter 3 Amendment Changing Special
Technical Feature of Invention," a notice of reasons for refusal notifying only that effect.
Example 6: In a case where a claim is amended so that it includes any invention which is not the subject of the examination with regard to the requirements other than those described in Article 37 in accordance with "Part II Chapter 3 Unity of Invention," a notice of reasons for refusal notifying only that effect.
Example 7: In a case where a claim is amended so that it includes any invention which is not the subject of the examination with regard to the requirements other than those described in Article 36(6)(iv) and Regulations under the Patent Act Article 24ter(v) in accordance with "Part II Chapter 2 Section 5 Ministerial Ordinance Requirement on Statement of Claims", a
notice of reasons for refusal notifying only that effect.
Example 8: In cases to which two or more of items Example 1 to Example 6 shown above are applicable, a notice of reasons for refusal notifying only these effects.
b A notice of reasons for refusal notifying only reasons for refusal necessitated as a result of the examination of novelty, inventive step etc. required after amendments were made in response to a "non-final notice of reasons for refusal" on the claim excluded from a subject of the search.
(Explanation)
Where claims which had not been examined in terms of novelty, inventive step, etc. (limited to the case where it is clearly expressed in the notice that the claims had been excluded from a subject of the search and therefore examinations on novelty, inventive step, etc. had not been conducted with the reason thereof) were amended and the invention after the amendments is examined, a notice to be notified shall be the "final notice of reasons for refusal" because this case is substantially the same as restarting examination on claims added by amendments.
Example 9: In a case where claims which had not been examined on novelty, inventive step, etc. because the statement of the claims was too obscure to understand even if the description and the drawings were taken into account were amended and reasons for refusal in terms of lack of novelty, inventive step, etc. are found as to the unexamined claims after the amendments, a notice of reasons for refusal notifying only that effect.
Example 10: In a case where claims with which only reasons for refusal of adding new matters were notified without examining on novelty and inventive step because the claims were clearly added new matter were amended and reasons for refusal in terms of lack of novelty, inventive step, etc. are found as to the amended claims, a notice of reasons for refusal notifying only that effect.
Example 11: In cases to which both items Example 9 and Example 10 shown above are applicable,
a notice of reasons for refusal notifying only these effects.
(Points to note)
When the examiner considers that the claimed invention before amendments should not
have been excluded from a subject of the prior art search as a result of taking into consideration a written opinion etc., reasons for refusal in terms of lack of novelty, inventive step, etc. notified as to the claimed invention after the amendments shall be notified in the "non-final notice of reasons for refusal."
c A notice of reasons for refusal notifying only reasons for refusal necessitated as a result of the examination of the requirements other than the aforementioned Ministerial Ordinance Requirement required after amendments were made in response to a "non-final notice of reasons for refusal" on any claim which had not been the subject of the examination with regard to the requirements other than those described in Ministerial Ordinance Requirement on Statement of
Claims (Article 36(6)(iv) and Regulations under the Patent Act Article 24ter(v)).
(Explanation)
Where claims which had not been examined in terms of the requirements other than those described in Ministerial Ordinance Requirement on Statement of Claims (Article 36(6)(iv) and Regulations under the Patent Act Article 24ter(v)) (limited to the case where it is clearly expressed in the notice that examinations on the requirements other than the aforementioned Ministerial Ordinance Requirement had not been conducted with the reason thereof) were amended and the invention after the amendments is examined, a notice to be notified shall be the "final notice of reasons for refusal" because this case is substantially the same as restarting examination on claims added by amendments.
(Points to note)
When the examiner considers that the claimed invention before amendments should not have been assessed to be a violation of the aforementioned Ministerial Ordinance Requirement as a result of taking into consideration a written opinion etc., reasons for refusal notified as to the claimed invention after the amendments shall be notified in the "non-final notice of reasons for refusal."
