1. Amendment More Limited After Official Action

After the first official action, the amendment is accepted only within the scope of the unity of the invention of the examined claims, or the amendment constitutes a reason of rejection. When claims A and B lacking unity of the invention are originally presented and only claim A is examined, canceling claim A to leave claim B is not accepted.

Our Suggestion: When claims A and B may not satisfy the unity of the invention, more important claim should be presented in front.

2.More Chance to File Divisional Application

A divisional application may be filed not only within a period for responding to the official action, but also within 30 days after receiving the allowance or the decision of rejection.

Our Suggestion: When an allowance is made without any official action on the merit, it is suggested to confirm that the allowed claims cover what the applicant wants. If not, a divisional application should be filed.

3. Amendment Also Limited in Divisional Application

If a reason of rejection made in a parent application is not cured in the divisional application before the first official action is made in the divisional application, the amendment is limited to 1) cancel claims, 2) narrow the claims, 3) correct errors or 4) clarify the indefinite description, as same as the amendment after the final rejection.

Our Suggestion: The Office Action issued for the parent application should be reviewed when or before the request for the examination is filed for the division application.

4. Longer Term to File Translation of Foreign Language Application

A translation of an application may be filed within one year and two months from the filing date of the priority application, if the application was filed in English in Japan.

Our Suggestion: It is advisable to file an English application and the request for the examination at an early stage without translation, particularly when the English language applicant desires to obtain a patent in Japan earlier, while deferring the payment of the translation fee.

It is likely that the above changes are effective for the applications filed on or after April 1, 2007, although the effective date is not published yet.

I hope that the above information can be of your help. Should you have any question, please do not hesitate to contact us.