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Home > Public Comments Invitation > Previous Comments > Draft Revision of Examination Guidelines for Novelty and Inventive Step

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Draft Revision of Examination Guidelines for Novelty and Inventive Step

April, 2006
Examination Standards Office
Japan Patent Office

The basic concept concerning a concrete method for finding a claimed invention in which it has a claim statement defining a product by its use is described in the current examination guidelines Part II, Chapter 2, 1.5.2(2).
These days, however, in accordance with the diversification of the manner of expressing an invention and the development of technologies, it has been pointed out that the above concrete method is not necessarily clear, as described in the Research Report published by the Institute of Intellectual Property on FY2004 and FY2005 mentioning that the examination guidelines regarding a use invention should be made clear.
Taking these situations into consideration, in order to make clear the examination guidelines for novelty and inventive step regarding an invention having claim statements defining a product by its use as well as an invention so-called a use invention, "Draft Revision of Examination Guidelines for Novelty and Inventive Step" was prepared.
This Draft Revision of Examination Guidelines consists of the Draft Revision of Examination Guidelines of 1.5.2 "Method of Construing Particular Types of Claim Statements" in the "Patent and utility model examination standard, Part II, Chapter 2 Novelty and Inventive Step ".

The gist of the draft is as follows.

  • (a)In finding a claimed invention having a statement of a limitation by use, it is made clear that there are two cases as follows;
    • A case where a limitation by use should be construed in such a manner that it means a structure etc. particularly suitable for the use
    • A case where an invention with a limitation by use should be construed as so-called "a use invention".
  • (b)It is made clear that, in general, "a use invention" is construed as an invention based on a discovery of an unknown attribute of a product and suitability for a new use of the product due to the attribute.
  • (c)Expressions pointed out to be ambiguous such as "a product that is to be used solely for the use purpose" are made clear, and it is also made clear that they are examined by the way of the above-mentioned method.
  • (d)Examples of claimed inventions with a limitation by use are enriched.

We invite interested parties to submit written comments on the draft of this revised Examination Guidelines as following.

Draft Revision of Examination Guidelines for Novelty and Inventive Step (PDF:33KB)

1.DATES

Comments must be received on or before May 8th 2006

2.ADDRESSES

<E-mail>

PA2A12@jpo.go.jp

<facsimile>

+81-3-3597-7755

<mail>

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

  • Comments should be sent via E-mail with the subject of "COMMENT ON DRAFT EXAMINATION GUIDELINE (NOVELTY)."
  • Comments should be sent via facsimile or mail with the address of "Examination Standards Office, Japan Patent Office."
    Please also include your name and contact address.

3.SUPPLEMENTARY INFORMATION

  • Comments shall be submitted by mail, E-mail, or facsimile.
  • Received comments may be open to the public, with the exception of any personal information (your address, telephone number, etc.).

[Last updated 7 April 2006]

Contact Us

Examination Standards Office, Japan Patent Office
3-4-3 Kasumigaseki, Chiyoda-ku Tokyo 100-8915, Japan

FAX : +81-3-3597-7755

E-mail : PA2A12@jpo.go.jp

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