In Japan, if a response to a Notice of Reasons for Refusal is not made, or if the reasons for refusal are not resolved even after a response, a Decision of Refusal is issued. This Decision of Refusal is analogous to the U.S. “Final Office Action,” but the available actions that applicants can take in Japan differ significantly, requiring special attention.
1. A Request for a Trial Against a Decision of Refusal is Necessary to Pendency of an Application
If an applicant wishes to continue the application after a Decision of Refusal, they must file a Request for a Trial Against a Decision of Refusal. This request must be filed within three months from the date the certified copy of the Decision of Refusal is sent (four months for foreign applicants). If the applicant fails to file this request within the designated period, the Decision of Refusal will become final. The filling period for this request is not generally extendable.
2. Amendments or Arguments Cannot Be Made Without Filing a Trial Request
In the U.S., when receiving a Final Office Action, applicants can make amendments to correct typographical errors or modify claims to address objections. Additionally, applicants may submit arguments and may receive an Advisory Action.
However, in Japan, unless a Request for a Trial Against a Decision of Refusal is filed, neither amendments nor arguments can be made. Therefore, even if you wish to make amendments that limit the claims to those that are deemed patentable, you will need to file an appeal.
3. Restrictions on Amendments
Amendments may be made at the same time as filing an appeal against a Decision of Refusal. However, in addition to the requirements of (A) and (B) below, amendments must satisfy one of the following conditions (C)-(F):
(A) The amendment must not add new matter
(B) The amendment must not change the special technical features of the invention
(C) Deletion of claims
(D) Restriction of the claim by limitation
(E) Correction of errors
(F) Clarification of unclear statements
4. There is No System Equivalent to the U.S. RCE (Request for Continued Examination)
Unlike the U.S. system, Japan does not have an equivalent system for requesting continued examination (RCE) after a Decision of Refusal.
5. Divisional Applications
If the Decision of Refusal is the first one, applicants may file a divisional application within three months from the date the certified copy of the Decision of Refusal is sent (four months for foreign applicants).
If you have any questions, please feel free to contact us through the following page:
https://www.oshpat.jp/en/en-contact/
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