Regarding divisional applications, even after First OA, the scope of possible amendments may be narrowed.
In Japan, there is a specific system whereby the scope of possible amendments is narrowed if an Article 50bis notice is given for a divisional application. As Article 50bis notice is issued when the divisional application has the same reasons for refusal as those already given for the parent application, as described below.
This notice is intended to encourage the applicant to fully scrutinize the reasons for refusal communicated in the examination of the parent application.
In a typical case, as shown below, a relatively wide range of amendments are allowed in the first OA, and it is only after the final OA that the permissible range of amendments becomes narrower. However, if an article 50bis notice is issued for a divisional application, the scope of permissible amendments becomes narrower, even for the first OA, which is a disadvantage.
Strict restrictions on amendments not being amendments for other purposes (Article 17bis (5)).
What is imposed in the above “narrow scope of permissible amendments” is the limitation on amendments for other purposes under Article 17bis (5). This provision states that an amendment may be made only for one of the following purposes (a) through (d).
In (b), the limited reduction of claims, which is the most frequent type of amendment, as shown below, the only patterns that can be amended are “sub-conceptualization of matters specifying the invention” or “deletion of a part of the claim options,” etc. In addition, if the invention after amendment does not meet the requirements of novelty, inventive step, etc., the amendment itself will be rejected. If, for example, the amended invention does not satisfy the requirements of inventive step, the amendment itself will be rejected.
The following is from case studies by the JPO to determine whether or not an amendment falls under (b) Restriction of claims in a limited way. In cases where the amendment requirements on the right-hand side are not met, it is shown that the amendment does not fall under the category of sub-conceptualization of matters specifying the invention. In actual examination, not all cases are necessarily judged strictly, but it is not uncommon for amendments to be rejected.
To avoid receiving an article 50bis notice in a divisional application.
Considering the above, it is recommended that the contents of the notice of reasons for refusal received in the parent application be carefully examined, and that the necessary amendments be made to the divisional application before the examination of the divisional application begins.
If, at the time of filing the divisional application, the applicant has already resolved the reasons for refusal of the parent application, applicant may submit a statement to that effect (submission of a statement is also recommended by the JPO).
The information provided above serves as an explanation of the Article 50bis notice, a regulation specific to Japan concerning divisional applications.
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