- Effective on October 1, 2008 -
KIYOSHI ASAMURA, President
SEKIZO HAYASHI, Vice-President
Preface
The topic we are explaining now is about a change of procedure after filing an Amendment in the Appeal procedure (please refer to Chart 1 attached herewith). This procedure has been already in effect since October 1, 2008. (Refer to Chart 1 attached herewith.)
1. Former procedure
In the Japanese appeal procedure, if the applicant files an Amendment within 30 days from the date of filing an Appeal, the case is to be returned to the Examiner who made the Final Decision, and the Examiner will re-examine the amendment. If the Amendment is happily allowable, the application shall be patented by the Examiner, and there is no problem.
However, if it is not, the Examiner prepares the Examiner’s Report (which is not to be sent to the applicant at that time) and the case shall be sent back to the Board of Appeal with the Examiner’s Report, and then the case may wait for examination by Trial-Examiners, about in 1.5 -2 years, on average.
Then, starting the examination, in some cases among those cases, in which the Examiner’s Report is prepared, the Trial Examiner-in-chief sends the applicant the Examiner’s Report as Questioning, when he considers necessary to hear the applicant’s opinion on the Examiner’s Report.
The Questioning is almost the same as an Office Action only except that the applicant has no chance to file an amendment, nor a divisional application, which is precisely explained in the next item.
2. Change of the Procedure
(1) The Changed Procedure
Now, the procedure has been changed, that is, as in all cases in which an Amendment is filed within 30 days after the date of filing an Appeal and the Examiner’s Report is prepared, the Trial Examiner-in-chief sends the applicant the Examiner’s Report as the Questioning, several months before starting the examination by the Trial Examiners.
Responding to the Questioning, the applicant may file, within 3 months (three one-month extensions are possible); an argument, and a proposed amendment.
Please note that, as explained above, neither amendment nor divisional application can be filed (which has not been changed from the former procedure).
(2) Problems
At this time, after checking the Examiner's Report,
i. If the applicant considers no need to file any further amendment, the Questioning only gives more time for the applicant to file any additional arguments.
ii. However, if the applicant considers a further amendment is necessary to overcome the Opinion in the Examiner’s Report, the applicant would fall into a troublesome situation, because the applicant has neither chance to file the further amendment or any divisional application, against the Questioning.
(3) How to solve the above (2)ii
A possible way to solve the problem is, anyway, to submit a proposed amendment, asking the Trial-examiners to render another Action to give the applicant an opportunity to file an amendment or a divisional application.
However, at this time, even if the Appeal Examiners consider that the proposed amendment can overcome the Opinion in the Examiner’s Report, they have no obligation to render a new Action, unless the Examiner’s Decision can not be affirmed* and a new reason for rejection is found (which are very rare).
(*If the amendment filed within 30 days from the date of filing an Appeal is not allowable, it shall be declined, so the Examiner’s Decision shall still remain to be checked.)
(4) Notice by the Board of Appeal
For the above serious problem, please refer to the following Notice issued by the Board of Appeal, which explains in which situation the new action may be rendered.
Notice by the Board of Appeal
“The above Questioning is not an Action for Rejection, so the applicant has no chance to file an amendment, although the applicant may file an argument to the Questioning. Even if a proposed amendment is filed which can overcome the opinion in the Examiner’s Report, the Trial Examiners do not, in principle, examine the case based upon the proposed amendment, because, the applicant may file an amendment only when the Examiner’s Decision can not be affirmed and a new Action for rejection is rendered. However, if it is clear that the proposed amendment is apparently allowable, the Trial Examiners may examine the case based upon the proposed amendment, at their discretion, since it will possibly accelerate the examination.”
(5) Trick as to how to have an Action rendered
In order to consider how to have the new Action rendered by the Trial Examiners on the proposed and allowable amendment (even if the Examiner’s decision can be affirmed and a new reason for rejection has not be found), please refer to again the above Notice of the Board of Appeal, in particular the last part thereof, that is,
“However, if it is clear that the proposed amendment is apparently allowable, the Trial Examiners may examine the case based upon the proposed amendment, at their discretion, since it will possibly accelerate the examination.”
So, important matters in order to effect an Action issued by the Trial Examiners at their discretion on the proposed allowable claims are as follows,
・ Firstly, please prepare new proposed amendment which are apparently
allowable.
・ Then, it is quite effective to consult with the Trial Examiners by submitting
the above proposed amendment, since the decision for rendering the new
Action will entirely depend upon the discretion of the Trial Examiners.
(6) Filing of Precautionary Divisional Application
However, frankly speaking, it is not easy to anticipate in which situations the new Action would be rendered on the allowable amendment by the Appeal Examiners. If the new Action is not rendered, the applicant faces a very serious situation, since he has no opportunity to obtain a patent on the allowable amendment.
The reason why the applicant falls into such a serious situation is mainly because an opportunity for filing a divisional application is the same as an opportunity for filing an amendment. Namely, if the former is severe, the latter should be much more lenient.
For example, please recall the US practice, in which after receiving a final Action, an amendment is quite limited. But receiving an advisory action refusing an entry of an amendment, the applicant may file a RCA/a continuing application including the refused amendment.*
In order to avoid the above serious situation in Japan, we strongly recommend the applicant to file a Precautionary Divisional Application, in particular for important cases, simultaneously while filing the amendment within 30 days from the date of filing an appeal, since this time is also the last opportunity to file, as a right, a divisional application as an amendment. (Then, even if unfortunately, no Action is rendered, the applicant may proceed with the case by the divisional application.)
(*In Japan, new opportunities have been added for filing a divisional application, which are during the Examination procedure and (1) after issuance of Patent, or (2) after the issuance of Decision of Rejection without filing an Appeal. However, this shall be applied to those applications filed on or after April 1, 2007. Refer to the Chart 1.)
3. In the end
Anyhow, Appeal procedures in the JPO are not simple, so of course we will handle all the appealed cases very carefully including arrangements for contact with the Appeal Examiners, but if you have any questions thereof, please do not hesitate to ask us.
Chart 1
