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Unlike a U.S. reissue application, Japan has no post-grant route to enlarge a granted claim. Broadening of the claims only happens during examination with a time limitation.
1. Before an Office Action
You can broaden the claims before receiving an Office Action unless the amendments introduce new matter.
2. Response to Non-Final Office Action
You can still broaden the claims in response to a Non-Final Office Action unless the amendments introduce new matter or are shift amendments that change a special technical feature (STF).
Shift amendments in Japan will be explained in another article in detail.
3. Response to a Final Office Action or Decision of Rejection
In principle, you cannot broaden the claims in response to a Final Office Action or Decision of Rejection.
Strictly speaking, the purpose of the amendments in response to a Final Office Action or Decision of Rejection is limited to:
(i) cancelation of a claim;
(ii) limitation to a claimed feature;
(iii) correction of an error; or
(iv) clarification of an unclear recitation.
If you would like to broaden the claims, you should file a divisional application.
Please note, however, that even after you receive a Final OA or Decision of Rejection once, you can broaden the claims if you receive a Non-Final OA again. This occasionally happens during an appeal examination.
4. After grant
You can never broaden the claims.
If you would like to pursue a broader claim, you should file a divisional application before the payment of the issue fee.
If you are unsure whether the amendments will be allowed in Japan, please feel free to contact us.
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