Part 1 Chapter 2 Section 6 Decision of Dismissal of Amendment
Section 6 Decision of Dismissal of Amendment
1. Overview
1.1 Patent Act Article 53
When amendment made as a response to the final notice of reasons for refusal (Article 17bis(1)(iii)) does not fulfill any of the requirements stipulated in Articles 17bis(3) to (6), the examiner shall decide to decline the amendment (Article 53(1)).
If even a case where amendment made as a response to a second and subsequent notice of reasons for refusal is illegitimate is taken as reasons for refusal of the patent application, reasons for refusal to the effect that the amendment is illegitimate are again notified. Since amendment can be made in response to the notice of reasons for refusal, the amended patent application must be examined again. To avoid such a situation, when amendment made as a response to the "final notice of reasons for refusal" notified after the second examination is illegitimate, the provisions of Article 53 are provided to dismiss the amendment.
1.2 Overview of examination procedures concerning decision of dismissal of amendment
When amendment is made as a response to the "final notice of reasons for refusal," the examiner shall examine whether or not it was appropriate to take the reasons for refusal notified immediately before as the "final notice of reasons for refusal." When determining that sending the "final notice of reasons for refusal" was appropriate, the examiner shall examine whether or not the amendment fulfills the requirements set forth in Article 17bis(3) to (6) (whether or not the amendment is made legitimately). When amendment is illegitimate, the examiner shall dismiss the amendment (see also Figure 2 as to examination procedures employed when amendment is made as a response to the final notice of reasons for refusal).
Meanwhile, from the viewpoint of inhibition of misuse of a divisional application system, where a notice under Article 50bis is issued along with a notice of reasons for refusal and when amendment made as a response to the notice
1. Consider Whether or not Sending the Final Notice of Reasons for Refusal was Appropriate
The examiner shall first reconsider whether or not sending the "final notice of reasons for refusal" was appropriate by taking the applicant's argument in the written opinion, etc., into account.
1.1 Where taking the notice as "final notice of reasons for refusal" was appropriate
When taking the notice as the "final notice of reasons for refusal" was appropriate, the examiner shall review whether or not amendment is made legitimately (see 3.)
1.2 Where sending "final notice of reasons for refusal" was inappropriate
When sending the "final notice of reasons for refusal" was inappropriate, Article 53 is not applicable. Therefore, in this case, the examiner shall proceed with the examination based on the description and etc. after amendment, which was made as a response to the "final notice of reasons for refusal," without deciding to decline it. Even when the previously-notified reasons for refusal are unresolved, the examiner shall again notify "non-final notice of reasons for refusal" instead of immediately deciding to reject the patent application. Further, even when only the reasons for refusal which
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Part 1 Chapter 2 Section 6 Decision of Dismissal of Amendment
become necessary to be notified as a result of amendment is notified, the examiner shall again issue a "non-final notice of reasons for refusal" instead of the "final notice of reasons for refusal."
(Points to Note)
When the applicant alleges that the notice should have been the "non-final notice of reasons for refusal" and makes an amendment on the premise that the notice is the non-final notice of reasons for refusal, the examiner shall handle the notice as the "non-final notice of reasons for refusal." In other words, when the reasons for refusal are unresolved, the examiner shall make a decision of refusal. Where only reasons for refusal which become necessary to be notified by amendment are notified, the examiner may handle the notice as the "final notice of reasons for refusal. "
3. Consider of Dismissal of Amendment
3.1 Amendment to be dismissed
Amendment to be dismissed is one corresponding to any of (1) to (4) provided below.
(1) Amendment adding new matters (non-compliance with Article 17bis(3))
(2) Amendment changing special technical feature of the invention (non-compliance with of Article 17bis(4))
(3) Amendment for other than the prescribed purposes (violation of Article 17bis(5))
(4) Amendment not fulfilling requirements for independent patentability (non-compliance with of Article 17bis(6))
3.1.1 Amendment adding new matters (non-compliance with Article 17bis(3))
Amendment, which is made as a response to the "final notice of reasons for refusal" and which corresponds to any either (i) or (ii), corresponds to "amendment adding a new matter" and hence becomes an amendment to be dismissed.
(i) amendment adding a new matter, and
(ii) amendment including a new matter pointed out in a "final notice of reasons for refusal"
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(Points to Note)
Where a new matter is present at the time of "final notice of reasons for refusal" and where reasons for refusal were not notified on the basis of the new matter, the examination will be carried out based on the description, etc after amendment without dismissal of the amendment even if the amendment serving as a response to the "final notice of reasons for refusal" includes the new matter. In addition, reasons for refusal to the effect that amendment entails addition of a new matter are notified.
3.1.2 Amendment changing special technical features of the invention
(non-compliance with of Article 17bis(4))
Amendment, which serves as a response to the "final notice of reasons for refusal" and which corresponds to (i) or (ii) provided below, corresponds to "amendment changing the special technical features of the invention" and hence become an amendment to be dismissed.
(i) Amendment adding an invention whose special technical features are newly changed (an invention which does not become a target of examination in connection with requirements other than Article 17bis(4) in accordance with "Part IV Chapter 3 Amendment Changing Special Technical Feature of the
Invention")
Amendment including an invention which is pointed out in the "final notice of reasons for refusal" and whose special technical feature is changed
does not fulfill any of the requirements set forth in Articles 17bis(3) to (6), the examiner shall dismiss the amendment (Article 53(1)parentheses. see "Part VI Chapter 1 Section 2