Patent Act Article 50-2: Notification of Reasons for Refusal Identical to Those Already Notified
1. Explanation of the Provision
● Purpose (Shortened)
Conventionally, there were cases of abuse of the divisional application system, such as repeatedly filing divisional applications for the same invention (i) solely for the purpose of delaying the timing of patenting, or (ii) in the hope that a different examiner would make a different judgment. Therefore, the provision of Article 50-2 was established to encourage applicants to carefully examine the notification of reasons for refusal and to deter unnecessary divisional applications.
● Purpose (Full)
Prior to the partial amendment in 2006, it was possible to file a divisional application again with the same content for an invention for which reasons for refusal had already been notified during the examination of the original patent application, and there was no mechanism to encourage patent applicants to thoroughly examine the reasons for refusal notified during the examination of the original patent application. Therefore, it was pointed out that the divisional application system was being abused by repeatedly filing divisional applications for the same invention without sufficiently examining the content of the notification of reasons for refusal or the descriptions in the specification, etc., solely for the purpose of delaying the timing of patenting, or in the hope that a different examiner would make a different judgment. In addition, it was pointed out that there was a risk that such abuse of the divisional application system would be encouraged by the relaxation of the time restrictions on divisional applications due to the partial amendment in 2006. Therefore, Article 50-2 of the Act was established as a mechanism to deter the abuse of the divisional application system and to encourage applicants to thoroughly examine the notified reasons for refusal.
2. Notification under Article 50-2 of the Patent Act when reasons for refusal have been resolved
Article 50-2 of the Patent Act stipulates that when notifying reasons for refusal that are identical to those notified in other patent applications, such as family applications, a notification to that effect must be provided.
Regarding this notification under Article 50-2 of the Patent Act, according to the Patent and Utility Model Examination Handbook 6110,
in cases where the reasons for refusal were resolved because an argument that the reasons for refusal were inappropriate was made in a written opinion, etc., in another patent application,
it appears that no notification is given.
In the first place, the purpose of Article 50-2 of the Patent Act is considered to be the efficiency of patent application examination. For this reason, there is no need to provide a notification under Article 50-2 of the Patent Act for the content of a notification of reasons for refusal that seems inappropriate.
・ Patent and Utility Model Examination Handbook 6110: Handling when reasons for refusal notified in other applications are inappropriate
In view of the purpose of Article 50-2, only reasons for refusal with appropriate content among those notified in other patent applications are subject to the notification under Article 50-2. Therefore, reasons for refusal that were judged to be inappropriate in the examination of other patent applications are not subject to the notification under Article 50-2. Even if an examiner notifies such reasons for refusal in the examination of the present application, the examiner shall not provide the notification under Article 50-2. Reasons for refusal judged to be inappropriate in the examination of other patent applications refer to, for example, cases where reasons for refusal were notified in the examination of other patent applications, but those reasons for refusal were resolved because an argument that the reasons for refusal were inappropriate was made in a written opinion, etc.
● Reference Information
・Patent and Utility Model Examination Handbook 6110
・ Patent Act Article 50-2
(Notification of Reasons for Refusal Identical to Those Already Notified) Article 50-2: When an examiner intends to notify reasons for refusal for a patent application pursuant to the provisions of the preceding Article, if the said reasons for refusal are identical to the reasons for refusal pertaining to a notification under the preceding Article (including cases where applied mutatis mutandis pursuant to Article 159, paragraph (2) (including cases where applied mutatis mutandis pursuant to Article 174, paragraph (2)) and Article 163, paragraph (2)) (excluding those for which the applicant of the patent application was not in a position to know the content before the request for examination of the patent application) regarding another patent application (limited to those deemed to have been filed at the same time as the said patent application due to the application of the provisions of Article 44, paragraph (2) to at least one of the said patent application and the said other patent application), the examiner must also notify the applicant to that effect.