Patent Act Article 53: Dismissal of Amendment

To ensure the promptness of examination, an amendment is dismissed in specified cases. Specifically, if it is found that an amendment in response to a notice of reasons for refusal for the second or subsequent time is unlawful before the service of a certified copy of the examiner's decision to grant a patent is made, such amendment shall be dismissed.

・Cases where an amendment is dismissed
(1) Amendment in response to the first notice of reasons for refusal where a notice under Article 50-2 is also given
(2) Amendment in response to the final notice of reasons for refusal
(3) Amendment made at the time of filing a request for a trial against an examiner's decision of refusal (Article 53 is applied mutatis mutandis under Article 159)

・An amendment in response to the first notice of reasons for refusal is not subject to dismissal of amendment (Article 53)

・If it is found to be unlawful after the service of a certified copy of the examiner's decision to grant a patent
Only an amendment that adds new matter is considered a ground for invalidation.
Regarding other requirements, amendments are restricted to avoid re-examination from the perspective of realizing prompt granting of rights and ensuring fair treatment among applications, and since they are not recognized as having substantive defects sufficient to warrant invalidation, they do not constitute grounds for invalidation.

・Reason why an appeal cannot be filed against a decision to dismiss an amendment
Because the examination would be suspended during that time, and prompt granting of rights would not be achieved. However, in a trial against an examiner's decision of refusal, the propriety of the decision to dismiss the amendment can be contested along with the propriety of the examiner's decision of refusal.

・Reasons for abolishing the system for new applications based on a decision to dismiss an amendment
(1) By using the priority system, the intended purpose can be achieved safely and reliably for amendments that risk changing the gist of the invention.
(2) A new patent application filed after an amendment to the original application has been dismissed after the publication of the application is highly likely to be refused due to the published gazette, so the system for new applications has almost lost its significance.

・Among amendments in response to the final notice of reasons for refusal, amendments subject to dismissal
(1) Amendment adding new matter (violation of Article 17-2(3))
(2) Amendment changing the special technical features of the invention (violation of Article 17-2(4))
(3) Amendment outside the scope of purpose (violation of Article 17-2(5))
(4) Amendment that does not satisfy the independent patentability requirements (violation of Article 17-2(6))

・Patent Act Article 53

(Dismissal of Amendment)
Article 53 (1) In the cases listed in Article 17-2(1)(i) or (iii) (in the case of (i), limited to cases where a notice under the provisions of Article 50-2 is given together with a notice of reasons for refusal), if an amendment made to the description, scope of claims, or drawings attached to the application is found to be in violation of the provisions of Article 17-2(3) to (6) before the service of a certified copy of the examiner's decision to grant a patent, the examiner shall dismiss the amendment by a decision.
2 The decision to dismiss under the preceding paragraph shall be made in writing and shall state the reasons therefor.
3 No appeal may be filed against a decision to dismiss under paragraph (1). However, this shall not apply to a trial in the case where a request for a trial against an examiner's decision of refusal has been filed.