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Home > Public Comments Invitation > Previous Comments > Invitation for Public Comments on Draft Revision of Examination Guidelines for "Amendment of Description, Claims and Drawings"

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Invitation for Public Comments on Draft Revision of Examination Guidelines for "Amendment of Description, Claims and Drawings"

March 17, 2010
Examination Standards Office
Japan Patent Office

The Grand Panel decision of Intellectual Property High Court, Heisei 18 (Gyo-Ke), No.10563 given on May 30, 2008( External link ) (Intellectual Property High Court HP), indicated the general definition about the acceptable scope of an amendment, and thereafter the definition has been consistently quoted in the subsequent decisions of Intellectual Property High Court.

In the 4th meeting of the Committee on Examination Standards, Industrial Structure Council held in January 28 this year, in light of the Grand Panel decision and subsequent decisions, it was discussed whether the present Examination Guidelines for "Amendment of Description, Claims and Drawings (New Matter)" should be revised or not. Consequently, the Committee on Examination Standards consented to revise Examination Guidelines from the viewpoint of that “Examination Guidelines shall be consistent with the Grand Panel decision, without altering the examination practice based on the present Examination Guidelines”, and provided the outline of the revision.

Here, along this outline, the Draft Revision of Examination Guidelines is established. We invite interested parties to submit written comments on Drafts Revision of the Examination Guidelines.

Way of submitting written comments

1. Subject on which comments are invited

Revised parts of examination guidelines (draft)

2. Material

Revised parts of examination guidelines (draft) (PDF:154KB)

The material is available from the link above. Please note that Japan Patent Office (JPO) is unable to respond to requests for material to be sent by mail, e-mail or fax.

3. Due date

Written comments must be received on or before Friday, April 16, 2010.

4.Submission of comments

Comments should be submitted to:

<E-mail>

pa2a10@jpo.go.jp

The subject should be "written comment on Draft Revision of Examination Guidelines"

<Facsimile>

+81-3-3597-7755

The subject should be "written comment on Draft Revision of Examination Guidelines"

<Postal mail>

Examination Standards Office, Administrative Affairs Div., First Patent Examination Depart., Japan Patent Office, 3-4-3 Kasumigaseki, Chiyoda-ku Tokyo 100-8915, Japan The subject should be "written comment on Draft Revision of Examination Guidelines"

* The following information must be provided: (i) your name, (ii) contact information (telephone number, facsimile number, e-mail address), (iii) occupation, and (iv) place of employment. Please note that your comments cannot be accepted through telephone.

5.Notes

  • Comments must be written in English or Japanese.
  • Format type of the written comment is not restricted.
  • Please note that JPO will not send replies to each of the comments.
  • Please note that all descriptions except your name, address, telephone / facsimile number and e-mail address may be released to the public. However, if there are descriptions which are information concerning an individual capable of identifying the individual, or which are judged to have a fear of harming the properties etc. of the individuals / legal persons etc., the concerned descriptions will be concealed prior to the release of the comment to the public.
  • The individual information such as the name, the contact address etc. contained in the written comment will be appropriately managed and will be utilized only in the work related to the present invitation of the written comment, for example, in the contact with one who submitted the comments in case that there are uncertainties.
  • This English document is unofficial translations. Only the original Japanese text of "Examination Guidelines for Patent and Utility-model" has effect, and this translation is to be used solely as reference material to aid in the understanding of the examination guidelines.

Outline of the revision

The outline is stated below, which the Committee on Examination Standards provided to revise Examination Guidelines from the viewpoint of that “Examination Guidelines shall be consistent with the Grand Panel decision, without altering the examination practice based on the present Examination Guidelines”, and provided the outline of the revision.

(Refer to the Document 5 of the 4th meeting, “Revision of the Examination Guidelines of New Matter”)

Outline to revise the Examination Guidelines of “New Matter”

  1. Giving the general definition
    It is given as the general definition that “”matters described in the description, etc.” mean technical matters that a person skilled in the art can understand, taking into account all statements in the description, etc. and therefore an amendment is deemed to be made within the scope of matters described in the original description, etc., if it does not introduce any new technical matter.”
  2. Arranging the cases of “amendments which do not introduce any new technical matter”
    In light of the Grand Panel decision which indicated that the amendment, if the amended matters are “described or inherently presented in the original description, etc.” shall not introduce any new technical matter unless there are special circumstances, the amendment with the matters “described or inherently presented in the original description, etc.” is handled to be acceptable because “it does not introduce any new technical matter.”
    The cases in which “the amendments are acceptable” are handled to be acceptable because “they do not introduce any new technical matter.”
    The cases in which “the amendments are not acceptable” are handled to be unacceptable because “they introduce new technical matter.”
  3. Arranging the cases of amendments to make “Disclaimer”
    The term “exceptionally” is deleted. Similarly to “b.” above, the amendment, which is “deemed to be acceptable” according to “4.2(4) Disclaimer” in the present Examination Guidelines, is handled to be acceptable because “it does not introduce any new technical matter.”
  4. Handling the amendments inapplicable to the cases described in the Examination Guidelines.
    The measure in judging the cases of amendments, other than the cases described in the present Examination Guidelines, based on the general definition in “a.” above, is given to the revised Examination Guidelines.

This Draft Revision of Examination Guidelines additionally contains some modifications of expression on the related description.

[Last updated 17 March, 2010]

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