Trilateral Project 24.1-Biotechnology 008

A patent application shall not be rejected on the ground of the violation of Section 36(6)(ii) of 1994-Revised Patent Law merely because a claim includes a statement defining a product only by the objective to be reached.

It is a violation of Section 36(6)(ii), however, if a claimed invention cannot be clearly identified by a skilled person as a result of such claim statements. Particularly, it is a violation of Section 36(6)(ii) if the extent of the claimed invention is unclear to a skilled person even taking into account the specification, drawings and common general knowledge as of the filing. Specifically, the extent of a claimed invention should be deemed unclear if a person skilled in the art would not be able to understand whether or not the invention encompasses a specific product (provided that the specific product is the one that a skilled person can clearly understand as of the filing). (Implementing Guidelines I-1-2.2.2.2(1))

Concerning the enablement requirement, see 1.2.1.1(8). (Implementing Guidelines I-1-3.2 (Note 2))

According to the practice under 1987-Revised Patent Law, it is a violation of the requirement for claims that features defined in claims are composed of a single technical means and the technical means is expressed functionally or operationally. (Examination Guidelines I-1-3.3.1(5))

In addition, when determining the novelty or inventive step of a claim which includes a statement defining a product in terms of its work, function, property or characteristics, such a claim statement should, in principle, be construed as defining a product which is capable of performing such work and function or a product which has such property and characteristics. (Implementing Guidelines I-2-1.5.1.3(1))

Therefore, the claimed invention should be denied its novelty if any one of the every possible means for achieving the objective (result) stated in the claim is publicly known. In this sense, there is no distinction in the claim construction between so-called a "single-means" claim and a "means-plus-function" claim.