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

April 2022
Examination Standards Office and Quality Management Office
Japan Patent Office

The JPO is working to improve the quality of examinations by promoting communication with applicants and agents through sending notices of reasons for refusal, etc. in compliance with a uniform writing format that is easy to understand for applicants and agents both in Japan and abroad (Note1).

This is to inform you that we have revised the relevant writing format in accordance with the introduction of Restriction of Multi-Multi Claims (Note2).

(Note1) For example, the Intellectual Property Strategic Program 2014 states as follows.

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).

(Note2) Restriction of Multi-Multi Claims

The examiner, unless there are special circumstances, shall make a notice of reasons for refusal, etc. in accordance with the following point of writing format. However, the statement regarding Multi-Multi claims does not apply to applications filed on or before March 31, 2022.

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) When notifying reasons for refusal for violation of the delegated ministerial ordinance requirement on statement of claims pertaining to Multi-Multi claims, such reasons for refusal shall be stated before the other reasons for refusal.
  (It is clearly understandable which inventions are subject to examination for requirements other than Article 24ter(v) of the Ordinance for Enforcement of the Patent Act (delegated ministerial ordinance requirement on statement of claims pertaining to Multi-Multi claims) as delegated by Article 36(6)(iv).)
• (7) When notifying reasons for refusal for violation of the delegated ministerial ordinance requirement on statement of claims pertaining to Multi-Multi claims, the examiner shall specify the invention that has not been examined for requirements other than the delegated ministerial ordinance requirement on statement of claims for Multi-Multi claims.
• (8) When notifying reasons for refusal for violation of the requirement of unity of invention, if the reason for refusal in (6) above exists, the examiner shall state it following the said reason for refusal, and if the reason for refusal in (6) above does not exist, the examiner shall state it before the other reasons for refusal. (It is clearly understandable which inventions meet the requirement of unity of invention and whether or not it is subject to examination for requirements other than that of Article 37 (unity of invention).)
• (9) When notifying reasons for refusal for violation of the requirement of unity of invention, the examiner shall specify the invention that has not been examined with respect to requirements other than that of unity of invention.
• (10) 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 "
• (11) (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.
• (12) 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

Point of the writing format for decision of refusal

• (13) 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.
• (14) Article numbers which have been unsolved should be specified.
• (15) 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.
• (16) 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.
• (17) For the issuable items in the written opinion, determination of the examiner on them should be clarified.
• (18) 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

[Last updated 1 April 2022]

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Examination Standards Office Administrative Affairs Division Japan Patent Office E-mail:PA2A10@jpo.go.jp