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1
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2
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- Increased opportunities for filing a divisional application.
- Restriction on an amendment in relation to a divisional application.
- Prohibition of an amendment switching to a non-unitary subject matter.
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3
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- You can file a divisional application after receiving a Notice of
Decision of Refusal without filing an ex parte appeal.
- within
30 days (+60 days for a resident abroad, Current Law) or 3 months
(Revision 2008) from receiving the first Notice of Decision of Refusal.
- You can file a divisional application even after receiving a Notice of
Decision of Allowance.
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within 30 days from receiving a Notice of Decision of Allowance
and prior to registration.
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4
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5
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- Exception: Decisions of Refusal /Allowance after filing an ex parte
appeal are excluded.
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6
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- Decision of Allowance
- Before
registration, you can file a divisional application.
- Please kindly inform us of whether
or not to file a divisional application.
- Decision of Refusal
- Decision
of Refusal
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You have 3 options:
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1. appeal
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2. appeal and
divisional application in parallel
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3. divisional
application without filing an appeal (New!) .
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7
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- Applied to applications filed on or after April 1, 2007
- A divisional application derived from a parent application filed before
April 1, 2007
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--> Not Applied
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8
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- Increased opportunities for filing a divisional application
- Restriction on an amendment in relation to a divisional application
- Prohibition of an amendment switching to a non-unitary subject matter
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9
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- Amendment of a divisional application (“instant application”) against a
first office action may be restricted in the same manner as against a
final office action, in case that
the reason(s) of rejection to the instant application is/are the
same reason(s) as that (those) to a parent application or another
divisional application derived from the same parent application (”
another application”).
- Amendment of a parent application (“instant application”) against a
first office action may be restricted in the same manner as against a
final office action, in case that
the reason(s) of rejection to the instant application is/are the
same reason(s) as that (those) to a divisional application (“another
application”).
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10
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11
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- In which case is the instant application restricted?
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12
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- How are “the same reasons” determined?
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13
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- Exception : In the event that an applicant was not in situations that
he/she could not be aware of the reasons of rejection of “another
application when filing a request for examination of the instant
application.
- For example, an applicant receives a notice of reasons of rejection of “another
application” ”(e.g. a divisional) after he/she filed a request for
examination of the instant application (e.g. a parent).
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14
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- Only 4 types of amendment are allowed when restricted.
- Canceling the claims
- Limiting the scope of the claims
- Correction of typographical errors
- Clarifying an ambiguous description
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Note: The restriction above is the same as the one for a final
office action
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15
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- Recommended to take into consideration the reasons of rejection to a
parent application upon filing a divisional application
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or
- Recommended to file a voluntary amendment at the latest by the time when
actual examination of the divisional application starts.
- Average
waiting period from the date of requesting a substantial examination is
26 months (statistics in 2006 by the JPO)
- Applied to a parent
application filed on or after April 1, 2007 and a divisional application
derived from the parent application.
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16
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- Increased opportunities for filing a divisional application
- Additional limitation to claim amendment of a divisional application
- Prohibition of an amendment switching to a non-unitary subject matter.
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17
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- According to new Article 17-2 (4),
- an amendment shall be made so that
- (i)
the present invention whose patentability has been already examined
before the amendment
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and
- (ii) the
amended invention
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fulfill the requirement of the unity of invention.
- Note: Very similar to EPC
2000 rule 137(4) or old EPC rule 86(4).
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18
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19
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20
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- A first Office Action: Reason of rejection.
- A final Office
Action: Dismissal of Amendment
- No ground for
invalidation.
- Recommended to number the claims in the order of invention which you
really want to be patented.
- Applied to an application filed on or after April 1, 2007.
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21
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22
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23
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- Reduction of official fees.
- Time Limit for Filing an ex parte Appeal.
- License registration before patent registration.
- Limitation of information disclosure on licensee.
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24
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- Although official announcement has not made yet, JPO plans to apply
below-mentioned new fee schedule to all cases from June 1, 2008.
- Official Filing Fee and Official Annual fees for registration or
maintenance of patent right or Trademark will be drastically reduced, as
follows;
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25
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26
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27
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28
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- Reduction of official fees.
- Time Limit for Filing an ex parte Appeal.
- License registration before patent registration.
- Limitation of information disclosure on licensee.
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29
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30
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31
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32
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- Reduction of official fees.
- Time Limit for Filing an ex parte Appeal.
- License registration before patent registration.
- Limitation of information disclosure on licensee.
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33
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- Provisional-License system will be created by the revised JPL. There are
Provisional-exclusive-License and Provisional-nonexclusive-License.
- The current JPL permits registration of License only after the
registration of a patent right.
- Under the revision, registration of Provisional-License can be permitted
even before registration of a patent right.
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34
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- Provisional-exclusive-License becomes effective by registration in the
JPO.
Provisional-nonexclusive-License needs to be registered in the
JPO so as to preserve his right against a subsequent assignee of a right
to obtain a patent.
- In the case of PCT
application, Provisional-License can be registered only after the
national phase entry into Japan is completed.
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35
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- Provisional-License is
deemed to be switched to registered License automatically once a patent
right is registered.
- In the meantime, when a patent application is withdrawn or abandoned,
effect of the registered Provisional-License lapses also.
- An applicant cannot withdraw or abandon his patent application without
Provisional-License’s consent.
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36
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- Reduction of official fees.
- Time Limit for Filing an ex parte Appeal.
- License registration before patent registration.
- Limitation of information disclosure on licensee.
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37
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- After the revision, certain information registered in the JPO such as a
name of licensee or Provisional-nonexclusive-Licensee and scope of
license will be disclosed only to a person such as assignee of patent
designated by Cabinet Order.
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38
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39
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