In Japan, an appeal against the final decision of rejection may be filed within 3 months.
It may be hard for Americans to understand this appeal because there is nothing equivalent to this final rejection here in the U.S. We think that the advisory action after the final action in this country roughly corresponds to the final rejection in Japan. Also the Japanese appeal roughly corresponds to the amendment or the continuation application in America.
That is, if an amendment is filed against the final rejection at the same time of filling the appeal, the application is re-examined by the same examiner for re-consideration of its patentability. This amendment can be filed unless a new issue is added to the claim.
If the original examiner determined not to issue an allowance, an appellate body of three trial examiners will carefully consider the application. In our experience, a high percentage of patents applied for from foreign countries are granted as a result of this deliberation despite the original examiner’s rejection.
We can speculate that, in many cases, issues which were ambiguous and hard to understand during the original examiner’s examination become clear when they are brought to the appeal stage.
