Purpose of amendment of patent application
The reasons for amending the patent application are (1) elimination of the reasons for refusal and (2) correction of clerical errors.
(1) Elimination of reasons for refusal
If a patent application is notified of reasons for refusal such as a violation of novelty or an inventive step, if it is left as it is, it will be a decision of refusal.
When the reason for refusal is notified, it may be possible to eliminate the reasons for refusal such as novelty violation and inventive step violation and lead to patent decision by correcting the scope of claims within the designated period. increase.
(2) Correction of errors
If there is a typographical error in the claims, there is a possibility that the patent right will be acquired within the scope of rights different from the intended invention.
In this way, if there is a typographical error in the claims, the patent right can be obtained within the intended scope of rights by amending the claims.
For patent applications, the publication will be published one year and six months after the filing date, and if the patent is granted and registered, the patent publication will be published.
If there is an error in the patent specification, the error will also be published.
By correcting the error in the patent specification by amendment, the published gazette and the patent gazette will be published in the form intended by the applicant.
Timing requirements for amendments
The applicant may make amendments to the specification, etc. at any time from (i) to (v) below (Patent Act Article 17-2, Paragraph 1).
(i) From filing to before service of a copy of the patent grant (except after receiving the first notice of reasons for refusal) (Article 17-2, Paragraph 1)
(ii) Within the designated period of the first notice of reasons for refusal (Article 17-2, Paragraph 1, Item 1)
(iii) Within the designated period of notification pursuant to the provisions of Article 48-7 after receiving the notice of reasons for refusal (Article 17-2, Paragraph 1, Item 2)
(iv) Within the designated period of the final notice of reasons for refusal (Article 17-2, Paragraph 1, Item 3)
(v) Simultaneously with the request for appeal against the decision of refusal (Article 17-2, Paragraph 1, Item 4)
About the range that can be corrected
Amendments can be made within the scope of the matters stated in the claims, specification, drawings (hereinafter referred to as the specification, etc.) attached to the application at the beginning (Patent Law Article 17-2, 3). Item).
The amendment to add new matters to the matters stated in the claims, specification, and drawings originally attached to the application will be rejected and will be in the state before the amendment (the amendment is rejected). Patent Law, Article 53, Paragraph 1).
In this way, amendments that add new matters will be rejected, so it is important to state the specifications at the time of filing.
It is important to include as much amendment material in the specification as possible so that it can be amended after filing.
Prohibition of amendment to add new items
Amendments to add new matters to the original specification, etc. of the application are prohibited. This is because it goes against the principle of first-to-file principle.
The following is an excerpt from the JPO's examination criteria for prohibiting the addition of new matters.
If the amendment does not introduce new technical matters in relation to the "matters stated in the initial specification, etc.", the amendment is not an amendment to add new matters. On the other hand, if the amendment introduces a new technical matter, the amendment is an amendment that adds a new matter.
Amendment to make it a trivial matter from the description of the initial description etc.
If the amended matter is "a matter that is obvious from the description of the initial specification, etc.", the amendment introduces a new technical matter even if there is no explicit description in the initial specification, etc. It is forgiven because it is not. Therefore, the examiner determines that the amendment does not add new matters in this case.
In order to say that the amended matter can be said to be "a matter that is obvious from the description of the original specification, etc." It must be a matter that is understood to be the same as that stated in the description, etc. at the beginning. The examiner pays attention to the following (i) and (ii) in determining whether or not the amended matter is "a matter that is obvious from the description of the original description, etc."
(i) The fact that the technology itself related to the amended matter is a well-known technology or a conventional technology cannot be said to be "a matter obvious from the description in the initial specification, etc."
(ii) A person skilled in the art may understand that the amended matter is obvious from a plurality of descriptions such as the original specification in light of the common general technical knowledge at the time of filing. The plurality of descriptions of the initial specification and the like are, for example, a description of a problem to be solved by the invention, a description of a specific example of the invention, a description of the specification, a description of drawings, and the like.
Example: Initially, the specification and the like only describe an apparatus provided with an elastic support, and do not disclose a specific elastic support. However, if a person skilled in the art understands that it is obvious that "elastic support" means "spinning spring" from the description of the drawings at the time of filing and the common general technical knowledge at the time of filing. , Correction to change the "elastic support" to a "spinning spring" is allowed.
The amendment to add the wording described in the original specification as it is to the claims of the claims is not an amendment to add new matters.
On the other hand, an amendment that adds a wording not stated in the specification at the time of filing to the claims of the claims may be an amendment that adds new matters.
If it is not "a matter that is obvious from the description of the original specification, etc.", the amendment will be rejected and examined as an amendment to add a new matter. The amendment added to the claim is quite risky.
In this case, we will insist in the written opinion that it is "a matter that is obvious from the description of the initial statement, etc."
Since there is no appropriate description in the original specification of the application, an amendment to be added to the claims as "a matter that is obvious from the description of the initial specification, etc." based on the matters shown in the drawings. However, there is a risk that it will be judged as an amendment to add new matters.
In relation to the invention, it is important to describe what is shown in the drawings in writing as much as possible in consideration of future amendments.
About correction of drawings
JPO examination standards for drawing amendments
Even amendments to drawings are permitted as long as they do not introduce new technical matters.
However, the examiner should note that the amended drawings generally introduce new technical matters. In particular, when the photograph attached to the application, etc. is replaced with the drawing instead of the drawing, such amendment may introduce new technical matters, so the examiner needs to be careful. .. In addition, the description in the drawing does not always reflect the actual dimensions, and the examiner needs to keep this in mind.
As an example that is allowed as an amendment to the drawing, this is when the specification states that it is correct, but the flowchart is incorrect (YES and NO are reversed, etc.), and the error in the flowchart is obvious. There is a correction to correct the error in the flowchart.
If the amendment of the drawing is an amendment to add new matters and the period during which the domestic priority claim is possible (within one year from the filing date), a new patent application with the domestic priority claim is made. By doing this, you can prevent the correction from adding new items.
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It is not an amendment that changes the special technical features of the invention (Article 17-2, Paragraph 4).
At the time of notification of the first reason for refusal, the notification of the final reason for refusal, and the request for appeal against the decision of refusal, the requirement that it is not an amendment that changes the special technical features of the invention (Article 17-2, Paragraph 4) is imposed. Will be.
Restrictions on amendments when notifying the final reason for refusal or when requesting an appeal against a decision of refusal
At the time of the final notification of the reason for refusal or the request for appeal against the decision of refusal, the amendment is limited to (1) to (4) below.
The limitation of these amendments is to limit the amendments after the last notice of reasons for refusal to the extent that the already made examination results can be effectively utilized in order to establish the examination procedure to ensure prompt and accurate grant of rights. It is provided in.
Here, the final reason for refusal is, in principle, a notice of reasons for refusal that notifies only the reasons for refusal that need to be notified by amendment at the time of response to the "notice of reasons for first refusal".
(1)Deletion of claims
(2) Limited reduction in the scope of claims
(3) Correction of errors
(4) Explanation of the description that is not clear
If the amendment does not fall under any of the above (1) to (4), the amendment will be rejected and you will be examined in the state before the amendment.
In this case, the reason for refusal has not been resolved in most cases, so in most cases it will be a decision of refusal.
Limited reduction of claims
Judgment is made based on whether all of the following requirements (i) to (iii) are met.
(i) The amendment reduces the scope of claims.
(ii) Matters necessary for specifying the invention of the invention for which the amendment is described in the pre-amendment claim (hereinafter referred to as "pre-amendment invention" in this part) (hereinafter referred to as "invention-specific matter" in this part. ) Is limited.
(iii) The industrial application field of the invention before amendment and the invention described in the amended claim (hereinafter referred to as "invention after amendment" in this part) and the problem to be solved are the same.
In other words, it is prohibited to change an invention to a completely different invention.
When the amendment is limited to the limited reduction of the claims, and the scope of rights after the limited reduction of the claims is too narrow or unintended for the applicant. By filing a divisional application, it is possible to avoid the limitation of amendment, which is the limited reduction of the claims.
If you file a divisional application, you are free to create claims within the scope of the claims, specifications, and drawings of the original specification.
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