On April 1, 2014,
the Japan Patent Office (JPO) adopted a new system by which an applicant may be
granted a “second chance” to argue against an Examiner’s opinion in a decision
of rejection.
An applicant may file a Request
for a Trial Against the Decision of Rejection for an application which was
rejected by an Examiner. If a
substantive amendment to the application is submitted at the same time as the Request
for a Trial Against the Decision of Rejection, the amended application is
returned to the Examiner for re-examination.
Should an Examiner find that
the amendment filed for an application which previously received a decision of
rejection still remains unpatentable, the Appeal Board receives a report (Re-Examination
Report) detailing the reason for rejection (Examiner’s opinion) from the
Examiner.
The applicant is granted an
opportunity to provide an argument against the Examiner’s opinion. The Appeal
Board will issue a “Questions for Clarification” (also known as an Appeal Board
Questioning), specifically, when the Re-Examination Report contains new
references that were not previously cited in the Notice of Reasons for
Rejection.
In some cases, the Appeal
Board may decide not to issue an “Appeal Board Questioning” to the applicant
and in other cases, the applicant may choose not to respond to the Appeal Board
Questioning. In the latter case, an application by an applicant who has not
responded to the Appeal Board Questioning is not treated less favorably.
The applicant may file a
Reply with the JPO in response to the Examiner’s opinion. At this point, no amendments may be
made, unless the Examiner has stated that the previous amendments introduce a
new matter. In this case, the applicant may suggest a “new” amendment(s) in the
Reply. If the Appeal Examiners deem that the “new” amendment(s) are patentable,
the applicant will be issued a Notice of Reasons for Rejection which provides
the applicant with the opportunity to submit the “new” amendment(s).
The Appeal Board Questioning
is generally for appeal cases only in the fields of medical and biotechnical
inventions, which is determined based on the International Patent
Classification (IPC). For
inventions in other fields, such as mechanical and electronic, the applicant
receives a notification stating that a Re-Examination Report has been issued.
An applicant who has
received a Notice that a Re-Examination Report has been issued for an invention
which is not included among medical or biotechnical inventions may file a
petition arguing against the Examiner’s opinion in the Re-Examination Report.
The petition must be filed prior to the commencement of the appeal examination
which is determined by the Appeal Board after the issuance of a notification
that the Appeal Board members have been designated.
After obtaining the
Re-Examination Report, the applicant should file a petition informing the Appeal
Board that the applicant wishes to state their opinion against the Examiner’s
opinion in the Re-Examination Report.
This will postpone the commencement of the appeal examination. This petition should be filed as soon as
the Re-Examination Report is obtained.
In February 2015, the JPO
announced that Appeal Board’s Questionings will be issued only as needed
in all technological fields.