1 LAW DIVISION PATENT DIVISION TRADEMARK & DESIGN DIVISION ACCOUNTING & AUDITING DIVISION YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING Pre-meeting of American Intellectual Property Law Association Mid-Winter Institute January , 2004 at La Quinta, California, U. S. A. Revision of Examination Guidelines Regarding Amendments Kazuaki Okimoto Patent Attorney YUASA and HARA

2 LAW DIVISION PATENT DIVISION TRADEMARK & DESIGN DIVISION ACCOUNTING & AUDITING DIVISION YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING Summary of revision of Examination Guidelines 1. Scope of Amendment The Japanese Patent Office (JPO) may allow amendment of claims, description or drawings based on “a matter which is inherently presented in the description, the claims or drawings originally attached to the request” in applying revised Examination Guidelines. Under the old Examination Guidelines, the scope for amendment at this stage is severely restricted. Any amendment must be clearly and unambiguously supported by the specification. In the subject case, the base text is the specification as of the filing date. Kazuaki Okimoto mail to:

3 LAW DIVISION PATENT DIVISION TRADEMARK & DESIGN DIVISION ACCOUNTING & AUDITING DIVISION YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING Summary of revision of Examination Guidelines 2. Lawful amendments The JPO may allow amendment of claims having generic concept or more specific concept by a total review of the amendment alongside the embodiments separately described in the description, the claims or drawings originally attached to the request and the other matters, for example, the problem to be solved by the invention. Kazuaki Okimoto mail to:

4 LAW DIVISION PATENT DIVISION TRADEMARK & DESIGN DIVISION ACCOUNTING & AUDITING DIVISION YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING Kazuaki Okimoto mail to: Basic concept of Revision of Examination Guidelines (1) An amendment which goes beyond “a matter presented in the description, the claims or drawings originally attached to the request”, including a new matter, is not allowed.

5 LAW DIVISION PATENT DIVISION TRADEMARK & DESIGN DIVISION ACCOUNTING & AUDITING DIVISION YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING Kazuaki Okimoto mail to: Basic concept of Revision of Examination Guidelines (2) “A matter presented in the description, the claims or drawings originally attached to the request” includes “a matter which is expressly presented in the description, the claims or drawings originally attached to the request” as well as “a matter which is inherently presented in the description, the claims or drawings originally attached to the request”.

6 LAW DIVISION PATENT DIVISION TRADEMARK & DESIGN DIVISION ACCOUNTING & AUDITING DIVISION YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING Kazuaki Okimoto mail to: Basic concept of Revision of Examination Guidelines (3) To meet the requirement “a matter which is inherent in the description, the claims or drawings originally attached to the request”, the matter amended must be such that those skilled in the art would be able to infer from the description, the claims or the drawings of the specification in view of common general technical knowledge even when the matter is not presented in the description, the claims or drawings.

7 LAW DIVISION PATENT DIVISION TRADEMARK & DESIGN DIVISION ACCOUNTING & AUDITING DIVISION YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING Kazuaki Okimoto mail to: Basic concept of Revision of Examination Guidelines (4) A matter which is intended to amend to the specification as a well-known art or commonly used art must also be the matter which those skilled in the art would understand as presented in the description, the claims or drawings specification in view of common general technical knowledge even when the matter is not presented in the description, the claims or drawings.

8 LAW DIVISION PATENT DIVISION TRADEMARK & DESIGN DIVISION ACCOUNTING & AUDITING DIVISION YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING Kazuaki Okimoto mail to: Basic concept of Revision of Examination Guidelines (5) It is admissible to assert a matter as inherently presented in the description, the claims or drawings from the plural parts of descriptions originally attached to the request.

9 LAW DIVISION PATENT DIVISION TRADEMARK & DESIGN DIVISION ACCOUNTING & AUDITING DIVISION YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING Kazuaki Okimoto mail to: Amendment with generic concept or more specific concept The following amendments are recognized to be matters presented in the description, the claims or drawings originally attached to the request.

10 LAW DIVISION PATENT DIVISION TRADEMARK & DESIGN DIVISION ACCOUNTING & AUDITING DIVISION YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING Kazuaki Okimoto mail to: Amendment with generic concept or more specific concept Case 1: Even if the invention is amended to delete a part of the specific matter defining the invention and to give the invention generic concept, it is apparent that it does not introduce a new technical meaning. It is recognized that a matter deleted is inherently added to the claims from the description, the claims or drawings originally attached to the request.

11 LAW DIVISION PATENT DIVISION TRADEMARK & DESIGN DIVISION ACCOUNTING & AUDITING DIVISION YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING Kazuaki Okimoto mail to: Amendment with generic concept or more specific concept Case 2: It is recognized that the invention having a specific matter defined by the amended claims is presented in the description, the claims or drawings, when reviewing totally the amendment alongside the embodiments separately described in the description, the claims or drawings originally attached to the request and other matters, for example, the problem to be solved by the invention.

12 LAW DIVISION PATENT DIVISION TRADEMARK & DESIGN DIVISION ACCOUNTING & AUDITING DIVISION YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING Kazuaki Okimoto mail to: Applicable patent applications This revised Examination Guidelines will be applied to patent applications filed on or after January 1, 1998.

13 LAW DIVISION PATENT DIVISION TRADEMARK & DESIGN DIVISION ACCOUNTING & AUDITING DIVISION YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING Kazuaki Okimoto mail to: Expecting amendments allowable Amendment of claims with generic concept or more specific concept Amendment by deleting a group selected from Markush type claim Amendments with numerical limitation Amendments by disclaimer.

14 LAW DIVISION PATENT DIVISION TRADEMARK & DESIGN DIVISION ACCOUNTING & AUDITING DIVISION YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING Kazuaki Okimoto mail to: Expecting amendments allowable The JPO provides some examples of amendment on its web site. All examples allowed are amendments which are made within “a matter presented in the description, the claims or drawings originally attached to the request”.

15 LAW DIVISION PATENT DIVISION TRADEMARK & DESIGN DIVISION ACCOUNTING & AUDITING DIVISION YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING Kazuaki Okimoto mail to: Expecting amendments allowable Whether the amended matter is recognized to be within “a matter presented in the description, the claims or drawings originally attached to the request” is judged on a case by case basis.

16 LAW DIVISION PATENT DIVISION TRADEMARK & DESIGN DIVISION ACCOUNTING & AUDITING DIVISION YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING Kazuaki Okimoto mail to: Expecting amendments allowable Practitioners may make more amendments under the new guidelines than under the old ones. Please bear in mind that under the old guidelines any amendment must be clearly and unambiguously supported by the specification as of the filing date.

17 LAW DIVISION PATENT DIVISION TRADEMARK & DESIGN DIVISION ACCOUNTING & AUDITING DIVISION YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING Kazuaki Okimoto mail to: Applicable Patent Laws The requirements and restrictions on amendments to patent specifications, including claims, have been changed twice in recent last years. Consequently, the filing date determines which of the three different versions of the patent law the JPO applies to a particular application.

18 LAW DIVISION PATENT DIVISION TRADEMARK & DESIGN DIVISION ACCOUNTING & AUDITING DIVISION YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING Kazuaki Okimoto mail to: Applicable Patent Laws The latest change in the patent law that affects amendments went into effect on July 1, 1995, and applies to applications filed on or after that date. Earlier applications are governed by either the law in effect from January 1, 1994, to June 30, 1995, or the law as it stood on or before December 31, Since the more recent versions of the law are likely be of most interest to you, this summary will discuss the current amendment requirements.

19 LAW DIVISION PATENT DIVISION TRADEMARK & DESIGN DIVISION ACCOUNTING & AUDITING DIVISION YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING Kazuaki Okimoto mail to: Current practice - Amendment to Applications Filed on or after July 1, 1995

20 LAW DIVISION PATENT DIVISION TRADEMARK & DESIGN DIVISION ACCOUNTING & AUDITING DIVISION YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING Kazuaki Okimoto mail to: Timing of Amendments (1) Before receiving a Notice of Allowance or a Notice of Reasons for Rejection The revision of the law that went into effect on July 1, 1995, dramatically eased the limitations on the timing of amendments. The specification and drawings in these applications may now be amended and divisional applications filed at any time prior to the transmittal to the applicant of a notice that a patent is granted or that reasons for rejection exist

21 LAW DIVISION PATENT DIVISION TRADEMARK & DESIGN DIVISION ACCOUNTING & AUDITING DIVISION YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING Kazuaki Okimoto mail to: Timing of Amendments (2) After receiving a Notice of Reasons for Rejection If a Notice of Reasons for Rejection has been sent, the applicant must respond within the time limit set, generally, for applicants domiciled outside Japan, three months, which may be extended once for an additional three months. The official fee for the extension is 2,100 yen. Japanese applicants are allowed 60 days with no extension. When a final Notice of Reasons for Rejection is issued, applicants are allowed to also make amendments within the time limit set, which is usually the same as for the initial Notice of Reasons for Rejection.

22 LAW DIVISION PATENT DIVISION TRADEMARK & DESIGN DIVISION ACCOUNTING & AUDITING DIVISION YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING Kazuaki Okimoto mail to: Timing of Amendments (3) After receiving a Final Rejection If the JPO issues the final rejection against the application, the applicant may file an appeal against the final rejection to the Appeal Board of the Patent Office within 90 days from the certified copy of the decision. Once the appeal is filed, the applicant has an additional 30 days (unextendible) to prepare and file an amendment designed to overcome the reasons for rejection. If an amendment is filed, the original examiner re-examines the application to determine if the amendment overcomes the reasons for final rejection. If so, he or she reverses the previous final rejection decision and issues a decision to grant a patent. If not, the application is transferred to the Appeal Board, which considers the amendment and the argument in the appeal brief.

23 LAW DIVISION PATENT DIVISION TRADEMARK & DESIGN DIVISION ACCOUNTING & AUDITING DIVISION YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING Kazuaki Okimoto mail to: Scope of Amendments after receiving a final Notice of Reasons for Rejection We expect a more flexible way of amending the claims, the description and drawings in applying the new guidelines. After receiving a final Notice of Reasons for Rejection, however, the amendment is limited to the following according to Section 17 bis (4) of the Patent Law:

24 LAW DIVISION PATENT DIVISION TRADEMARK & DESIGN DIVISION ACCOUNTING & AUDITING DIVISION YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING Kazuaki Okimoto mail to: (i) the cancellation of the claim or claims; (ii) the restriction of the claim or claims; (iii) the correction of errors in the description; (iv) the clarification of an ambiguous description. Scope of Amendments after receiving a final Notice of Reasons for Rejection

25 LAW DIVISION PATENT DIVISION TRADEMARK & DESIGN DIVISION ACCOUNTING & AUDITING DIVISION YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING YUASA AND HARA LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING Thank you for your attention ! Kazuaki Okimoto Patent Attorney YUASA and HARA