• HOME
  • Announcements
  • Obtaining IP Rights
  • JPO Activities
  • Statistics ⁄ References
  • About JPO
  • FAQs

Home > Public Comments Invitation > Previous Comments > Invitation for Public Comments on the Draft Revision of Examination Guidelines for the Requirements for Description and Claims

Main content starts here.

Invitation for Public Comments on the Draft Revision of Examination Guidelines for the Requirements for Description and Claims

June 22, 2011
Japan Patent Office
Administrative Affairs Division
Examination Standards Office

After the investigation of revising Examination Guidelines for the requirements for description and claims, from its fifth meeting on September 10, 2010, to its seventh meeting on June 16, 2011, the Committee on Examination Standards of the Industrial Structure Council agreed upon the outline of the revisions at its seventh meeting.

In accordance with the outline of the revisions, a draft revision of Examination Guidelines for the requirements for description and claims is prepared. We invite public comment as outlined below.

1. Subjects on which comments are invited

2. Due date

Written comments must be received on or before Thursday, July 21, 2011.

3. Submission of comments

Please send us your comments with your name*, contact information, and occupation, and send us your comments via one of the following methods:

* If you are a corporate body or institution, please give us the name of the body, department, and person in charge.

E-mail

pa2a10@jpo.go.jp

Please use "Written comments on the draft revision of Examination Guidelines" as the subject line.

Facsimile

+81-3-3597-7755

To the attention of: Examination Standards Office, Administrative Affairs Div., First Patent Examination Depart.

Please use "Written comments on the draft revision of Examination Guidelines" as the subject line.

Postal mail

To the attention of: Examination Standards Office, Administrative Affairs Div., First Patent Examination Depart., Japan Patent Office

3-4-3 Kasumigaseki, Chiyoda-ku Tokyo 100-8915, Japan

Please use "Written comments on the draft revision of Examination Guidelines" as the subject line.

4.Notes

  • JPO will not be able to reply to each of the comments individually.
  • All descriptions except your name and contact information may be released to the public. However, if a comment contains personal information that could make it possible to identify an individual commenter, the concerned descriptions will be concealed prior to the release of the comment to the public.
  • The personal information included with your comments, such as your name, contact information etc., will be managed appropriately, and will only be used for administrative affairs related to the invitation for public comments, such to contact you in the event that we have any questions concerning your comments.

[Reference] The points of Revisions of Examination Guidelines for the Requirements for Description and Claims

1. Basic Policy in Revisions of Examination Guidelines

The revisions aim to:

  • Supplement and clarify the insufficient explanations, in order to prevent overly strict determinations and correct variations among the examiners' determinations.
  • Improve the consistency among the examination guidelines for each of the description requirements, as they have been revised at different times and therefore are inconsistent.

2. Summary Outline of the Revisions of Examination Guidelines

Article 36(6)(i)

Keep the existing determination method related to Article 36(6)(i) in place but supplement and clarify the explanation on the parts below:

  • Descriptions concerning the determination method;
  • Descriptions concerning the matters that the examiner should state in the notice of reasons for refusal; and
  • Descriptions concerning the applicant's response to the reasons for refusal (e.g. consideration of the certificates of experimental results).

Article 36(6)(ii)

Keep the basic rules in place but clarify them. Revise the explanations concerning the cases below in line with the basic rules, while giving consideration to the consistency with other requirements including that of Article 36(6)(i).

  • Where the technical meaning of a matter to define the invention cannot be understood;
  • Where a claim includes an expression defining an invention by a function or characteristics, etc.; and
  • Where a claim includes an expression defining a product by its manufacturing process.

Article 36(4)(i)

Supplement and clarify the explanations concerning the applicant's response to the reasons for refusal (e.g. consideration of the certificates of experimental results).

Case Examples

Organize the existing case examples and improve the contents.

[Last updated 22 June, 2011]

Contact Us

Examination Standards Office,

Administrative Affairs Division,

Japan Patent Office

E-mail:pa2a10@jpo.go.jp 

download Adobe Reader

Some of the publications on this site are in PDF format. To view them, you will need to have Adobe Acrobat Reader. Please click the graphic link to download Acrobat Reader.