After a request for examination, when no reasons for rejection are found for a patent application, the examiner issues a Decision of Grant. When the examiner asserts a reason for rejection, the examiner issues a Notice of Reasons for Rejection. Usually, in the Notice of Reasons for Rejection, the examiner indicates which claims should be rejected, why the claims should be rejected, and which claims may be allowed, if any.
The deadline for responding to a Notice of Reasons for Rejection is 3 months from the issue date of the Notice for applicants residing outside Japan, and it is 60 days from the issue date for applicants residing in Japan.
If necessary, the applicant may request an extension on or before the due date. For applicants residing outside Japan, up to three one-month extensions may be obtained, and therefore, the deadline may be extended by up to three months in total. Extensions may be requested for one month, two months, or for three months.
In response to a Notice of Reasons for Rejection, the applicant can submit a written Argument and a written Amendment, if any. The applicant can also file a Divisional Application at this time.
The Notice of Reasons for Rejection (Office Action) may be a First Office Action (Non-final Office Action) or a Final Office Action. The types of amendments that are allowable differ depending on the type of Office Action.
When responding to Non-final Office Actions, amendments to the specification, claims, and/or drawings should not introduce new matter that exceeds the content of the application as filed. In addition, amendments to claims should not introduce a new claimed invention differing from the original claimed invention. Only when amended claims are related to former claims so as to form a single general inventive concept with unity of invention will the amendments be accepted. Once a Notice of Reasons for Rejection is issued, drastic amendments to claims are restricted.
When responding to Final Office Actions, the same restrictions as above apply to amendments. Furthermore, acceptable amendments are limited to
i) cancelation of one or more existing claims,
ii) further limitation of one or more elements already stated in one or more existing claims (problems to be solved by the invention should be unchanged by the limitation),
iii) correction of errors, and
iv) clarification of unclear expressions indicated in the Office Action.
A first Office Action, and subsequent Office Actions citing new reasons for rejection not caused by amendments in response to a previous Office Action, are non-Final Office Actions.
A Final Office Action cites new grounds for rejection caused by amendments in response to the previous Office Action.
If the examiner is not persuaded by the applicant’s response and considers that the same grounds for rejection should be maintained, the examiner will issue a Decision of Rejection.
The Japan Patent Office may sometimes issue a Decision of Rejection after a response to the First Office Action without issuance of a Final Office Action. It is not certain that a patent application will receive at least two Office Actions. This is because if the grounds of rejection are not new (already asserted in a previous Office Action) or if the grounds of rejection are not due to amendments in response to the previous Office Action, the examiner can issue a Decision of Rejection.