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Home > Laws and Regulations > Other Information > Patents and Utility models > Efforts about the writing format of notice of reasons for refusal etc.

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Efforts about the writing format of notice of reasons for refusal etc.

October 2015
Examination Standards Office and Quality Management Office
Japan Patent Office

We have reviewed the writing format of notice of reasons for refusal and decision of refusal, in response to the Intellectual Property Strategic Program 2014.(Note)

With these efforts, examiners make notice of reasons for refusal etc. in the united writing format which is easy to understand for applicants and agents at domestic and abroad, and it is expected that this approach contributes to promoting communication with applicants and agents and to improving the quality of the examination.

(Note) It is extracted from the Intellectual Property Strategic Program 2014. (First pillar: Building up a global intellectual property system for enhancing industrial competitiveness 1. Realization of the world’s fastest and highest quality patent examinations as well as promotion of internationalization of the intellectual property system)

 
In order to deliver examiners' intentions in a clearer manner, by reviewing the writing format of notice of reasons for refusal, creating and improving examples, and utilizing interviews, the Government of Japan will deepen communication with applicants (short term) (METI).

For applications that will be examined after April 1st of 2015, unless there are special circumstances, examiners make notice of reasons of refusal etc. according to the following point of the writing format.

We will continue to consider the way of the writing format so as to be better, taking into account the writing format of other major patent office such as EPO, USPTO etc. and system support.

Point of the writing format for First/Final notice of reasons for refusal

  • (1) Combinations of the reasons for refusal, claims and cited documents should be specified, if examiner refers to the cited documents in the reasons for refusal of lack of novelty, inventive step, etc.
  • (2) The cited parts of the cited documents should be specified, if examiner refers to the cited documents in the reasons for refusal of lack of novelty, inventive step, etc.
  • (3) Combinations of the reasons for refusal and claims should be specified, when there are deficiencies, without the case that examiner cannot judge it for each claim because there are the deficiencies of the whole description.
  • (4) The shorthand notation(*) of the reason for refusal should be written at the beginning of the Article.
    (For example, as the shorthand notation of Article 29(2), "(inventive step)" is written at the beginning of the Article. By confirming this shorthand notation, it is easy to confirm the Article contents of the reasons for refusal. )
(*)Examples for the shorthand notations
Article the shorthand notation
17bis(3) New matter
29(1)(i) to (iii) Novelty
29(2) Inventive step
29bis Secret prior art
36(4)(i)
(Enablement)
Enablement requirement
36(4)(i)
(Ministerial Ordinance)
Requirement in Ministerial Ordinance as to disclosure
36(6)(i) Requirement of support in description
36(6)(ii) Clarity
37 Unity of invention
39(1), (3) Prior application
39(2), (4) Double patenting
  • (5) Reasons for refusal should be listed at the beginning of the notice of reasons for refusal.
  • (6) The reason of refusal of the requirement of unity of the invention should be listed before any other reasons if it is noticed.
    (You will be able to easily understand the claims which meet the requirement of unity of invention, and that the claims are the object of considered without Article 37 (Unity of invention).
  • (7) The claimed invention which is excluded from the subject of the examination with regard to the requirements other than those of unity of invention, no examination has been conducted with regard to the requirements other than those concerning Article 37.
  • (8) Following the specific content of the provisions and the reasons for rejection, the following items should be written in the order (these items do not always written in the notice of reasons for refusal.).
    "Claim(s) which has been found no reason for refusal", "The reason why this notification was set to the final notification of reasons for refusal" (It is only written if it is the Final notice of reasons for refusal), "The list of cited documents etc.", "Record of the result of prior art search", "Family document information"," Contact "
  • (9) (If you only cited as references representing the well-known art) cited documents are written as indicating a well-known art in the "The list of cited documents etc.", and described so that it can be distinguished from other documents.
  • (10) For the first time cited documents in notice of reasons for refusal for the second time and later, they should be listed in "The list of cited documents etc.", are listed so that it can be distinguished from other documents.

Example for the Point of the writing format for First notice of reasons for refusal
(image-1) Example for the Point of the writing format for First notice of reasons for refusal

(image-2) Example for the Point of the writing format for First notice of reasons for refusal

Point of the writing format for decision of refusal

  • (11) The reasons for refusal that has been unsolved should be specified in the body of the decision of refusal, if plural reasons for refusal has been noticed before in the notice of reasons for refusal.
  • (12) Article numbers which have been unsolved should be specified.
  • (13) Combinations of claims and cited documents etc. should be specified, if examiner explains the unsolved reason of refusal with cited documents in the reasons for refusal of lack of novelty, inventive step, etc.
  • (14) The objected claims should be specified, when there are deficiencies, without the case that examiner cannot judge it for each claim because there are the deficiencies of the whole description.
  • (15) For the issuable items in the written opinion, determination of the examiner on them should be clarified.
  • (16) The cited document should be written at the last of the decision of refusal in "The list of cited documents etc." The newly cited documents in decision of refusal or the documents showing well-known art should be listed so that they can be distinguished from other documents.

Example for the Point of the writing format for decision of refusal
(image-3) Example for the Point of the writing format for decision of refusal

[Last updated 1 October 2015]

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Japan Patent Office

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