PATENT LAW FIRM (JP) - JAPANESE PATENT & TRADEMARK ATTORNEYS - BENRISHI

If you amend claims during the response period for the Notification of Reasons for Refusal, the invention before the amendment and the amended invention must have the same or the corresponding particular technical feature.
The particular technical feature is meant to the technical feature which shows the contribution of the invention to the prior art. For example, technical features written in documents cited in the Notification of Reasons for Refusal aren't considered as particular technical features. Furthermore, it's substantially considered whether or not particular technical features are identical or corresponding to each other. And, differences only in expression aren't considered.
In addition, if the technical feature is the addition, the deletion or the conversion of a well-known or conventional technique and it doesn't have the new effect, or if the technical feature is only the design change to one prior art, it won't be considered as the particular technical feature which shows contribution to the prior art.
If you hope to obtain the patent for the invention with different technical features from the examined invention after you received the first Notification of Reasons for Refusal, you need to submit a divisional application.

2. Invention written in the description of the prior unpublished patent application

If you submitted the later patent application which claimed the identical invention to the one written in the description of the prior unpublished application, you can't get the patent for the invention. However, if inventors or applicants of the prior and the later application are identical, this article won't be applicable.
Please note that in the case that you submitted the later patent application which claimed the identical invention to the one claimed in the prior patent application, even if inventors or applicants of the prior patent application and the later application are identical, you can't get the patent for the invention.

[A] If the patent application with the claim determined to be patentable in the first country meets following requirements (1) to (4), you can apply for the accelerated examination by using the Patent Prosecution Highway.
(1) The patent application in the second country has the particular relationship with the patent application in the first country. For example, the patent application in the second country claiming the priority right based on the patent application in the first country.
(2) The patent application in the first country has one or more claims determined to be patentable.
(3) All claims of the patent application in the second country fully correspond to any of claims determined to be patentable in the patent application in the first country.
(4) The examination of the patent application in the second country hasn't been started (In some countries, you can apply for the accelerated examination by PPH even if the examination of the patent application has started).

[B] In order to apply for the accelerated examination by PPH, following documents are needed. In almost all countries, you can omit following items (2) to (4).
(1) Correspondence table of claims
(2) Copy and translation of claims
(3) Copy and translation of Office Action
(4) Cited documents

Please note that we recommend using the accelerated examination specific to Japan Patent Office because requirements of it are easier than PPH (See FAQ).

The utility model system is characterized by following items (1) to (6).

(1) Only the shape and the structure of the article and the combination of the articles can be the subject of the registration. So, you can't register the invention of a process or the invention of the chemical structure of a material itself.
(2) Non-substantive examination system is adopted. Therefore, only the formality examination will be performed and inventions will be registered without examination regarding novelty, inventive step and so on.
(3) Duration of the right is 10 years.
(4) You can request the Report of Utility Model Technical Opinion of Japan Patent Office as the objective information to determine the validity of the right. The Report of the Utility Model Technical Opinion shows Examiner's opinions including a novelty and an inventive step based on the invention published in writing and so on.
(5) You can't enforce your right unless you have given warning with the Report of the Utility Model Technical Opinion.
(6) Even after utility model was registered, you can change the registered Utility Model to the patent application within 3 years after the filing date.