In a Japanese patent application, the specification and claims must be written in a manner that satisfies the formal and substantive requirements prescribed by the Patent Act. The relevant provisions are found in Article 36, which governs the content and format of the detailed explanation of the invention and the claims. Below are the key paragraphs:
Article 36 (4)
The statement of the detailed explanation of the invention referred to in item (iii) of the preceding paragraph must comply with each of the following items:
(i) as provided by Order of the Ministry of Economy, Trade and Industry, it is clear and sufficient to enable a person ordinarily skilled in the art of the invention to work the invention;
Article 36 (6)
The statement of the claims referred to in paragraph (2) must comply with each of the following items:
(i) the invention for which the patent is sought is stated in the detailed explanation of the invention;
(ii) the invention for which a patent is sought is clear;
(iii) the statement for each claim is concise; and
(iv) the statement is composed in accordance with an Order of the Ministry of Economy, Trade and Industry.
The patent applicant must determine what type of invention a patent is being applied for. Therefore, the applicant must describe all matters necessary for specifying the invention to be patented. The technical scope of the patented invention is determined based on the description in each of the claims, and the invention described in each claim is what is examined.
The invention in the claims must not exceed the range described in the detailed explanation of the invention. If the scope of the claims includes an invention that is not described in the detailed description, patent rights for the invention not disclosed will not be granted.
If the elements described in the claims are not suggested in the detailed description of the invention, the invention is not patentable. If different terms are used in the claims and the detailed explanation, and this results in the relationships between the matters described being unclear, a patent will not be granted. Where the patent claims are beyond the scope described in the detailed description of the invention, due to the means to resolve the problems not being described in the claims, then a patent will not be granted. If there are mistakes in the claims, or the language is inappropriate, the invention will be unclear. If there are technical conflicts or faults in the description of the claimed invention, or if the technical meaning or relationships cannot be understood, the invention will be unclear.
The description of the claims must be brief. For example, if the description of the same contents is duplicated in the claims, and there is too much redundancy, or there are a large number of selections of chemical substances described in a Markush claim, the claims are considered not to be brief.
The detailed explanation of an invention must be clear and provide adequate information for a person with a normal level of skill in the art of the technical field of the invention to implement the invention.
If uncommon technical terms, abbreviations or symbols are used without definition and their meaning is unclear, the invention described in the claims cannot be implemented, and so a patent will not be granted. If technical procedures or functions corresponding to the invention described in the claims are simply abstractly described in the detailed explanation of the invention, and it is not clearly described in what way the procedures and functions are executed or realized by the hardware or software, then the invention in the claims cannot be implemented and a patent will not be granted.
The description (of the detailed explanation of the invention) must have the necessary information to enable a person having average knowledge of the problems to be solved by the invention, the means for solving the problems, and the technical field to which the invention belongs, to be able to understand the significance of the technology of the invention.
