feedback_120530_3.doc
EXAMINATION PROCEDURE
1. Basic Direction of Examination
The examination must be carried out with great care so that promptness, accuracy, fairness and transparency are secured. In particular, close attention should be paid to the followingin the course of the examination.
(1) Examinations should be uniformly conducted in accordance with official guidelines for examinations such as the examination guidelines, the examination manuals, and the like.
(2) Regarding searches of prior art and determination of patentability of a claimed invention, efforts should be made to maintain and upgrade the quality of examinations.
(3) Examinations should be conducted so as to secure a completely mutual understandingbetween examiners and applicants (including their legal representatives, as termed hereinafter).
2.Basic Instructions
(1) Prior art search and determination of patentability should be carried out based on consideration of the trends of combined and advanced technology, while making full use of the shared knowledge of examiners.
(2) When there are any doubts about requirements for patentability,such as novelty, inventive step, etc. or about the description requirements of patent specifications during the examination, the examiners should notify the applicant and take positive action to fix the problem.
(3) In principle, the examiner should make a thorough study of an application in respectof all reasons for rejection referred to in Section 49 of the Patent Law before issuingthe first notice for rejection.
(4) In principle, the reasons for rejection should be notified twice at most, and the firstnotice for rejection should be so served that the second notice for rejection communicates only such reasons for rejection as necessitated by an amendment which is madeby the applicant in response to the first notice for rejection.
(5) The examiner's determination should be given to each of the claims since the invention for which a patent is sought is described in each claim of the application filedunder the multiple claim system, and the exaimner should 'show thoroughly, clear andsufficient explanations of the reasons for rejection for each of the claims so as to enablethe applicant to respond easily to the notice for rejection, for the reason that the amendment with regard to the claims is restricted after the final notice for rejection, and alsoshould establish solid communication with the applicants through interview and otherappropriate means.
(Note) When the examiner in charge has been replaced, notices for rejection or thedetails of the interview, once served or confirmed by the former examiner, shouldbe respected in order to maintain the consistency of the examination. If theexaminer in charge gives a decision which differs from that of the formerexaminer, (s)he should inform the applicant of the reasons thereof beforehand,if necessary, since this could possibly affect the interests of the applicant.Furthermore, if the examiner believes it necessary, the notice for rejection maybeissued again.
3. Examination procedure
3.1 Subject of Examination
The subject of examination on patentability requirements in terms of novelty, inventive step, first-to-file, etc., among reasons for rejection under Patent Law Section 49,is a claimed invention. The finding of the claimed invention is made based on the statements of the claim.
3.2 Procedures
(1) Determination of whether the requirement of unity of invention is satisfied shouldbe made first.
(2) Where the requirement of unity of invention is satisfied, the claimed inventions ofthe application should be examined in respect of the requirements for patentability ofeach claim in terms of novelty, inventive step, etc.
(3) If an application lacks unity of invention, the invention set forth in the first claimand those inventions having unity with said invention should be examined in respect ofother requirements than the requirement for unity of invention. The claims lacking therequirement for unity of invention can be examined provided that no further work loadis required.
(4) Requirements other than those for claims, such as requirements for description ofspecification are examined concurrently with the examination referred to in paragraphs(2) and (3) above.
(5) In the case of examination in (2) and (3) above, all the respective requirements shouldin principle be considered at the same time. For instance, even when the requirementsfor description of specification are not satisfied, examination should be made concurrently in respect of the requirement for patentability in terms of novelty, inventive step,etc., unless the description of the claimed invention is so obscure that the examinationin respect of the requirements for novelty, inventive step, etc. cannot be made.
4. Prior Art Search
4.1 Subject of the Search
(1) The search should be directed to inventions set forth in the claims that meet therequirement for unity of invention. Notwithstanding the above, where the claimed inventions that do not meet the requirement for unity of invention can be examined withoutfurther work load, such inventions may be the subject of the search. The search shouldbe directed to all the inventions set forth in the claims described in the patent specification as of the commencement of examination, ranging from a claim describing an invention of the broadest concept to one describing an invention of the narrowest concept.
In a case where there are two or more alternatives involved in matters to define the invention and these alternatives are not similar in property or function, at least one more additional alternative similar in property or function should be chosen and searched. It is recommended that alternatives containing examples be chosen.
In a case where a multiple dependent form claim is defined by referring to other proceeding claims and the other alternatives are not similar in property or function, then is also applied.
(2) The examiner should have due regard to embodiments of the claimed invention (onlythose corresponding to constituent elements set forth in the claim).
(3) The search should cover the subject matter to which the claims are most likely tobe directed after they have been amended, in addition to those to which the claims aredirected, unless it requires excess work load in terms of search economy.
(4) Where the object, constitution and effects of the claimed invention are not sufficiently described such that a person skilled in the art to which the invention pertainscan easily carry out the invention (in case of unduly broad claims), the examiner mayexclude from a search effort a subject for which there is a reasonable ground that detailed explanation of the invention is not described sufficiently such thata person skilled in the art can easily carry out the invention.
(5) The search may be exempted for claims to which new matters have apparently beenadded, claims apparently directed to unpatentable subject matters, claims apparently involving non-statutory inventions, claims apparently involving industrially inapplicableinventions, and claims with descriptions so obscure that they failed to identify the inventions even with due regard to the description of the invention and drawings.
4.2 Scope of the Search
(1) The search, in principle, should consult all documents in the relevant technical fieldsto which each claimed invention pertains.
Relevant technical fields are:
A) technical fields which are determined in the light of such factors regarding the claimed invention as the fields of industrial application, the problems to besolved, and the matters to define the invention, and
B) technical fields which are determined in the light of such factors regarding individualelements of the claimed invention as their uses, their works, and their works, and their functions.
(2) Notwithstanding the above, the examiner may, for reasons of search economy, omitsections of the scope of the search as far as the likelihood of finding any relevant documents in such sections is not deemed high on the basis of his knowledge and experiencein the relevant technical fields.
4.3 Search Strategy
(1) The examiner should carry out the search paying close attention to the pertinentofficial examination guidelines in terms of novelty, inventive step and first-to-file (Section 29bis and 39), and try to thoroughly discover all relevant prior art documents withinthe scope of the search.
(2) The examiner should give precedence to the technical fields in which the probability of finding relevant prior art documents is considered highest.
Normally, it would be appropriate to start the search with technical fields most relevant to embodiments of the claimed invention (only those corresponding to constituentelements set forth in the claim) and to gradually extend the search to other less relevanttechnical fields.
(3) Whether or not to extend the scope of search to the fields with less relevance shouldbe determined depending on whether there is a possibility of finding relevant prior artdocuments which may reasonably deny patentability, while taking account of the searchresults already obtained.
(4) Searching "Specified Invention" first leads to an efficient examination of all theclaimed inventions since it provides reference information for examination of noveltyand inventive step of other claimed inventions.
In particular, where the search reveals the presence of novelty and inventive steprelated to Specified Invention, no further search will be required for other claims involving all indispensable constituent features of the Specified Invention and additional limitations because the inventions set forth in such claims are also deemed to have noveltyand inventive step.
(5) The examiner should continuously evaluate the results of his search, and if necessary, reformulate the subjects of the search accordingly.
(6) When documents have been found clearly demonstrating lack of novelty in the entire subject matter of the claimed invention and its embodiments (only those correspondingto constituent elements set forth in the claim) described in the description of the invention, or when documents have been found showing prior art of which difference fromthe embodiment is difference in embodied means to solve a problem and is deemed veryminor, the search may be stopped at this point without searching for the remainder ofthe scope of search as to the claim concerned.
(Note) In the application of paragraph (6), the search may be stopped when a documenthas been found clearly demonstrating lack of novelty in one or moreembodiment(only those corresponding to constituent elements set forth in theclaim) of theclaimed invention, or when documents have been found showing prior art ofwhich difference from the embodiment is difference in embodied means to solve aproblem and is deemed very minor (hereinafter referredto as "documentsdenying novelty etc.").
Nevertheless, where the search can be conducted for other embodiments (onlythose corresponding to constituent elements set forth in the claim) withoutfurther work load, further search is desirable.
(7) The search may be stopped when the possibility of finding more relevant prior artdocuments becomes very low in the scope of the search.
(Note):
1) In the application of paragraph (7), the search should preferably be continuedwhere there is a high possibility of discovering documents denying novelty,etc. of the embodiments of the claimed invention (only thosecorresponding toconstituent elements set forth in the claim).
2) Where a claimed invention covers a wide range of chemical compoundsexpressed in Markush formula and has many embodiments, and whereit isvery difficult for the examiner to search the full scope of search withoutundueeffort, under the assumption that all reasonable efforts were made to conduct the search, the search may be completed without carrying out the full scope of the search if either of the following conditions (i) or (ii) apply, the search may be terminated before finishing the full scopeof thesearch.
(i)At least one prior art document denying novelty etc. must have beenfoundwith regard to at least one of the groups of chemical compoundswhich are expressed as alternatives in the claim and which involve chemical compounds indicated as working examples (namely thegroups of chemical compounds expressed as specific alternativescorresponding to working examples).
(ii) A search of all the groups of chemical compounds shown as specific alternatives corresponding to the above examples has already been carried out, and at least one prior art document which denies the novelty, etc. has already been found.
4.4 Record of Search Results
Record of the search results which an applicant could use as a reference for makingamendment in response to a notice for rejection, should be made with respect to A) technical fields searched (expressed using the International Patent Classification Symbols)and B) relevant prior art documents, and should be attached to the non-final notice forrejection after the first prior art search.
For instance, records should be made with respect to other than documents citedin the notice for rejection, documents deemed useful for determining the novelty andinventive step though not directly denying the novelty and inventive step of claimed inventions, and documents covering disclosures with a high probability of being incorporated in the claim after amendment.
The record of search results is not construed as constituting a reason for rejection.
(Notes): In a case where the search is terminated half-way in accordance with Note, for the above 4.3(7), such a note is described in “Records of search results”.
5. Notice for Rejection
In the Patent Law, a notice for rejection is classified into two categories in viewof the provisions governing periods for effective amendments to and amendable contents of a specification and drawings.
One of the categories is a notice for rejection to be notified first to an applicantunder Section 50 of the Patent Law (hereinafter referred to as the "non-final notice forrejection"; Patent Law Section 17bis(1)(i)). The other of the categories is the notice forrejection to be served last in the case where, after a notice for rejection had been served,further notice for rejection was served (hereinafter referred to as the "final notice forrejection"; Patent Law Section 17bis(1)(ii)).
After a final notice for rejection has been served, the amendable scope of a claimis restricted under Section 17bis(4) and 17bis(5) of the Patent Law.
A "non-final notice for rejection," in principle, is defined as a notice for rejectionto be notified to an applicant with reasons for rejection for the first time. Therefore,in addition to a first notice for rejection, a subsequent notice for rejection served onthe applicant for reasons for rejection not necessitated by amendments made in responseto the first notice for rejection is also a "non-final notice for rejection."
A "final notice for rejection," in principle, means a notice indicating only reasonsfor rejection which is necessitated by amendments made in response to the non-final notice for rejection.
5.1 Non-Final Notice for Rejection
(1) The examiner should find and communicate all reasons for rejection at the timeof serving the first notice for rejection.
(2) If an application lacks unity of invention, in principle, the examiner should findand communicate reasons for rejection concerning requirements other than the unityof invention with respect to the invention set forth in the first one of the claims andthose claimed inventions having the unity with the said invention, unless the claims lackingthe unity of invention can be examined without additional work load of examination.
A notice for rejection should be drafted in such a way as to distinguish betweenclaims which have not been examined for requirements other than unity of inventionand those examined for such requirements. All reasons for rejection which have beenfound should be described.
(3) All reasons for rejection concerning claims which satisfy the requirement for unityof invention should be notified concurrently at the time of serving the first notice forrejection as far as possible, except in the following cases:
1) A case where the description of the invention in an application is extremelyobscure, to such an extent that it is difficult to examine requirements for patentability such as novelty or inventive step;
In such a case, the reasons for rejection related to requirements for description of specification, etc. alone should be notified, expressly stating that therequirements for patentability in terms of novelty, inventive step, etc. have notbeen examined.
2) Cases where it is apparent that new matters have been added to the claim, wherethe claim is apparently directed to unpatentable subject matter, where the subject matter set forth in the claim is apparently a non-statutory invention, orwhere the claimed invention is apparently not industrially applicable;
In such cases, the reasons for rejection concerning these cases alone shouldbe notified, expressly stating that the requirements for patentability in termsof novelty, inventive step, etc. have not been examined.
(Explanation)
Only when an application is deemed to fall under "apparently" any of thecases mentioned above, an examination of the requirements for patentabilityin terms of novelty, inventive step, etc. may be exempted because a determination on cases involving uncertainty might be changed later even withoutamendments.
3) A case where any claimed invention apparently fails to meet requirements forpatentability such as novelty or inventive step, and where there are only minordescriptive deficiencies in the specification or drawings of which correctionwould not violate Section 17bis;
In such a case, it is not necessary to point out reasons for rejection relatedto such minor descriptive deficiencies when referring to the reasons for rejection concerning the requirements for patentability with regard to the claim inthe first notice for rejection.
(Explanation)
In such a case, it is expected that minor descriptive deficiencies in the specification and drawings may be corrected by amendments in response to the notice for rejection to the effect that the claimed invention fails to meet therequirements for patentability. Even where the descriptive deficiency remainsuncorrected and is pointed out later in the final notice for rejection, an amendment in response to the final notice is permitted if it is an amendment to theclaim which is deemed as "correction of errors in the description" or "clarification of an ambiguous description" under Section 17bis(4)(iii) and 17bis(4)(iv)or an amendment to the description of invention. They are then processed inthe manner as described above.
(4) Except for reasons for rejection which cannot be determined on the basis of individual claims (e.g. unity of invention, insufficiency of overall description in the specification), the reasons for rejection due to lack of novelty, or inventive step, etc. shouldbe indicated for each claim in order to distinguish between claims bearing reasons forrejection and those which do not.