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Home > Public Comments Invitation > Feedback > Revision of Examination Guidelines for "Requirements for Description and Claims"

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Revision of Examination Guidelines for "Requirements for Description and Claims"

October 7, 2011
Japan Patent Office
Administrative Affairs Division
Examination Standards Office

After the investigation of revising Examination Guidelines for "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 "Requirements for Description and Claims" was prepared, and the Japan Patent Office (JPO) invited the public to submit comments on it from June 22, 2011 to July 21, 2011.

Now, the JPO has finalized the revision of Examination Guidelines for "Requirements for Description and Claims"

Revised Examination Guidelines are applied to the applications that are examined on and after October 1, 2011.

[Reference] The Basic Policy and Points of Revisions of Examination Guidelines for "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. The points 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:

(1) Describe the following matters relating to the determination method related to Article 36(6)(i).

  • "The problem to be solved by the invention" is in principle identified from the statement of the detailed explanation of the invention.;
  • When identifying the "scope stated in the detailed explanation of the invention in such a way that a person skilled in the art could recognize that a problem to be solved by the invention would be actually solved," the common general knowledge as of the filing should be taken into account in addition to all of the statements of the description and drawings.;
  • Type (3) violation (The content disclosed in the detailed explanation of the invention can neither be expanded nor generalized to the scope of the claimed invention even in light of the common general knowledge as of the filing.) should not be applied independently of the problem to be solved by the invention.;
  • Comparing the technical field where it is difficult to understand the relationships between the function or characteristics, etc. of a product and the structure of the product (e.g. chemical compounds), and the technical field where it is relatively easy to understand such relationships (e.g. machine field or electric field), the maximum range expansion or generalization based on the specific examples tends to be wider in the latter technical field. ; and
  • The judgment should be carefully done so as not to be too restrictive on the scope of claims by the specific examples stated in the detailed explanation of the invention.

(2) Describe the following matters relating to the content that examiners should explain in the notice of reasons for refusal.

  • (a) Type (3) violation (The content disclosed in the detailed explanation of the invention can neither be expanded nor generalized to the scope of the claimed invention even in light of the common general knowledge as of the filing.)
    The examiner shall explain the reason why he/she applies this type of violation, while showing the grounds for such determination (e.g. the part of the statement of the detailed explanation of the invention and the content of the common general knowledge as of the filing that he/she has taken into account when making the determination).
  • (b) Type (4) violation (As a solution for the problem to be solved by the invention, which is stated in the detailed explanation of the invention, is not reflected in the claim, a patent is being claimed beyond the scope stated in the detailed explanation of the invention.)
    The examiner shall explain the reason why he/she applies this type of violation, while showing the problem to be solved by the invention and its solution as he/she identifies them.

(3) Describe the following matters relating to the applicant's response to the notice of reasons for refusal (including submission of the certificate of experimental results).

  • The applicant may, in a written opinion, point out the common general knowledge other than that taken into account by the examiner when making determination, and argue that in light of such common general knowledge, the statement of the claims is not violating Article 36(6)(i). ;
  • The applicant may also submit a certificate of experimental results to support such argument presented in the written opinion. ; and
  • If, due to a deficiency of the matters stated in the detailed explanation of the invention, the content disclosed in the detailed explanation of the invention can neither be expanded nor generalized to the scope of the claimed invention even in light of the common general knowledge as of the filing, the reasons for refusal cannot be overcome even when the applicant submits a certificate of experimental results after the filing to make up for such deficiency, thereby arguing that the disclosed content can be expanded or generalized to the scope of the claimed invention.

Article 36(6)(ii)

Keep the basic rules in place but clarify them. Revise the explanations concerning the cases of (2) below in line with the basic rules, while giving consideration to the consistency with other requirements including that of Article 36(6)(i).

(1) Clarify what "the scope of the claimed invention is clear" means by supplementing the explanation as follows.

"The scope of the claimed invention is clear" means that "the invention is stated in such a way that it is possible to understand whether a specific product or process falls within the scope of the claimed invention."

(2) Revise the explanations concerning the following cases.

(a) Where the technical meaning of a matter to define the invention cannot be understood

  • Define the "technical meaning” by describing that the "technical meaning" of a matter to define the invention refers to the function or role that such matter plays in the claimed invention. ;
  • Revise the title of typical example of violation to "In addition to the incomprehensibility of the technical meaning of a matter to define the invention, it is evident that the matters to define the invention are deficient in light of the common general knowledge as of the filing." ; and
  • Add a new typical example of violation, "The claimed invention is unclear because the meaning of a term used in the claim is incomprehensible even by taking into account the statements of the description and drawings, as well as the common general knowledge as of the filing.", so as to cover the parts which is not included "technical meaning" defined as above.

(b) 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.

  • Move these cases to a new section which is independent from the "Typical Examples of Violation of Article 36(6)(ii)", and in this section, explain the points that require special note and show the typical examples where such claim is regarded as violating Article 36(6)(ii).
  • Describe that these types of claim shall also be examined in accordance with the basic rules for the examination on the requirement of Article 36(6)(ii).

Article 36(4)(i)

Describe the contents having similar sense to (2)(a) and (3) of Article 36(6)(i), which are related to the content that examiners should explain in the notice of reasons for refusal and the applicant's response to the notice of reasons for refusal (including submission of the certificate of experimental results).

Case Examples

  • Merge the similar examples, which were described separately, into one example, and describe all of the reasons for refusal and the applicant's response to the notice of reasons for refusal.
  • Enhance the contents of the examples by adding the examples which satisfy the requirements, etc.

[Last updated 7 October 2011]

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