Although the “support requirement” in the examination of Japanese patent applications is not as stringent as in China, it is a registration requirement that is frequently pointed out as a reason for refusal, particularly in the fields of chemistry and medicine.
In this issue, we will explain the examiner’s criteria for support requirements in Japan, and then introduce possible measures to be taken, along with specific examples.
*Cases pertinent to Description Requirements (Article 36 of the Patent Act) – Japanese Patent Office
Examiner’s Criteria
In determining the support requirement in Japan, as in other countries, the invention specified in the claims and the invention described in the detailed description of the invention are compared and examined. The indicator in this examination is whether or not the invention exceeds the scope described in such a way that a person skilled in the art can recognize that the problem of the invention can be solved.
A case in which a violation of the support requirement is likely to be pointed out is when it cannot be said that the content disclosed in the detailed description of the invention can be extended or generalized to the scope of the invention claimed in the claims, even by referring to the common sense of the art at the time of filing the application. For example, this is often the case when the claims describe a wide range of inventions, while the detailed description of the invention is limited to one or a few specific examples.
Example 1 and Corresponding Measures
The following examples are cases where the claims do not reflect the means for solving the problem of the invention as described in the detailed description of the invention. Therefore, the following examples exceed the scope described in the detailed description of the invention and are judged to be in violation of the support requirements.
In such cases, it may be possible to resolve the reason for rejection by amending the claims and describe the means to solve the problem of the invention.
Example 2 and Corresponding Measures
The following examples are cases in which it cannot be said that the content disclosed in the detailed description of the invention can be extended or generalized to the scope of the claimed invention in light of the technical common sense at the time of application, and are judged to be in violation of the support requirements. In particular, inventions in the fields of medicine and chemistry are often found to violate the support requirements in this category because it is difficult to understand the relationship between the structure and properties of an object.
It should be noted that in such cases, even if the applicant submits a certificate of experimental results after filing the application, it may be held that the reasons for refusal cannot be resolved. There is a court decision that the submission of a certificate of experimental results cannot make up for a deficiency in the detailed description of the invention in cases where the detailed description of the invention is insufficient at the time of application, and this decision is often made during examination. (see: case on the action to seek rescission of the JPO decision to revoke the patent, Decision by the Intellectual Property High Court, Grand Panel, November 11, 2005 [Heisei 17 (Gyo KE) No. 10042], “Manufacturing Method of Polarizing Film”)
In cases such as Example 2, a practical response is to limit the scope of the claimed invention to a reasonable scope, taking into consideration the scope of the invention as recited in the claims and the scope in which the pharmacological effects or characteristics of the subject matter have been demonstrated in the detailed description of the invention. If the reasonable scope of the amendment is unclear, it is recommended that the applicant request an interview with the examiner by telephone or other means.
The information above describes specific decisions and proposed responses to violations of support requirements in Japan.
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