Part 1 Chapter 2 Section 4 Handling of Written Opinion, Written Amendment, etc.
Section 4 Handling of Written Opinion, Written Amendment, etc.
1. Overview
When finding reasons for refusal, the examiner shall notify reasons for refusal by designating a predetermined time limit. When receiving a notice of reasons for refusal from the examiner, the applicant may submit a written opinion (Article 50). Further, the applicant may make amendment to the description, etc. within the predetermined time limit (Article 17bis).
When the applicant submits a written opinion, a written amendment, etc., the examiner conducts an examination after sufficiently reviewing details of them.
2. Handling of Written Opinion, Written Amendment, etc.
When the applicant submits a written opinion, a written amendment, etc., the examiner proceeds with the examination along the following procedures.
2.1 Handling of written opinion, written amendment, etc.
2.1.1 Handling of written opinion, certificate of experimental results, etc.
A written opinion or certificate of experimental results are no substitute for "Detailed Description of the Invention" in the description. However, these are submitted to clarify or verify that matters stated in the originally-attached description, etc., (referred to in this paragraph as "original description, etc.") are correct and reasonable. Therefore, when the written opinion or certificate of experimental results are submitted, the examiner shall sufficiently take details of them into account.
2.1.2 Handling of written amendment
When a written amendment is submitted before the first examination or in response to a non-final notice of reasons for refusal, the examiner shall conduct an examination on the basis of the description, claims or drawings amended by the written amendment.
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When a written amendment is submitted in response to the final notice of reasons for refusal, the examiner shall accept the amendment if the decision to issue the "final notice of reasons for refusal" is inappropriate or if the amendment is legitimate, and shall conduct examination on the basis of the description, claims and drawings amended by the amendment. When the decision to issue the "final notice of reasons for refusal" is appropriate and when the amendment is illegitimate, the examiner shall dismiss the amendment and conduct examination on the basis of the description, claims and drawings before submission of the amendment (see 2. and 3. in "Section 6 Decision of Dismissal of Amendment".)
2.2 Review of details of written opinion, written amendment, etc.
When the written amendment is submitted before the first examination, the examiner shall conduct prior art search and review whether or not there is any reason for refusal after sufficiently going through details of the written amendment.
When the written opinion, the written amendment, etc. are submitted in response to the notice of reasons for refusal, the examiner shall sufficiently take details of them into account, confirm whether or not the reasons for refusal indicated in the notice of reasons for refusal were appropriate, and subsequently review whether or not the notified reason for refusal has been overcome, or there is any other reason for refusal.
When amendment is not submitted in response to the notice of reasons for refusal but a written opinion, etc. is submitted, the examiner shall confirm whether or not the notified reasons for refusal were appropriate after sufficiently taking details of the written opinion, etc. into account. Subsequently, the examiner shall review (i)whether or not the notified reasons for refusal have been resolved and (ii)whether or not there is any other reason for refusal.
Further, in the case where the written opinion, the written amendment, etc. is submitted in response to the final notice of reasons for refusal, when the examiner decides to decline the amendment in the written amendment, the examiner shall confirm, on the basis of the description, claims or drawings before submission of the written amendment, whether or not the notified reasons for refusal were appropriate. In addition, the examiner shall review (i)whether or not the notified reasons for refusal have been resolved and (ii)whether or not there is any other reason for refusal.
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Part 1 Chapter 2 Section 5 Decision
Section 5 Decision
If no reasons for refusal are found for a patent application, the examiner shall render a decision to the effect that a patent is to be granted. (Article 51).
Moreover, when determining that the notified reasons for refusal are not resolved through examination after notification of the reasons for refusal, the examiner shall render a decision of refusal (Article 49).
(i)When finding no reasons for refusal in first examination of a patent application or (ii)when determining that the reasons for refusal are resolved in second and subsequent examination after notice of reasons for refusal and when no reasons for refusal are found, the examiner shall decide to grant a patent immediately.
When deciding that the reasons for refusal are unresolved in examination after notice of reasons for refusal, the examiner shall render a decision of refusal regardless of whether or not the notice of reasons of refusal is "first" or "final." On this occasion, if necessary, the examiner shall render a decision of refusal after ruling that amendment is to be dismissed (see "Section 6 Decision of Dismissal of Amendment" for a decision of dismissal of amendment).
However, where, even when the notified reasons for refusal are unresolved, the examiner can show countermeasures available for the applicant to resolve the reasons for refusal and determine that it is likely to reach an agreement with the applicant for taking such countermeasures, the examiner shall communicate with the applicant and notify reasons for refusal if the agreement is concluded.
The notice of reasons for refusal shall be in principle taken as the "final notice of reasons for refusal" (see 3.2.1(2)(c) in "Section 3 Notice of Reasons for Refusal"
3.2.1(2)c).
The examiner shall pay attention to the following when rendering a decision of
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refusal.
(1) The examiner shall determine (i)whether or not the notified reasons for refusal are unresolved and (ii)whether or not the notified reasons for refusal are reasonable by sufficiently reviewing allegations, such as a written opinion, and details of the written amendment.
(2) The examiner shall show all unresolved reasons for refusal in the decision of refusal. In this case, the examiner shall state concisely and clearly so that reasons for refusal pertinent to which claim are unresolved become noticeable. The examiner can make a remark on claims collectively in the decision of refusal as long as the same explanation of e.g. a comparison the claimed invention and cited invention and a determination shall apply to the claims in common.
(3) As to a matter which is rendered as a point of issue in the written opinion, the examiner's determination about the matter is clearly stated.
(4) The examiner shall make a deliberate consideration as to whether or not a decision of refusal might be a "surprise" for the applicant. The examiner shall not render an unreasonable decision of refusal while being obsessed with the notified reasons for refusal.
The examiner shall not render a decision either to grant or to refuse a patent for applications that may be subject to a security designation or are in the process under a security designation pursuant to the Economic Security Promotion Act (Economic
Security Promotion Act, Article 66(7)).
