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PATENT-Advise for Amendment before a Request for Examination
The Japan Patent Office accepts and admits any voluntary amendments (preliminary amendments) at any time before a notice of a first office action as long as the amendments do not add new matters. On the other hand, after a first office action (first OA) has been issued, amendment is allowed (i) only at the time to response to an office action (ii) as long as it satisfies the requirement of Unity of Invention.
More details of determination of Unity of Invention and scope of examination in the Japan Patent Office is as follows. In the examination process, at first, an examiner determines a First Invention claimed in the earliest claim (the invention first mentioned in the claims), which has a special technical feature that is not described in the prior arts (“the First Invention”). Each of subject matters claimed in later claims than the claim of the First Invention will be determined whether to satisfy the requirement of Unity of Invention or not by referring the scope of the First Invention. The inventions within the scope of the First Invention will be determined to fulfill the requirement of Unity of Invention. The claim of the First Invention, all claims to be determined to fulfill the requirement of Unity of Invention with the First Invention, and (if the First Invention is not described in claim 1) claims prior to the claim of the First Invention, will be examined for patentability in the present application.
In the case that there are claims which are not examined because of lack of the Unity of the Invention, it will be necessary to file a divisional application for those non-examined inventions to be examined. Also, after the first office action, an amendment can be allowed as long as it fulfill the requirement of Unity of Invention, i.e. in the scope of the First Invention.
After filing the Request for Examination, the examiner starts examination accordingly and will notice an office action in due course. Therefore, it is suggested to confirm whether the claimed inventions and subject matters in each claim are arranged in the order of importance and whether the subject matter which the applicant wishes to obtain patent right is described first in the claims at the time of filing the Request for Examination. If you consider it is necessary to make an amendment to the present application, we recommend you to file the amendments at this stage.