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Home > Public Comments Invitation > Feedback > Revision of Examination Guidelines for "Amendment of Description, Claims and Drawings (New Matter)"

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Revision of Examination Guidelines for "Amendment of Description, Claims and Drawings (New Matter)"

June 1, 2010
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.

In line with the outline, the Draft Revision of Examination Guidelines of "Amendment of Description, Claims and Drawings (New Matter)" was published in March 2010, and we invited interested parties to submit written comments. Considering the submitted public comments, we revised the Examination Guidelines of "Amendment of Description, Claims and Drawings (New Matter)".

Note that the examination practice based on the present Examination Guidelines is not altered by this revision, as concluded by the Committee on Examination Standards.

These revised guidelines will be applied to examination on and after June 1, 2010.

Major modification from the Draft Revision of Examination Guidelines published in March 2010

Part III Section I New Matter 4.2(1)

The description of 4.2(1) is modified to clarify which of 4.2(1)(a)-(c) corresponds to the Example 3 and Example 4 in 4.2(1).

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”

a. 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.”

b. 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.”

c. 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.”

d. 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.

Revised Examination Guidelines additionally contains some modifications of expression on the related description.

[Last updated 1 June 2010]

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