Japanese Patent Procedure - Types of Office Actions and Responses to Them

１．Examination Stage

The documents notified by the examiner at the examination stage include a Notice of Reasons for Refusal (a Notification of Grounds for Rejection), a Decision of Refusal and a Decision to Grant a Patent. There are two types of the notices of reasons for refusal: “Non-final Notice of Reasons for Refusal” and “Final Notice of Reasons for Refusal”. Please note that some people translate a final notice of reasons for refusal as “a Final Office Action” and some people translate a decision of refusal as “a Final Office Action.”

１－１．Non-final Reasons for Refusal

The Japanese title of this notice would be literally translated as “First Notice of Reasons for Refusal.” Therefore, “Non-final Notice of Reasons for Refusal” is sometimes translated as “First Notice of Reasons for Refusal.”

If a notice of reasons for refusal does not have the word “＜＜＜＜　　最　　後　　＞＞＞＞ (<<<< FINAL>>>>)” written on the first page of the notice nor the words “＜最後の拒絶理由通知とする理由＞ (<Reasons why this notice is a final notice of reasons for refusal>)” after the explanation of the reasons for refusal, the notice is a non-final notice of reasons for refusal. Normally, a notice of reasons for refusal which an applicant receives first will be a non-final notice of reasons for refusal. However, in the case of a divisional application, if the reasons for refusal are the same as those for the parent application, a notice of reasons for refusal which an applicant receives first will become a final notice of reasons for refusal.

In response to a non-final notice of reasons for refusal, a written argument (opinion) and/or a written amendment can be filed.
A divisional application can also be filed within the response period.

Response period:
・3 months (if at least one of the applicants is an overseas resident)
・60 days (if all applicants are Japanese residents)

Extension of response period:
・up to 3 months (if at least one of the applicants is an overseas resident. Two-month extension will be obtained by the first request. Another one-month extension will be obtained by the second request.)
・2 months (if all applicants are Japanese residents)

Restrictions on amendment:
・Prohibition on adding new matters
・Prohibition on changing a special technical feature

FIG. 1 Flow after issuance of a non-final notice of reasons for refusal at the examination stage
(Depending on the conditions, procedures may differ from those shown in the above flow. For example, even if an examiner should issue a decision of refusal according to the above flow, in case where the examiner can suggest amendments that will make the application patentable, the examiner may contact the applicant (attorney) by telephone, and if the applicant and the examiner agree on the amendments, the examiner will issue a final notice of reasons for refusal, and the applicant can make the agreed-upon amendments in response to the notice, which will result in a decision to grant a patent.)

１－２．Final Notice of Reasons for Refusal

If a notice of reasons for refusal has the word “＜＜＜＜　　最　　後　　＞＞＞＞ (<<<< FINAL>>>>)” written on the first page of the notice and/or the words “＜最後の拒絶理由通知とする理由＞ (<Reasons why this notice is a final notice of reasons for refusal>)” after the explanation of the reasons for refusal, the notice is a final notice of reasons for refusal.

A final notice of reasons for refusal is, in principle, a notice that notifies only reasons for refusal that have become necessary due to amendments made in response to a non-final notice of reasons for refusal.
In response to a final notice of reasons for refusal, arguments and/or amendments can be filed.
A divisional application can also be filed within the response period.

Response period:
・3 months (if at least one of the applicants is an overseas resident)
・60 days (if all applicants are Japanese residents)

Restrictions on amendment:
・Prohibition on adding new matters
・Prohibition on changing a special technical feature
・Amendment of the claims is limited to that which is done for one of the following purposes:
　(Ⅰ) cancelation of a claim
　(Ⅱ) restriction of the scope of claims (limited to the cases where the restriction is to restrict matters required to identify the invention stated in a claim or claims)
　(Ⅲ) correction of errors; and
　(Ⅳ) clarification of an ambiguous statement which relates to reasons for refusal

FIG. 2 Flow after issuance of a final notice of reasons for refusal at the examination stage
(*For example, when the amended claims, where amendments were made with the purpose of the restriction in a limited way, are not patentable, the amendments will be dismissed and a decision of refusal will be issued, but when the amended claims, where amendments were made with the purpose of the clarification of an ambiguous statement, are not patentable, the amendments will not be dismissed and a decision of refusal will be issued.
Depending on the conditions, procedures may differ from those shown in the above flow.)

１－３．Decision of Refusal

To respond to a decision of refusal, an applicant must file an appeal against the decision of refusal.
The applicant can also file a written amendment at the same time as the appeal.
The applicant can file a divisional application within the response period. This may be a last opportunity to file a divisional application, since if a decision is made without a notice of reasons for refusal being issued at the appeal stage, there will be no opportunity to file a divisional application at the appeal stage. From April 2023, it is possible to request a stay of prosecution of a divisional application while the parent application is pending appeal.

Response period:
・4 months (if at least one of the applicants is an overseas resident)
・3 months (if all applicants are Japanese residents)

Extension of response period:
・Not possible

FIG. 3 Flow after issuance of a decision of refusal
(Depending on the conditions, procedures may differ from those shown in the above flow.)

１－４．Decision to Grant a Patent

After a decision to grant a patent is issued, the patent will be registered by paying the registration fee.

A divisional application can be filed within the registration fee payment period and before the patent is registered.
Please note that a divisional application cannot be filed after receiving a decision to grant a patent issued in a reconsideration by examiner before appeal (refer to 2-1) or in a remand examination (cases requested for appeal are usually examined by an appeal board, but if there were significant problems with the examination at the examination stage, the case would be remanded to the examiner).

Registration fee payment period: 30 days
Extension of payment period: 30 days

２．Appeal Stage

The documents notified at the appeal stage include a Non-final Notice of Reasons for Refusal, a Final Notice of Reasons for Refusal, an Appeal Decision of Refusal and an Appeal Decision to Grant a Patent. Also, a chief appeal examiner may conduct hearing at his/her discretion.

２－１．Reconsideration by Examiner before Appeal

If a written amendment is filed at the same time as filing an appeal, the examiner reconsiders the case before an appeal board examines the case.

If the examiner determines that the application is patentable, the examiner will issue a decision to grant a patent. Unlike a decision to grant a patent issued following a regular examination, the applicant cannot file a divisional application during the registration fee payment period for a decision to grant a patent issued in a reconsideration by examiner before appeal.

If the examiner determines that the application is not patentable, the examiner will issue no decision and the case will be examined by an appeal board.
However, even if the examiner determines that a claim is not patentable, if the examiner can suggest amendments that will make the application patentable, the examiner may contact the applicant (representative) by telephone, and if the applicant and the examiner agree on the amendments, the examiner will issue a final notice of reasons for refusal, and the applicant can make the agreed-upon amendments in response to the notice, which will result in a decision to grant a patent.

２－２．Non-final Notice of Reasons for Refusal

When an appeal board finds reasons for refusal that are different from those of the decision of refusal, the appeal board will issue a non-final notice of reasons for refusal (refer to FIG. 3).

The procedure for responding to the non-final notice of reasons for refusal at the appeal stage is the same as that at the examination stage, except for extension of the response period. A divisional application can also be filed within the response period.

During the appeal stage, an extension of the response period to a non-final notice of reasons for refusal is granted in only one of the following two cases:

when an extension is required to obtain comparative experimental data with cited examples: 1 month
when at least one of the applicants is an overseas resident and an extension is required to translate procedural documents: up to 3 months (1 month x 3 times)

FIG. 4 Flow after issuance of a non-final notice of reasons for refusal at the appeal stage
(Depending on the conditions, procedures may differ from those shown in the above flow.)

２－３．Final Notice of Reasons for Refusal

Depending on the content of the response to the non-final notice of reasons for refusal, the appeal board may issue a final notice of reasons for refusal (refer to FIG.4).

The procedure for responding to a final notice of reasons for refusal at the appeal stage is the same as that at the examination stage, except for extension of the response period. A divisional application can also be filed within the response period.

During the appeal stage, an extension of the response period to a final notice of reasons for refusal is granted in only one of the following two cases, which are same as those of a non-final notice of reasons for refusal:

when an extension is required to obtain comparative experimental data with cited examples: 1 month
when at least one of applicants is an overseas resident and an extension is required to translate procedural documents: up to 3 months (1 month x 3 times)

FIG. 5 Flow after issuance of a final notice of reasons for refusal at the appeal stage

(*For example, when the amended claims, where amendments were made with the purpose of the limitative restriction, are not patentable, the amendments will be dismissed and an appeal decision of refusal will be issued, but when the amended claims, where amendments were made with the purpose of the clarification of an ambiguous statement, are not patentable, the amendments will not be dismissed and an appeal decision of refusal will be issued.
Depending on the conditions, procedures may differ from those shown in the above flow.)

２－４．Appeal Decision of Refusal

If the decision of refusal is not acceptable, the applicants must file a suit against the appeal decision.
Amendments are not allowed.
The applicant cannot file a divisional application at this stage.

Law suit period:
・120 days (if at least one of the applicants is an overseas resident)
・30 days (if all applicants are Japanese residents)

Extension of law suit period:
・Not possible

２－５．Appeal Decision to Grant a Patent

After an appeal decision to grant a patent is issued, the patent will be registered by paying the registration fee.

The applicant cannot file a divisional application at this stage.