A Final Notice of Reasons for Refusal is a different notice from a Final Office Action in the United States and can be said to correspond to a Non-Final Office Action. A Final Office Action in the United States can be said to correspond to a Decision of Refusal in Japan.

1. What is a Final Notice of Reasons for Refusal?

The “final notice of reasons for refusal” is a notice of reasons for refusal notifying only reasons for refusal necessitated by amendments made in response to a “non-final notice of reasons for refusal” in principle.

Whether a second or later notice of reasons for refusal shall be the “non-final notice of reasons for refusal” or not should be substantively determined, not by the formal number of notifications.

In principle, the examiner should issue a notice of reasons for refusal at most two times (each of the “non-final notice of reasons for refusal” and the “final notice of reasons for refusal” once) and carry out examination, with effectiveness of the whole procedure being considered.

For details, please refer to Section 3 Notice of Reasons for Refusal (PDF:158KB) of Part I Outline of Examination of the Examination Guidelines for Patent and Utility Model in Japan.

Therefore, even if a notice of reasons for refusal is issued twice or more, it may not be the final notice of reasons for refusal.

If the divisional application has the same reasons for refusal as the parent application, the first Notice of reasons for refusal will be the ” Final Notice of Reasons for Refusal.”

2. What to do if you receive a Final Notice of Reasons for Refusal

(1) Amendments are limited

If you receive a Final Notice of Reasons for Refusal, in addition to the requirements (A) and (B) below, amendments must satisfy one of the following conditions (C)-(F):

(A) The amendment must not add new matter

(B) The amendment must not change the special technical features of the invention

(C) Deletion of claims

(D) Restriction of the claim by limitation

(E) Correction of errors

(F) Clarification of unclear statements

(2) A written opinion may be submitted.

(3) A divisional application may be filed.

(4) An appeal against a decision of refusal may not be requested.

An appeal against a decision of refusal may be requested after a decision of refusal has been received. At the final notice of refusal stage, an appeal may not be requested.

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