1. Introduction

When an Office Action is issued on a patent application, the applicant may assert the patentability of the invention or amend the claims in order to overcome the Examiner’s objections so as to lead the application to grant.  When making amendments, the applicant tries not to limit the invention too narrowly.   In order to do so, it is essential to know the allowable scope of amendments as prescribed by the law of the country in which the application is filed.  In the past, we explained the allowable terms for filing amendments in Japan as summarized below. 

  • After the application is filed and before the first Office Action is issued
  • In the period for responding to non-final Office Action
  • In the period for responding to final Office Action
  • When a Request for Appeal is filed in response to Decision of Rejection

According to the Japanese Patent Law, the allowable scope of amendments varies depending on the stage during which the amendments are made.  In this article, we explain the restrictions to the amendments based on the allowable terms for making amendments.

2. Allowable scope of amendments

(A) After the application is filed and before the first Office Action is issued (Article 17bis, Paragraph 1, Main Paragraph)

The applicant can freely make amendments (voluntary amendments) to the claims, specification, or drawings as long as the amendments are within the scope of the initial disclosure of the specification, claims, or drawings (Article 17bis, Paragraph 3).

(B) After the first Office Action is issued

(B-1) Prohibition of Shift Amendments

Please note that the allowable scope of amendments differs for applications having a filing date*1 which is before April 1, 2007, and applications having a filing date which is on or after April 1, 2007.

When the filing date is on or after April 1, 2007, in addition to the restrictions to the amendments to the claims shown below in (B-2) and (B-3), amendments to the claims are restricted such that the inventions according to all claims after amendment must satisfy the requirements for Unity of Invention with respect to the inventions according to the claims before amendment which the Examiner had examined with regard to whether or not the inventions are patentable (Article 17bis, Paragraph 4).  In order to satisfy the Unity of Invention requirements, the claims should have a similar or corresponding Special Technical Feature (STF)*2

Requirements common to applications having a filing date which is on or after April 1, 2007, and applications having a filing date which is before April 1, 2007, are shown below.

(B-2) In the period for responding to non-final Office Action

The applicant can freely make amendments (voluntary amendments) to the claims, specification, or drawings as long as the amendments are within the scope of the initial disclosure of the specification, claims, or drawings (Article 17bis, Paragraph 3).  

(B-3) In the period for responding to final Office Action (Article 17bis, Paragraph 1, Number 3) or in the period for responding to a Decision of Rejection provided that the amendments are filed simultaneously with the filing of a Request for Appeal against the Decision of Rejection (Article 17bis, Paragraph 1, Number 4)

In addition to the restriction in (B-2) above, the purpose of amendments is restricted to:

  • Cancelation of a claim
  • Limitation of a feature currently existing in a claim
  • Correction of an error
  • Clarification of an unclear description as indicated by the Examiner as a reason of rejection (Article 17bis, Paragraph 5)

That is to say, amendments, which, for example, add claims, broaden the scope of the claim, delete features, or change features (except those changing the features so as to have a narrower concept) are not allowed.

If the amendments fail to overcome the reasons for rejection in a non-final Office Action, then a final Office Action or a Decision of Rejection will be issued and the purpose of the amendments made in response thereto will be severely restricted.  Therefore, when responding to a non-final Office Action, amending the claims so as to be able to differentiate the claimed inventions from the inventions disclosed in prior art citations is recommended.

3. Summary

The allowable scope of amendments is summarized in the following diagram.

Click here to view diagram.