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Q110. Amendment Changing Special Technical Feature

Q110. Amendment Changing Special Technical Feature
 Explain the new rule regarding a prohibited amendment which changes the special technical feature of invention.

A110. Since the revised patent law in 2006 has come into force, an amendment which changes the special technical features of invention is prohibited once after receipt of an OA (The Patent Law Section 17-2(4)). The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions makes over the prior art.
 Criteria of restriction of amendment depend on cases.
 (1) STF found in claim 1
 Amended claims must contain the STF included in the original claim 1.
 (2) Claim 1 lacks STF and STF found in subsequent claim
 Amended claims must contain all the features of the subsequent claim which have included the STF.
 (3) Claim 1 lacks STF and no STF found in the claims
 Amended claims must contain all the features of the last claim in which the Examiner have examined its patentability.
 This means lack of STF (= lack of novelty) in the first claim will bring more strict restriction on later filed amendment.
 For more detail or examples, see the Examination Guidelines, Part II (http://www.jpo.go.jp/cgi/linke.cgi?url=/tetuzuki_e/t_tokkyo_e/1312-002_e.htm).