The enablement requirement in the examination of Japanese patent applications, like the support requirement discussed in our previous news item , is a requirement for registration that is frequently pointed out as a reason for rejection.
In this issue, we will explain the examiner’s decision criteria regarding the enablement requirement in Japan, and then introduce some points to keep in mind along with specific examples.
（Cases pertinent to Description Requirements (Article 36 of the Patent Act) ; Japanese Patent Office）
The determination of the enablement requirement in Japan is the same as in the U.S. and EP. The standard for this examination is whether the detailed description of the invention is described clearly and sufficiently so that a person skilled in the art can implement it. As described below, in addition to the description in the specification and drawings, the common general technical sense at the time of filing the application is also taken into consideration to determine whether there is a description that enables a person skilled in the art to understand how to implement the invention.
Example 1 and Corresponding Measures
The following example shows that the invention described in claim 1 does not meet the enablement requirement, but the invention described in claim 2 may meet the enablement requirement.
The examples in the specification describe “using a fact that the larger a particle is, the larger an air resistance when falling in the air becomes to make it be of a flat shape, the size of a rainfall drop from estimated form/shape is estimated.” On the other hand, the invention of claim 1 also includes a radar device that estimates the size of liquid particles other than when they fall in the atmosphere. Therefore, the examination may show a violation of the enablement requirement with respect to claim 1.
In this case, in addition to an amendment to delete claim 1, a reduction amendment to reduce the liquid particles in claim 1 could also be considered as a possible response.
Example 2 and Corresponding Measures
The following examples are cases in which the raw materials and manufacturing conditions for producing an object that satisfies the numerical conditions described in the claims are not specifically described in the detailed description of the invention and are judged to be in violation of the enablement requirements.
For an invention of an article, it must be described so that “he article can be made” to satisfy the enablement requirement. In a case such as Example 2, the detailed description of the invention does not include a specific description of the raw materials and manufacturing conditions necessary to make the article, which makes it very difficult to resolve the violation of the description requirement.
Especially in patent applications in the field of chemistry, etc., it is not uncommon for a patent application to be found in violation of the enablement requirement because there are no working examples, etc., for inventions that are limited by amendment in order to satisfy the requirements of novelty and inventive step. Therefore, in practice, it is necessary to ensure sufficient description at the time of filing the application, including inventions that may be limited in the future.
The information above describes specific decisions and proposed responses to violations of the enablement requirement in Japan.
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