By Miki Yamaguchi, Technical Advisor, Keisen Associates
Starting this April, the Japan Patent Office (JPO) has implemented a change in the post-appeal rebuttal process. As a general rule, if a patent applicant receives a Final Decision of Rejection (FDR, Kyozetsusatei in Japanese), the applicant has the opportunity to appeal against the Examiner’s decision and have it reconsidered by the Board of Appeal Examiners. Concurrently with the appeal, the applicant can also file an amendment, which triggers a process in which the case is sent back to the original Examiner for reassessment before it is sent to the Appeals Board. After reassessing the case, the original Examiner has then the option to allow the amended application for issuance as a patent, issue an Office Action, or write a report to the Appeal Board explaining why his/her decision stands.
Prior to this new procedure, when the Appeal Board received the report from the original Examiner, the Board sent the report out to all cases subject to report – except for cases in an express appeal process – in the form of an “Invitation for the Applicant’s Comments” (Shinjin in Japanese). These invitations gave applicants an opportunity to review the original Examiner’s opinion and determine what appropriate actions to take next, such as requesting an interview with the Appeal Examiners to better address the invention. It also gave the Appeal Board an opportunity to hear the applicants’ rebuttals.
Under the new procedure, the original Examiner will continue to write a report to the Appeal Board. However, except for cases in the health care and biotechnology related fields (IPC: A01H, A01K67/02~67/027, A61K, A61L15/00~33/00, A61P~Q, C12M~S, C40B10/00, C40B40/02, C40B40/06~40/10, C40B50/06), under the new procedure, the “Invitation for the Applicant’s Comments” will no longer be sent out.
As such, applicants whose cases are not in the specified fields should monitor their cases and obtain a copy of the original Examiner’s report on their own. If they wish to rebut, they will need to do so in the form of a “petition”, as opposed to a “reply”.
In response to the JPO’s procedural changes, Keisen Associates will update our post-appeal procedure and monitor the original Examiner’s report when it becomes available, so as to ensure a rebuttal opportunity for our clients.
For any questions or concerns, please feel free to contact our Philadelphia office.