Patent Act Articles 162-164: Examination Before Appeal
1. Overview
When an amendment to the specification, etc., is made at the same time as a request for a trial against an examiner's decision of refusal, a so-called examination before appeal is conducted.
Examination before appeal corresponds to a preliminary examination conducted before entering the trial against an examiner's decision of refusal. Originally, the majority of cases where an examiner's decision of refusal was overturned in a trial against an examiner's decision of refusal were those where amendments were made to the specification, etc., after the examiner's decision of refusal. Therefore, it is considered highly likely that a patent can be granted (the examiner's decision of refusal can be overturned) if the examiner who made the decision of refusal re-examines the case. Based on this background, the examination before appeal was established for the purpose of reducing the number of cases to be handled by administrative judges and promoting the efficiency of trials.
・Person in charge of examination before appeal
The examiner who made the examiner's decision of refusal. If that examiner is unable to perform their duties due to retirement, changing jobs, etc., another examiner in charge of examining applications in the relevant technical field will take over.
・When a patent is granted during examination before appeal
The examiner cancels the original decision, and the request for trial is thereby terminated.
・Reason for not issuing a decision of refusal during examination before appeal
To avoid further requests for trial.
・If it is found during the examination before appeal that the amendment made at the same time as the request for trial against an examiner's decision of refusal does not meet the requirements (Article 17-2, paragraphs (3) to (6)), the examiner shall examine the content before the amendment, and if a patent can be granted based on the content before the amendment, the examiner shall dismiss the amendment, cancel the examiner's decision of refusal, and grant a patent (Article 163, paragraphs (2) and (3), Article 164, paragraph (2)).
・If the examiner determines that a patent cannot be granted and the original decision can be maintained, the examiner shall report the examination results to the Commissioner of the Japan Patent Office without issuing a decision, and cannot dismiss the amendment (Article 164, paragraphs (2) and (3)). Thereafter, the Commissioner of the Japan Patent Office shall designate administrative judges to form a panel (Article 137, paragraph (1)), and the trial against the examiner's decision of refusal will be conducted.
● Overview of the flow
・When the amendment at the time of the request for trial is lawful
(1) If the reason for refusal is resolved and there are no other reasons for refusal → Cancel original decision, grant patent
(2) If the reason for refusal is resolved, but a different new reason for refusal is discovered → Notification of reasons for refusal
(3) If the reason for refusal is not resolved → Report examination results to the Commissioner of the Japan Patent Office
・When the amendment at the time of the request for trial is unlawful
Except when granting a patent, a decision to dismiss the amendment cannot be made (Article 164). Re-examine whether the reasons for refusal of the application before the amendment are valid.
(1) Reasons for refusal of the application before the amendment are valid → Report examination results to the Commissioner of the Japan Patent Office
(2) Reasons for refusal of the application before the amendment are invalid, and there are no other reasons for refusal → Decision to dismiss amendment, cancel examiner's decision of refusal, grant patent
(3) Reasons for refusal of the application before the amendment are invalid, but there are other reasons for refusal → Report examination results to the Commissioner of the Japan Patent Office
2. Notification of Transfer for Examination Before Appeal
When an amendment is made to the scope of claims attached to the application for the patent related to the request at the same time as a request for a trial against an examiner's decision of refusal, a so-called examination before appeal is conducted (Patent Act Article 162).
When conducting this examination before appeal, it seems that a "Notification of Transfer for Examination Before Appeal" is sent from the Japan Patent Office.
In the examination before appeal, the examiner will either cancel the original decision and grant a patent (so-called pre-appeal registration), or determine that the original decision should be maintained and report the results of the examination before appeal to the Commissioner of the Japan Patent Office (so-called pre-appeal report) (Patent Act Article 164).
When the examiner makes a pre-appeal report (Patent Act Article 164, paragraph (3)), a notification of release from examination before appeal is sent to the requester. Once a pre-appeal report is made, the Commissioner of the Japan Patent Office will have administrative judges conduct the trial for this trial case (Patent Act Article 137, paragraph (1)).
As an applicant, I hope for the flow of pre-appeal registration after the notification of transfer for examination before appeal.
It is not my intention to increase the workload of administrative judges by making a pre-appeal report.
● Reference Information
・Q&A on Trial Against Examiner's Decision of Refusal
・Patent Act Article 162
Article 162: Where a request for a trial against an examiner's decision of refusal has been filed, if an amendment is made to the specification, scope of claims, or drawings attached to the written application for the patent related to the request at the same time as the request, the Commissioner of the Japan Patent Office shall have an examiner examine the request.
・Patent Act Article 163
Article 163: The provisions of Articles 48, 53, and 54 shall apply mutatis mutandis to the examination under the provisions of the preceding Article. In this case, the phrase "item (i) or (iii) of paragraph (1) of Article 17-2" in Article 53, paragraph (1) shall be deemed to be replaced with "item (i), (iii), or (iv) of paragraph (1) of Article 17-2," and the term "an amendment" shall be deemed to be replaced with "an amendment (excluding, in the cases listed in item (i) or (iii) of the same paragraph, an amendment made before the request for a trial against an examiner's decision of refusal)."
(2) The provisions of Articles 50 and 50-2 shall apply mutatis mutandis where a reason for refusal that is different from the reasons for the examiner's decision involved in the request for a trial is discovered in the examination under the provisions of the preceding Article. In this case, the phrase "the cases listed in item (i) or (iii) of paragraph (1) of Article 17-2 (in the case listed in item (i) of the same paragraph, limited to the case where the notice under the provisions of the following Article is given concurrently with the notice of reasons for refusal)" in the proviso to Article 50 shall be deemed to be replaced with "the cases listed in item (i) of paragraph (1) of Article 17-2 (limited to the case where the notice under the provisions of the following Article is given concurrently with the notice of reasons for refusal, and excluding the case where an amendment was made before the request for a trial against an examiner's decision of refusal), item (iii) (excluding the case where an amendment was made before the request for a trial against an examiner's decision of refusal), or item (iv)."
(3) The provisions of Articles 51 and 52 shall apply mutatis mutandis where the request for a trial is found to be well-grounded in the examination under the provisions of the preceding Article.
・Patent Act Article 164
Article 164: When an examiner makes a decision to the effect that a patent is to be granted in the examination under the provisions of Article 162, the examiner must revoke the examiner's decision of refusal involved in the request for a trial.
(2) Except in the case provided for in the preceding paragraph, an examiner must not make a decision of dismissal under the provisions of Article 53, paragraph (1) as applied mutatis mutandis in paragraph (1) of the preceding Article.
(3) Except in the case provided for in paragraph (1), an examiner must report the results of the examination to the Commissioner of the Japan Patent Office without making a decision on the request for a trial.
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