(March 31, 1999)
Preface
The Patent Opposition System allows any party desiring to do so the opportunity to file an opposition to a granted patent after the patent right is granted. The goal of the Patent Opposition System is to increase public confidence in the patent system. When an opposition is filed, the Patent Office re-examines the appropriateness of its initial decision to grant the patent and remedies any flaws that are discovered.
While defective patent rights should be corrected rapidly, any defect in the description in the grounds for opposition or evidence in written opposition to a patent make it difficult for an examiner, patent right holder, etc. to understand the intention of the party who filed the opposition. This could lead to complication in examination of the opposition.
The patent right holder will be informed of the reason for cancellation, if such a decision is arrived at by the Chief Appeals Examiner, and given the opportunity to submit written opinion or demand for correction. However, unlike the procedure for amendment of the patent specification in the examination stage, for the patent right holder to file a demand for correction the same form as the written demand for trial for correction or invalidation is required.
The Appeals Department of the Japan Patent Office (JPO) has prepared a guideline for preparation of grounds for opposition is cases of written opposition to a patent as well as for demands for correction. Please refer to these materials when filing an opposition to a patent or a demand for correction.
March 31, 1999 Clerical Division, Appeals Department, JPO
(Reference Materials)
For a comprehensive view of the Patent Opposition System, please refer to:
- "Appeals/ Trials Examination Manual" edited by the Appeals Department, JPO
- "Practitioners Guidebook for filing Objections to Patents/Trademarks" November, 1998, edited by the Appeals Department, JPO, published by the Economy, Trade and Industry Research Institute
- "Guidebook for filing Demands for Appeals/Trials, 6th edition" December, 1998, edited by the Appeals Examination Policy Planning Office, Appeals Department, JPO, published by the Japan Institute of Invention and Innovation
Please address inquiries regarding the above to:Appeals Examination Policy Planning Office, Appeals Department, JPO (81-3-3581-1101, ext. 5851, e-mail:PA6B00@jpo.go.jp)
Table of Contents
1. Guidelines for Writing Grounds for Opposition in Written Oppositions to Patents
(1) Grounds for Opposition
(2) Itemization and Abstraction of Grounds for Opposition
a. Itemization
b. Abstraction
(3) Key Points in Writing of Abstracts of Grounds for Opposition
a. Items
b. Key points for Writing each Item
(4) Points worthy of Attention
a. Evidence
b. Contents of Opposition
(5) Examples
2. Date of Filing as Grounds for Opposition
3. Demanding Correction of Patents
(1) Post-grant Correction of Patent Specifications and Drawings
a. Correction of Patent Applications in Foreign Languages
b. Correction Procedures
(2) Written Example of Grounds for Demand for Correction
(Reference) Examples of item to be corrected
(3) Trial Examination of Correction
a. Notice of Reasons for Refusal of Correction
b. Handling of Multiple Requests for Correction
(4) Decisions on Corrections
a. Restrictions of Claims
b. Correction of Errors
c. Correction of Mistaken Translations
d. Clarification of Unclear Descriptions
e. Determination of Substantial Modification or Enlargement of Claims
Chapter 1. Guidelines for Writing Grounds for Opposition in Written Oppositions to Patents
(1) Grounds for Opposition
Japanese Patent Law Article115(1) stipulates "grounds of the opposition and an indication of the supporting evidence" as items to be described in written oppositions to patents.
The opposition filed by the demandant must describe the reason why the patented invention against which opposition was filed falls under any of the clauses of Japanese Patent Law Article 113.
(2) Itemization and Abstraction of Grounds for Opposition
a. Itemization
The method of description of the grounds for opposition is the prerogative of the demandant. Handling is the same as it was in the system of pre-grant opposition.
However, in the system of pre-grant opposition, ordering and clarification of the grounds for opposition by itemization of content were required for easy, correct understanding.
(Please refer to the "Guidelines for Writing the Grounds for Filing an Opposition in the Written Opposition to a Patent" December, 1990, JPO)
Even for post-grant oppositions it is important for the demandant, the patent right holder and the JPO that the grounds for opposition be written in a clear and orderly manner. For this purpose grounds for opposition shall be written in an itemized fashion.
b. Abstraction
Which claim the opposition was filed against and which legal provision, legal theory and evidence it is based upon must be understood promptly and correctly.
The grounds for opposition shall be clarified by preparation of an "abstract of the grounds for opposition." This abstract shall clarify the reasons for opposition to the patent.
(3) Key Points in Writing of Abstracts of Grounds for Opposition
a. Items
Items in the grounds for opposition in principle shall be as follows.
1. Abstract of grounds for opposition
2. Procedural history
3. Grounds for opposition
4. Specific grounds (grounds for cancellation of the patent)
a. The patented invention in question
b. Evidence
c. Comparison of the patented invention in question and the invention described in the evidence
(d. Grounds of defective description)
(e. Grounds of illegal amendment)
5. Conclusion
(note) The above d. and e. shall be added only if such grounds exist.
b. Key points for Writing Each Item (for examples please refer to (5) Examples)
1. Abstract of grounds for opposition
Grounds for opposition shall be described. For instance, the patented invention in question and the invention described in the evidence may be compared in table form. Relevant legal provisions shall be indicated on top of the table in such a manner as to correspond to related claims. In principle these items shall be prepared for each claim and ground (provision).
2. Procedural history
The procedural history from filing of the application shall be described (date of filing, date of amendment, date of registration, etc.)
3. Grounds for opposition
Using evidence, describe the claims related to the objective of filing the opposition and the legal grounds for cancellation of the patent (Which clause of Patent Law Article 113 clauses 1 - 5 it falls under)
4. Specific grounds (grounds for cancellation of the patent)
The grounds for cancellation of the patent shall be described in the following order.
a. The patented invention in question
The patented invention in question shall be described based on the claim of the relevant patent application.
b. Evidence
Describe the invention described in the evidence using laid open information and correlate the information with that of the patented invention in question.
c. Comparison of the patented invention in question and the invention described in the evidence
Based on the above a. and b., compare the patented invention in question and the invention described in the evidence and clarify similar and divergent points. Also describe the grounds under which this patented invention falls under the scope of the invention described in the evidence or the grounds under which the patented invention in question was easy to invent based on the invention described in the evidence.
d. Grounds of defective description (only if such grounds exist)
Clearly specify the location and content of the defective description as well as the grounds of such defect.
e. Grounds of illegal amendment (only if such grounds exist)
Items added by amendment shall be clearly specified and the grounds regarding why the amendment is illegal shall be briefly and clearly described by comparison with the original specification.
5. Conclusion
Describe the grounds for cancellation of the patented invention in question as a conclusion giving grounds to filing of the opposition.
(4) Points worthy of Attention
a. Evidence
1. If the evidence presented is a copy of the original, in principle the relevant section shall be indicated by a box placed around it or by underlining.
2. If the evidence consists of a document written in a foreign language, translation should be attached to the relevant part (Patent Law Enforcement Ordinance Article 2)
3. If the evidence consists of a document showing peripheral art, description to such effect shall be made in "description of evidence."
4. Do not submit more evidence than necessary (In principle one item of evidence is sufficient for a set of identical documents).
5. If the evidence consists of a witness or witnesses, designate the witness or witnesses as well as the items of interrogation.
6. If the evidence is material evidence, the items shall be indicated. If the evidence is non-portable, indicate its location.
7. Evidence may be supplemented by written amendment within the time period for filing of opposition. Grounds may not be supplemented after expiration of this time period.
b. Contents of Opposition
1. Clearly and demonstratively describe the grounds for opposition.
2. If there are multiple claims, unity of the claims shall be described shall be described to the greatest extent possible. Attention must be paid to avoiding inconsistency in descriptions (claim number, legal provisions, etc.) related to the claims of the opposition to the patent.
3. The number of items in the itemized section and in the abstract may be adjusted.
4. In the description of the patented invention in question and the invention described in the evidence, symbols used in the drawings shall be indicated by insertion in brackets to the greatest extent possible.
(Note 1) These guidelines shall be applied in the same manner to oppositions to applications for utility model registration filed before the relevant legal amendments of Heisei 5 (1993).
(Note 2) If no substantial grounds for opposition or evidence are described even after the deadline for filing an opposition to the patent has expired, the opposition to the patent shall be dismissed due to this defect (Patent Law Article 135 referred to in Article 120 sexies)
Reasons for dismissal of opposition to patent
a. Neither grounds nor evidence are described in the opposition.
b. Grounds, but no evidence, are described.
c. For evidence described, the grounds by which the patent relevant to the claims is challenged by the opposition based on such evidence are not understandable.
d. The grounds for opposition are contained in a lengthy document and are not understandable as to what part of the document is designated as evidence and what logical reasoning is used.
(5) Example
Written Opposition to the Patent
(DD day MM month Heisei YY)
Commissioner of the Japan Patent Office
1 The Patented Invention in Question
Patent No. OOOOOOOO
Claims:Claim 1, Claim 2, Claim 3
2 Demandant
Address:(zip code) Tokyo
Name:OOOO Co., Ltd
(Representative:OOOO)
3 Agent
Address:OOOOOO OOOOOO
Phone:03 - OOOO - OOOO
Facsimile: 03 - OOOO - OOOO
Name:OOO Patent Attorney OOOO (Seal)
4 Grounds for Opposition
(1) Abstract of the Grounds for Opposition
Patent Law Article 29(2) (Patent Law Article 113(2) )
Claim 1
The Patented Invention in Question
A. In the thermal printer ---, having the following features:
B. Cassette ribbon identification method (23) identifying asingle ribbon cassette (6) or multi-strike ribbon cassette (7)
C. Driving energy control method (5) controlling the drivingenergy of the thermal head (4)
D. When the single strike ribbon cassette (6) is installed, thedriving energy control method (5) receives electric signals from the above mentioned ribbon cassette identification method (23) so that it drives the aforementioned thermal head (4) by an amount of energy smaller than if the multi-strike ribbon cassette
(7) were set.
Effect
Uniformization of print deepness
Claim 2
E. The thermal printer described in claim 1, the characteristic ofwhich is the driving energy control method (5)
Evidence 1
Publication of unexamined patent application No. OOOO - OOOOOO
Line OO, Column OO, Page 3, Line OO, Column OO, Page 4
A. In the thermal printer ---,
B. Adjusts the driving energy to be provided to the thermal head (3)
by recognizing whether a single-strike ribbon cassette (12) or multi-strike ribbon cassette (15) is installed in the machine.
C. Control method (36)
D. Points
Effect
Uniformization of print deepness
Evidence 2
Publication of unexamined utility model No. OOOO - OOOOOO
Lines 4-26, Column OO, Page 4
A. Cassette identification method (16)
Evidence Kou 1
Lines 3-12, Column OO, Page 4
E. Driving energy control method of the thermal head (13) thatcontrols the driving current
Abstract of the Grounds
(Claim 1)
The patented invention in question and the invention described in Evidence 1 are different due to the following point. In the patented invention in question of claim 1, the cassette is identified whereas in the invention described in Evidence 1 the ribbon itself is identified. However, the point identifying the cassette itself is described in Evidence 2. It is easy for a person skilled in the art to apply what is described in Evidence 2 to what is described in Evidence 1.
(Claim 2)
Control of driving energy for the thermal head by control of the driving current
(2) Procedural history
Date of filing:DD day MM month Heisei YY (YYYY/MM/DD)
(Patent Application No. OOOO - OOOOOO)
Date of Amendment:DD day MM month Heisei YY (YYYY/MM/DD)
Date of Registration:DD day MM month Heisei YY (YYYY/MM/DD)
Date of Gazette Issuance:DD day MM month Heisei YY (YYYY/MM/DD)
(Gazette Patent No. OOOOOOO)
(3) Grounds for Opposition
Claims 1 and 2
Legal Provision:Patent Law Article 29(2) (Article 113(2))Evidence:Evidence 1, Evidence 2
(4) Specific Grounds (grounds for cancellation of the patent)
a. The Patented Invention in Question
It is considered that patented inventions related to Claims 1 and 2 fall under their respective Claims according to their respective specifications and drawings and the time of the decision to grant
Claim 1
A. Ribbon cartridge with a ribbon for printing (6)(7) and a driving means (3) for the thermal head in the thermal printer equipped with a thermal head (4) for printing
B. Cassette ribbon identification method (23) identifying whether a single-strike ribbon cassette (6) or multi-strike ribbon cassette (7) is installed
C. Driving energy control means (5) controlling driving energy for a thermal head (4)
D. When a single-strike ribbon cassette (6) is installed, the relevant driving energy control method (5) receives electronic signals from the above mentioned ribbon cassette identification method (23) so that it drives the aforementioned thermal head (4) by an amount of energy smaller than the multi-strike ribbon cassette (7).
Claim 2
E. The thermal printer described in claim 1, the characteristic ofwhich is the driving energy control method (5)
Regardless of whether a single-strike ribbon cassette or multi-strike ribbon cassette is used in the above manner, uniform printing deepness is achieved by both inventions.
b. Evidence
(i) Evidence 1 (Publication of unexamined patent application No. OOOO - OOOOOO)
Line 4, Left column, Page 3 Line 25, Left Column, Page 4, Chart 3
A composition corresponding to A,C,D and E, and point B' among the compositions of the inventions relevant to Claims 1 and 2 and a composition corresponding to E among the compositions relevant to Claim 2 are described in Evidence 2.
Namely, the aforementioned evidence is related to thermal printers. In this regard, there are the descriptions '..........' in lines 8 to 28 of the left column of the third page and '..........' in line 22 of the left column to line 5 of the right column on page 4. The compositions correspond to A,C and D and point B' instead of B in claim 1. Also, in line 12 to 25 of the right column on page 4, there is the description '..........' and a composition corresponding to E of the composition of an invention relevant to Claim 2.
Effect
Both of the inventions described in Evidence 1 have the effect of uniform printing deepness.
(ii) Evidence 2 (publication of unexamined utility model No. OOOO - OOOOOO
Lines 25 to 30, Column OO, Page 1
In evidence 2, a composition corresponding to B among those described in Claim 2Namely, in Lines 25 to 30, Column OO, Page 1, there is the description '..........'
c. Comparison of the Patented Invention in Question and the Evidence
Claim 1
Comparing the patented invention in question in Claim 1 and the invention described in Evidence 1, they are similar in that they control driving energy for heads by an identification signal determined by identifying whether a single-strike ribbon cassette or multi-strike ribbon cassette is installed and are divergent due to the fact that the patented invention in question in Claim 1 is ..... and the invention described in Evidence 1 is .....
However, the points c are described in Evidence 2. These points concern technology related to identification of the thermal head ribbon cassette of the same technical field as the patented invention in question and the invention described in Evidence 1.
Application of the composition of the above point of Claim 1 to that described in Evidence 1 could be easily conceived by a person possessing common knowledge.
The effect of the patented invention in question does not exceed that which can be easily conceived by a person skilled in the art from Evidence 1 and Evidence 2.
Claim 2
The points ..... described in Claim 2 are also described in Evidence 2. The patented invention in question relevant to Claim 2 also corresponds to that which may be obtained by application of the invention described in Evidence 2 to the invention described in Evidence 1. The fact that the points ..... could be easily conceived by a person skilled in the art are as explained in Claim 1.
(5) Conclusion
As mentioned above, the patented inventions in question in Claims 1 and 2 are inventions that a person skilled in the art under which the said invention falls could easily invent based on the inventions described in Evidence 1 and Evidence 2. The patented inventions in question are therefore not patentable due to Patent Law Article 29(2) and shall be cancelled under Patent Law Article 113(2).
5. Evidence
(1) Evidence 1:publication of unexamined patent application No. OOOO - OOOOOO
(2) Evidence 2:publication of unexamined utility model No. OOOO - OOOOOO
6. List of Attached and Submitted Documents
(1) Evidence Kou 1:1 copy of the original, 2 copies of counterparts
(2) Evidence Kou 2:1 copy of the original, 2 copies of counterparts
(3) Written opposition to the patent:2 copies of counterparts
(4) Power of attorney:1 copy
Chapter 2:Date of Filing as Grounds for Opposition
Date of Filing
Heisei 7 (1995) 7.1
Law of 1994
Heisei 6 (1994) 1.1 - Heisei 7 (1995) 6.30
Law of 1993
Heisei 2 (1990) 12.1 - Heisei 5 (1993) 12.31
Law of 1990
Showa 63 (1988) 1.1 - Heisei 2 (1990) 11.31
Law of 1987
Showa 62 (1987) 12.31
Law of 1985
(Patent Law Article 113(2))
Grounds for Opposition
1 (Article 113-1) Amendment concerning new matter (2 of Article17(3))
2 (Article 113-2)
Enjoyment of rights by aliens (Article 25)
Patent requirement (Article 29,2 of Article 29)
Non-patentability (Article 32) first-to-file (Article 39)
3 (Article 113-3) Treaty violation
4 (Article 113-4) Explanation requirement (Article 36 (4)(6) (clause 4 excl.)
5 (Article 113-5) Infringement of provision regarding new matter on original
foreign language patent applications
1(Article 113-1) Prohibition of addition of new matter (Article17(2))
2(Article113-2)
Enjoyment of rights by aliens (Article25)
Patent requirement (Article29,2 of Article29)
Non-patentability (Article32) First-to-file (Article39)
3(Article113-3) Convention violation
4(Article113-4) Explanation requirement (Article36 (4)(5) clause 3 excl.)
6
1 (Article113-2)
Enjoyment of rights by aliens (Article25)
Patent requirement (Article29,2 Article29)
Non-patentability (Article32) First-to-file (Article39)
2 (Article113-3) Convention violation
3 (Article113-4) Explanation requirement (Article(4)(5) (clause 3 excl.)
6
1(Article113-2)
Enjoyment of rights by aliens (Article25)
Patent requirement (Article29,2 of Article29)
2(Article113-3) Convention violation
3(Article113-4) Explanation requirement (Article36 (4)(5) (clause 3 excl.)
5
1(Article113-2)
Enjoyment of rights by aliens (Article25)
Patent requirement (Article29,2 of Article29)
Non-patentability (Article32) First-to-file (Article39)
2(Article113-3) Convention violation
3(Article113-4) Explanation requirement (Article36(3)(4))
Note:In addition, 184 quater decies is also a ground for filing opposition to any patent relevant to any foreign language application on or after Heisei 7 6.30 (June 30, 1995).
Chapter 3 Demanding Correction of Patents
(1) Post-grant Correction of Patent Specification and Drawings
a. Corrections to Patent Applications in Foreign Languages (Please refer to sections 4) b and 4) c)
1. As regards foreign language patent applications, corrections of mistaken translations of specifications or drawings are allowed in the following manner unless the scope of the claim is not substantially enlarged or modified.
a. Trial for correction (Patent Law Article126(1))
b. Demand for correction in the course of trial for invalidation of patent (Patent Law Article134)
c. Demand for correction in the course of procedures for filing a post-grant opposition (Patent Law Article120 quater (2))
2. If the purpose of a correction is to rectify a mistaken translation, the correction should be made within the scope of claims described in the document written in a foreign language (Patent Law Article126(2))
3. If the purpose of a correction is to correct an error, the correction may be made beyond the features described in the specification or drawing. However, the correction shall always remain within the scope of the features disclosed in the specification or drawings originally attached to the claim (if the patent is granted to an application filed in a foreign language, the claim filed in that foreign language) (Patent Law Article126(2)).
4. As regards correction of errors in a description or translation, as shown above since the necessity of reexamination of the patentability of the corrected patented invention arose in conjunction with the patent specification and is no longer a reference specification prohibiting addition of new matter the requirement for independent patentability is provided the same as if the restriction of the claim or claims were the objective. (Patent Law Article126(4))
b. Correction Procedures
1. Written demands for correction
Submission of the written demand for correction
In the "purpose of the demand" column in the written demand the content and scope of correction shall be defined. In the "grounds for demand" column, the procedural history of the application, grounds for correction, matter to be corrected and reason for the demand shall be demonstratively explained (please refer to the following sections for examples).
If reference material is required to explain the adequacy of the content of the correction, the titles of the relevant reference materials shall be identified with "reference material required to explain grounds for demand" in the "list of attached documents" section. The required reference materials shall be attached.
If the objective of a correction is rectification of a mistaken translation, errors based on description of the specification or drawings at the time of filing of the original application, grounds for correction shall be described and the circumstances in which the mistaken translation or errors in the description occurred shall be clarified after indicating that the objective of the correction is the correction of the mistaken translation or errors in the description by specifying concretely the specific part of the description in the original foreign language or in the original specification. Especially when the correction of a mistaken translation is the objective, description shall be made at the level where a person skilled in the art will sufficiently understand that the content of the correction is within the scope of the features disclosed in the document written in the foreign language.
In addition, it shall be exhibited that such correction does not substantially enlarge or modify the claim or claims and that the post-correction invention satisfies the independent patent requirement.
Also, the demandant may be asked by an examiner to submit the content of the written demand for correction in such a form as a floppy disk when the examiner drafts the decision of the opposition.
2. Deadline to Demand Correction
Deadline to submit arguments against the notice of reasons for revocation (Patent Law Article120 quater (2))
(2) Written Example of Grounds for Demand of Correction
a-e(if necessary) intentionally omitted.
f. Purpose of the demand
Demand correction of the specification of Patent No. OOOOOOO as shown in the corrected specification and corrected drawing attached to the demand.
g. Grounds for demand
1. Procedural history of the application
Application date:Heisei year month day
(YYYY/MM/DD)
Decision to grant:Heisei year month day
(YYYY/MM/DD)
Registration date:Heisei year month day
(YYYY/MM/DD)
Publication date of the gazette containing the patent Heisei year
month day (YYYY/MM/DD)
(Publication of patent No.OOOOOOO)
2. Grounds for correction
The claims need to be restricted and ambiguous description needs to be clarified.
3. Features to be corrected
a. Correct the expression "OOO" in claims 1 to 3 within the scope of the claims as "XXX." In relation to this correction, "OOO" in line 3 of page 3 and line 1 of page 18 of the specification shall be "XXX" in order to clarify ambiguous description to maintain consistency between the description of the claims and the description of the detailed explanation of the invention.
b. Correct the expression "OOO" of line 5 of page 10 of the specification to "XX."
4. Reasons for the demand
a. The item to be corrected (a) is to restrict the "OOO" in the scope of the claims in the specification of the patent to the more subordinate concept "XXX." "XXX" is described in line OO of page OO and chart OO. This correction aims to restrict to claims provided under Patent Law Article 120 quater (2)(i). The item to be corrected (a) is a correction within the scope of the features described in the specification or drawing attached to the application and does not substantially enlarge or modify the claim or claims.
Also, the post-correction invention specified by the features described in the claims is independently patentable. There is no description regarding XXXX in either published material 1 or 2 referred to in the notice or reason of cancellation dated Heisei YY MM DD. It therefore is not recognized that the aforementioned patent could have been easily conceived based on the invention described in the aforementioned published materials 1 or 2.The item to be corrected (a) therefore satisfies Patent Law Article126 (2) to (4) referred to in Patent Law Article120 quater (3).
b. The item to be corrected (a) clarifies the direction of the attachment of the "XX" attached to the "OO." The structure is obvious from description in chart X. This correction made the structure of OO clear and corresponds to the clarification of an ambiguous description as provided by Patent Law Article120 quater (2)(iii).
Also, the operation/effect of XX is as described in lines 5 to 8 of the patent specification. The item to be corrected (b) falls under the scope of the features described in the specification or drawing attached to the application and does not substantially enlarge or modify the claims. In addition the item to be corrected (b) satisfies Patent Law Article126 (2) and (3) referred to in Patent Law Article120 quater (3).
h. List of attached documents
1. Written demand for correction:2 copies of counterparts
2. Fully corrected specification:1 copy of the original and 2 copies of counterparts
3. Corrected drawing:1 copy of the original and 2 copies of counterparts
(Notes)
Items to be corrected shall be itemized. Broad description (e.g. correcting the invention to make it consistent with the correction of claims) is not suitable. Even such minor corrections as word particles may not be omitted. Furthermore, if the number of claims is changed due to deletion of claims, etc., preparation of a claims correspondence table is advisable (It cannot be directly said that even numbers of claims increasing does not indiscriminately fall under the restriction of the claims).
(Reference) Examples of item to be corrected
Example 1
In the scope of claims in the specification of the invention of patent No.OOOOOO, the description "OOO" shall be corrected as "OOO" with the restriction of the claims as its objective.
Example 2
In 12 locations in the specification of the invention of patent No. OOOOOO letters shall be corrected as described in the correction specification attached to the written demand. Correction shall be such that "OOO" in lines 2 and 4 of page 1 in the original specification (line OO, column OO, page OO, patent publication No.OOOOOO) becomes "OOO" making each ..... ..... its objective.
Example 3
Correct the specification of the invention of patent No. OOOOOO as described in the correction specification attached to the written demand, i.e.
(1) Correct the description "OOO" in lineOO, columnOO, pageOO of the specification (lineOO, columnOO, pageOO, patent publication No. OOOOOO) such that it becomes "XX" having ..... as its objective.
(2) Insert the 3 letters "OOOO" between the letters "re" and "ta" of "hyogen sareta(expressed)" having ..... as its objective.
Example 4
Correct Charts 1,2 and 3 which correspond to the charts of the invention pertaining to patent No. OOOOOO so that they become the same as charts 1,2 and 3 attached to the written demand having ...... as its objective. That is:
(1) Correction by replacing the OOO of charts 1 and 2 currently located above the OOO to below it.
(2) Correction by increasing the number of XX in the chart from 2 to 3.
Example 5
Correct claims 1 to 5 of the scope of claims of the specification of the invention pertaining to patent No. OOOOOO by deleting claims 1 and 3 and renumbering claims 2,4 and 5 as 1,2 and 3 respectively (please refer to the claims correspondence table).
Claims Correspondence Table
Claims when the Patent was Granted | Claims after Correction |
|---|---|
1 | Deleted |
2 | Deleted |
3 | 1 |
4 | 2 |
5 | 3 |
Example 6
Correct by replacing the expression "OOO" located in the below space in the specification of the invention pertaining to patent No. OOOOOO with the expression "XX" having the correction of errors as its objective.
Patent Specification Patent Publication
Line 1, page 1 Line 10, left column, page 3
(3) Trial Examination of Correction
a. Notice of Reasons for Refusal of Correction
1. When the trial examiner-in-chief renders a ruling to revoke, the trial examiner-in-chief shall notify the patent right holder of the reasons for revocation of the patent and provide an opportunity to submit a statement of arguments (Patent Law Article120 quater (3), Patent LawArticle165)
2. If a notice of reasons for refusal is sent, the demandant may submit a written amendment of the specification or drawings attached to the demand for trial for correction (Patent Law Article165, Patent Law Article 17(1), Patent Law Article17 quater (1))
3. If a notice of reasons for refusal is sent, the demandant may amend the written demand unless such amendment does not modify the content of the written demand for correction compared with the specification or drawing. The demandant may carry out the restriction of a claim or claims (deletion of claim or claims), the correction of errors in the description, the clarification of an ambiguous description, etc. (Please refer to "(4) Decisions on Corrections").
4. If the demand for correction does not appear to meet the requirements for correction during examination by the trial examiner-in-chief, even with a written opinion against the notice of reasons for refusal of correction or written amendment, the trial examiner-in-chief shall not accept the relevant demand for correction. On the other hand, if the trial examiner-in-chief considers the demand for correction as meeting the requirements for correction, the trial examiner-in-chief should render a decision in this regard.
b. Handling of Multiple Reasons for Correction
1. If there are multiple demands for correction in one opposition to a patent procedure, the trial examiner in chief shall in principle examine whether the correction is acceptable based upon the most recent demand for correction.
(Note)
If there are multiple specifications or drawings for full correction resulting from multiple demands in one opposition to a patent procedure, 1 the trial examiner-in-chief examines the most recently submitted specifications or drawings for correction since it is considered that these most recently submitted specifications or drawings were made considering the most recent circumstances, 2 only one method of correction may be carried out since only one patent is the object of the correction and several specifications or drawings for full correction may not coexist even though several demands for correction were submitted for one opposition to a patent procedure. Previous specifications or drawings for correction will not be processed or examined or described in the decision.
(1) The specification or drawing on which the decision regarding restriction of claims, etc. (Patent Law Article134 (2)) will be based shall be the registered patent specification at the moment the examination concludes (Patent Law Article120 quater, Patent LawArticle134, Patent Law Article128) (?)
(2) The trial examiner-in-chief shall specify the demand for correction relevant to the specification or drawing of correction desired by the patent right holder through interrogation. The trial examiner-in-chief shall clarify the objective of the examination by specifying the demand for correction by such means as encouraging the demandant to withdraw existing demands when raising a new demand.
Example
Written Withdrawal of Demand for Correction
Heisei 12 (2000) OO month OO day (MM/DD, 2000)
The Chief Appeals Examiner
Japan Patent Office
1 Opposition No.
Heisei 9 (1997) Opposition No. OOOOO
2 Demandant
Address 100-8915(zip code) Tokyo, Chiyoda-ku .....
Phone 03-3581-1101
Name YYYYYYYY (Seal)
3 Agent
Address 100-8914 Tokyo, Chiyoda-ku .....
Phone 03-3581-0000
Facsimile 03-3581-9999
Name Patent Attorney XXXXXXXX (Seal)
I hereby withdraw the specified demand for opposition due to the above personal reason as of Heisei 11 (1999) OO month OO day (MM/DD, 1999).
(Note)
The demandant signature is not required if procedures are conducted by an agent.
(4) Decisions on Corrections
a. Restrictions on Claims
1. Meaning
Limiting description of the claim if there is concern that reasons for cancellation of the patent exist due to the defect that the description contains well-known art.
2. Viewpoint
Since a patent claim is an aggregation of claims in which all matters required to specify the relevant invention must be described, decisions regarding restrictions of claims shall be taken based on this idea. Cancellation of claims shall be treated as a restriction of the claims.
3. Requirement for Correction with the Restriction of Claims as its Objective
a. Restriction of claims
b. Why the post-correction description will remain within the scope of the specification or drawings, i.e. how the description may be directly and unequivocally deduced from the specification or drawings
c. The correction does not substantially enlarge or modify the claims.
d. The invention consisting of the features described in the corrected claim must be such an invention that could have been patented independently at the time of filing of the patent application.
b. Correction of Errors
1. Meaning
Correction of contents not representing their intended meaning to contents that do represent their intended meaning.
2. Error Examples
"Temperature Range "20C to 40C"to "60Cto 70C"
3. Requirements for Correction having Correction of Errors as its Objective
a. Errors exist in the description of the specification or drawing of a patent.
b. The post-correction description remains within the scope of the specification or drawings originally attached to the request or in the contents disclosed in translations of foreign language documents (word-by-word translations from the foreign language original document into proper Japanese in proper context).
c. The correction does not substantially enlarge or modify the claims.
d. The invention consisting of the features described in the corrected claim must be such an invention that could have been patented independently at the time of filing of the patent application.
c. Correction of Mistaken Translations
1. Meaning
Corrections of descriptions having a meaning different from the foreign language original document as a result of translation
2. Mistranslation Example
"A is disconnected" ---> "A ga setsuzoku sareru (A is connected)"
3. Requirements for Correction having the Correction of Mistranslation as its Objective
a. The meaning of any description in the specification or drawings is different from the meaning in the original foreign language document.
b. The post-correction description remains within the scope of claims described in the original foreign language document, i.e. the description can be recognized as described in the hypothetical translation.
c. The correction does not substantially enlarge or modify the claims.
d. The invention consisting of the features described in the corrected claim must be such an invention that could have been patented independently at the time of filing of the patent application.
d. Clarification of Unclear Descriptions
1. Meaning
Clarification, through correction of any ambiguity in description, of any essential elements of any description in the specification or drawing ambiguous by itself or due to inconsistency with other descriptions in the specification or drawing.
2. Ambiguous Description Examples
a. "Computer equipped with parallel processors with a concurrent simulation function" (It is unclear whether the "computer" or the "parallel processors" has the "concurrent simulation function.")
b. "phenyl group, naphthyl group, ---- displaced by halogen or archil" (the relationship to the displacement is not clear)
c. The problem solving method is the capacitive coupling of A and B. (omitted) This invention solves the aforementioned problem by making a composition connecting A and B." (There is an inconsistency.)
d. In conjunction with restrictions on claims, there is inconsistency between the description of the claims and the detailed description of the invention.
3. Requirements for Correction having the Clarification of an Ambiguous Description as its Objective
a. Ambiguous descriptions exist in any patent specification or drawing.
b. The post-correction description shall remain within the scope of the specification or drawings, i.e. the former may be directly and unambiguously deduced from the specification or drawings. Essential elements of the ambiguous description should be clear through the specification and drawing of the patent.
c. Correction of specification or drawings under i) may not be such as to substantially enlarge or modify the claims.
If any correction having restriction of claims as its objective satisfies the requirements of correction, clarification of any ambiguous description in the detailed description of the invention related to this correction shall be allowed as a correction having the clarification of an ambiguous description as its objective.
Example:Along with corrections to correct descriptions in the claim, correction of the same claims transcribed as is to the detailed explanation of the invention.
e. Determination of Substantial Modification or Enlargement of Claims
1. Meaning of Substantial Enlargement
Substantial enlargement of claims means enlargement of claims by the correction of explanations or drawings. It does not mean correction of any part of the claims themselves in addition to enlargement of the claims through correction.
2. Meaning of Substantial Modification
Substantial modification of claims means modification of claims through correction of detailed explanations or drawings. It does not mean correction of any part of the claims themselves (for example, a correction that staggers the claims through replacing any feature disclosed in the claim by an expression of another meaning) in addition to modification of the claims themselves through correction or correction modifying the objective of the invention.
3. Examples of Substantial Modification of Claims
a. Deletion of certain serial elements in any feature specifying the invention described in the Claim
b. Addition of certain disjointed descriptive elements for specifying the invention described in the claim
c. Modification of certain elements of any superordinate concept for specifying the invention described in the claim
d. Replacement of certain elements for specifying the invention described in the claim
e. Enlargement or departure from numerical limits described in a claim
f. Modification of the category or objective of the invention relevant to the claim
g. Correction of the description in the detailed explanation of the invention influencing interpretation of the claim and thereby falling under the above a. - f.
- ＜Contact＞
- Appeals Division,
- Japan Patent Office
- TEL:+81-3-1101,ext:5851
- FAX:+81-3-3581-1961
- e-mail:PA6B00@jpo.go.jp
[Last updated 13 August 2002]
