In this article, we would like to explain three typical reasons why patent applications can be refused by the Japanese patent office, show ways to deal with them and mention relevant deadlines.

1. Deadlines for Responding to Office Actions

If during the substantial examination of a patent application the examiner finds reasons for refusal an office action will be issued. In order the overcome the reasons the applicant can file an amendment of the claims and a written argument to argue against the reasons and/or explain the amendments. The deadline for filing a response is 60 days for Japanese residents and 3 months for foreign applicants. The deadline for foreign residents can be extended for another 3 months by filing a first extension request for 2 months and a second request for 1 month. The fee per request is 2.100 Yen. If no response was filed a final rejection will be issued for the patent application.

2.1 Typical Reason of Refusal 1 – Lack of Novelty

If an invention is identical to an already publicly known invention it will be rejected according to Article 29.1 of the Japanese patent law for lack of novelty. The publicity or the well-known nature is decided not only domestically but also on a worldwide basis.

2.2 How to Deal with Lack of Novelty

Lack of novelty can be overcome by adding elements to claims or limiting them otherwise. Alternatively, claims can be excluded. For example, if an invention is limited by numerical values the applicant can try to overcome the office action by amending the scope of the numerical values. In many cases, however, an invention that is rejected for lack of novelty is also rejected for lack of inventiveness at the same time.

3.1 Typical Reason of Refusal 2 – Lack of Inventiveness

If an invention lacks inventiveness, i.e. it would have been easy for a person skilled in the art to come up with the invention it will be rejected according to Article 29.2 of the Japanese patent law. An invention is considered not inventive if e.g. it is merely a combination of two or more known inventions that share a common technical problem and there is a potential motivation to relate these inventions. Also, results of ordinary creativity such as selecting an optimal material from known materials or optimizing a scope of numerical values is not considered inventive.

3.2 How to Deal with Lack of Inventiveness

In order to decide whether the reasoning of the examiner is appropriate it is necessary to carefully review the inventions cited in the office action that are the basis for the rejection. If the reasoning is found inappropriate the applicant can explain his argument in a written statement. When drafting the statement, it is important that only subject matter disclosed in the original specification can be used to argue.

To review citations in foreign languages a translation is necessary. In some cases, a machine translation can be sufficient however we would, in general, recommend a professional translation prepared by a human translator.

4.1 Typical Reason of Refusal 3 – Lack of clarity

Especially for foreign applications office actions based on this reason are common. If an invention is not clear enough for the examiner the invention it will be rejected according to Article 36.6 of the Japanese patent law. Problems in clarity often are due to inaccurate translation or due to technical concepts in foreign countries that are not common in Japan.

4.2 How to Deal with Lack of clarity

In case of inaccurate translations, the Japanese wording should be amended. If a technical concept is unknown in Japan, the concept can be explained in the written statement.

At transeuro we work closely with the Japanese patent office and support their research in regard to technical concepts unique to Germany. If you entrust us with your patent translation of German patents the chances for office actions due to lack of clarity can be significantly lowered.

These were only some of the common reasons and there are several other grounds why a patent can be rejected. If you are currently dealing with an office action and require a translation of the action itself or a citation, we are the right partner to work with. Contact us here for a free quote.

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