Practical Tips

Brief Summary Filing an appeal against a Decision of Rejection is often effective for important applications The success rate of appeals against Decisions of Rejection was 78% in 2024 In about one-third (33%) of appeals without amendments, the applications were allowed without any further Office Act

Brief Summary “Motivation” is a factor motivating a skilled person to combine the primary citation and the sub-citation(s) to reach the claimed invention “Motivation” is determined by comprehensively considering: 1. Relation of technical fields 2. Similarity of problems to be solved 3. Similarity of

Brief Summary There are three options: 1. File an appeal against the Decision of Rejection 2. File a divisional application 3. Let the application lapse When an appeal is filed, a precautionary divisional application is frequently filed as a backup.1. Appeal deadlineForeign applicants must file an a

Brief Summary Foreign applicants can file a divisional application at the following times:1. Before an Office Action is issued2. Within the response period to an Office Action3. Within 30 days from issuance of a Decision of Allowance (except after a Decision of Rejection has been issued), but only b

Brief Summary In general, you can amend the claims at the following times:1. before issuance of an Office Action2. within the response period to an Office Action3. at the same time as an appeal to a Decision of Rejection  You can make corrections (post-grant amendments) after grant The applican

Brief Summary Three routes for denying inventive step Route (1): claimed invention = primary-cited invention + sub-cited invention(s) [motivation needed] Route (2): claimed invention = primary-cited invention + matter of design [motivation not needed] Route (3): claimed invention = primary-cited inv