What Should I Do When I Receive a Decision of Rejection from the JPO?

1. Appeal deadline

Foreign applicants must file an appeal within 4 months from the issuance date of the Decision of Rejection. Missing this deadline ends the application.

2. Appeal and Amendments

You can make arguments in the Appeal Brief, and optionally file Amendments at the same time as the filing of an appeal.

If you file no Amendments, the case directly goes to appeal examination, where the application is examined by the Appeal Board (three Appeal Examiners). The appeal outcome is either an Appeal Decision of Allowance or Rejection. If an Appeal Decision of Rejection is issued, the applicant can file an appeal to the IP High Court, but Amendments cannot be filed.

If you file Amendments, the case goes to pre-appeal examination before the appeal examination. The amended claims are examined by the Examiner again. As a result of the pre-appeal examination, if the Examiner finds no reasons for rejection, a Decision of Allowance is issued.  However, if the Examiner determines that the application is not patentable, a Pre-Appeal Report is issued and the application moves to the appeal examination.

3. Divisional Application

A divisional application can also be filed within the appeal period (4 months for foreign applicants).

The applicant can file a divisional application without filing an appeal, or file both an appeal and a divisional application.

In practice, a precautionary divisional application is sometimes filed at the same time as the appeal to keep the family alive, especially when the application is of high importance.

4. Abandonment

If you no longer want to pursue the application, you do not have to do anything. When the appeal period has passed, the application will be deemed withdrawn.