Ariga International Patent
Office seeks to provide our clients with as much information as possible
regarding the procedures under which applications are examined by the Japan
Patent Office (JPO), so that our clients understand what is involved in
drafting an application that stands the best chance of being granted as
seamlessly as possible.
Much of what makes a strong
application is making sure the application fits within the Examination Guidelines
of the JPO. On September 18, 2015, the JPO published their updated “Examination
Guidelines for Patents and Utility Models” and “Examination Handbook for
Patents and Utility Models”. In this overview, we will first describe the basic
concepts used by the JPO in determining whether a patent or utility model
application conforms to the Patent Law or the Utility Model Law. Afterwards we
will briefly cover how the updated/revised “Examination Guidelines for Patents
and Utility Models” and “Examination Handbook for Patents and Utility Models” have
affected the preparation of applications and techniques used to respond to
Office Actions. In April 2018, the JPO published an revised edition of the
“Handbook for PCT International Search and Preliminary Examination in the Japan
Patent Office”. An English version of this handbook can be found on the JPO
website (https://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/pct_handbook_e.htm).
This overview
will be broken down into several sections, each of which explains the basic
concepts behind various aspects of how patent and utility model applications
are handled at the JPO.
Section
II. Unity of Invention
Section
III. Industrially Applicable Inventions
Section
IV. Determination of Novelty and Inventive
A)
Description Requirements (corresponding to Article 36(6)(i) of the Patent Law)
The invention stated in the
claims is compared to the invention described in the detailed description (explanation)
of the invention. This is referred to as Support
Requirements. There must be a substantial correspondence between the
invention in the claims and the invention in the detailed description. The
expressions used to describe the relationship between both must be consistent
and the elements necessary to solve the problem must be recited.
The application is examined
as to whether the invention described in the claims exceeds the scope described
in the detailed description of the invention and as to whether the claims
reflects the means for solving the problem(s) described in the detailed
description of the invention.
When the content disclosed
in the detailed description of the invention cannot be expanded nor generalized
to the scope of the claimed invention, the description is considered to be in
violation of the support requirements.
B)
Claims: Clarity Requirements (Corresponding to Article 36(6)(ii) of the Patent
Law)
A person skilled
in the art must be able to clearly define the invention from one claim in order
to determine whether there is novelty and inventive step, and in order to
understand the technical scope of the invention.
If the claim
contains statements which are unclear or ambiguous (including clerical errors) which
make the scope of the invention unclear, technically incorrect statements, or
the category of the invention is unclear, the description is considered to be
in violation of the clarity requirements.
Note that, terms
such as “use”/”utilize” denote processes.
If the claim describes
matters specifying the invention which are not related to one another, the claim
is considered to be in violation of the clarity requirements.
For example: “A
transceiver transmitting a specific encoded signal” only shows the function of
a transceiver, and there is no relation between the transceiver and the encoded
signal.
Claims containing
expressions such as “except”, “slightly”, “much”, “easy to”, “hard to”, claims containing
only one of the upper limit or the lower limit of a substance, or claims containing
expressions where the scope cannot be identified, such as “essentially”,
“substantially”, “about”, etc., make the scope of the claimed invention
unclear.
Claims containing
optionally additional matters or selective matters, such as “If necessary”,
“when desired”, etc., are considered to be in violation of the clarity
requirements. However, if the optionally additional matters are stated so that
it is understood that they are optional, the scope if clear, and if the
selective matter can be understood to mean a generic concept, the scope is
clear.
Claims containing a
numerical limitation in which zero (0) is included, i.e., “from 0% to 15% Ca”,
are unclear, as is a claim which refers to a drawing (as drawings tend to be
ambiguous representations).
The claim should
describe the invention based on the invention’s characteristics, properties,
functions, etc. If these cannot be clearly understood, the claim is considered
to be unclear.
C)
Claims: Enablement Requirements (Corresponding to Article 36(4)(i) of the
Patent Law)
A person skilled
in the art could carry out the invention on the basis of the description of the
features in the description and drawings.
For example, if
the invention pertains to a process or method for manufacturing or producing a
product, a person skilled in the art should be able to use the process or
method to manufacture or produce the product without having to resort to
unnecessary trial and error or an unreasonable amount of complicated
experimentation to do so.
How the product
may be used must also be described, and in the case of the invention of a
chemical substance, the purpose of the substance must be described.
Describing the
technical means in a functional or abstract manner, failing to clearly describe
the correspondence between the technical means which form the invention, and
failing to describe the specific numerical values associated with the
production and testing of the invention shall be deemed to be violations of the
enablement requirement.
Additionally, if the claim
is not supported in the detailed description of the invention, it is considered
to be in violation of the enablement requirements.
The above would
include the cases when the claim is directed to a general concept, while only a
narrow concept is described in the detailed description of the invention; the
case when the claim is described in Markush-form, but only the mode to carry
out part of the dependent claims is described in the detailed description of
the invention, or the case when the claim describes a product defined by the
result or effect obtained by a specific mode is described in the detailed
description of the invention.
In summary, if
the invention is
1)
a product, then there must be a description that enables the product to be made
and a description that enables the product to be used,
2)
a process, then, there must be a description that enables the process to be
used, or
3)
a process for producing a product, then there must be a description that
enables the product to be produced by the process.
D)
Claims: Conciseness Requirement
The applicant
should seek to balance the Clarity Requirements with some standard of brevity
in order to facilitate the understanding of the invention by a third party.
Should the claims contain numerous statements essentially repeating the same contents;
the statements will be deemed to be excessively redundant. This shall not apply
to cases when the “repeated contents” are indispensible matters for satisfying
the patentability requirements or description requirements.
If the claims are
expressed as alternatives, as is often the case for chemical compounds and pharmaceutical
compositions in Markush-type claims, the number of alternatives should not
become so great that it is no longer possible to envision the invention due to
a loss of conciseness.
II.
Unity of Invention
Two or more
inventions which are to be the subject of a single application must be
recognized as having a technical relationship to each other (among each other).
It must be obvious that the inventions are “linked so as to form a single,
general inventive concept by having the same or corresponding special technical
features among them” (Japan Patent Office).
The special
technical feature(s) must make a contribution over the prior art, and the contents
of the description, claims and drawings and the common general knowledge as of
the filing date of the application are reviewed by the Examiner in order to
determine the above.
Some examples of claims
which are deemed to have the same special technical feature is as follows:
[Claim 1] A metallic particle (a substance having improved
strength and durability properties).
[Claim 2] A surface coating material composed of the metallic
particle.
The metallic particle is a
special technical feature which is judged to make a contribution over the prior
art. The inventions claimed in claims 1 and 2 have the same special technical
feature.
[Claim 1] A pharmaceutical product made by adding X to Z.
[Claim 2] A pharmaceutical product made by adding Y to Z.
While claim 1 and
claim 2 include different technical features (X or Y), both claims are directed
to solving the same unsolved problem (making a pharmaceutical product), and
thus, have the same special technical feature.
It may be deemed
that it is efficient to examine other inventions of the application along with
the inventions having the same or corresponding special technical feature. These
other inventions must include all matters specified in the invention according
to claim 1. These other inventions must be inventions which can be examined
without having to conduct an additional prior art search.
III.
Industrially Applicable Inventions
An invention is
defined as being “an advanced creation of technical ideas utilizing the laws of
nature” (Japan Patent Office)
The basic concept
is that by applying a law (or laws) of nature, a novel technical idea can be
created which leads to the advancement of technological thought and innovation.
The claimed invention as a whole must utilize a law of nature.
An invention is
examined to make sure that it is not in itself or the result of any of the
following:
-a law of nature or counter
to the laws of nature.
-an artificial arrangement
which does not utilize a law of nature, a mental activity, the use of a law
other than a law of nature, etc.
-a personal skill such as
being able to juggle which is acquired through personal experience and
practice.
-the discovery of a new
organism existing in nature.
Examples of the above
include, but are not limited to a language for programming a computer; a
business method or a mathematical method for calculating a total cost by
multiplying a subtotal by a tax rate in the absence of a hardware resource; a
sculpture or painting; and the simple presentation of information.
A. In
Surgery includes
cosmetic surgery which is not therapeutic and the preparation and procedures
prior to surgery, i.e., anesthetics.
Therapeutic
treatments include a method for injecting or administering medicine for
treatment or prophylaxis of disease, and therapy. This also applies to methods
of preventative medicine, such as receiving a fluoride dental treatment.
Diagnostic
methods include measuring the internal or external conditions of a patient in
order to determine the physical health of a patient.
While a medical
device and a medicine itself may be patentable, the operation of the medical
device or the actual use of the medicine generally is not patentable. The
device or medicine must not be deemed to be methods of treatment
If it is specifically
indicated that the invention is practiced on animals which do NOT
include human beings, the invention may be industrially applicable.
The JPO has deemed that a method for treating a sample, such as blood,
urine, cells, etc., which was extracted from a human body and methods for
obtaining data by analyzing the sample are not “methods of surgery, therapy or
diagnosis of humans”, unless the sample is to be returned to the same human
body after being processed, then the method does correspond to “methods of
surgery, therapy or diagnosis of humans”. This would include dialysis or the
application of skin grafts obtained from the same human body.
However, the following cases
(1-4) are not deemed to be “methods of surgery, therapy or
diagnosis of humans”, even if the sample is to be returned to the same human
body, and hence, may be patentable:
1)
Method for manufacturing a medicinal product such as a vaccine, a genetically
modified formulation, or a blood preparation utilizing a raw material(s) obtained
from a human body.
2)
A method for manufacturing an artificial medical material which is can be
substituted for a part of the human body, such as an artificial bone, etc., utilizing
a raw material(s) obtained from a human body.
3)
A method of manufacturing an intermediate product(s) for a medicine or a
medical material, such as the methods for the induction or purification of
cells, utilizing a raw material(s) obtained from a human body.
4)
A method of analyzing a medicine or a medical material, or an intermediate
product(s) thereof which is manufactured utilizing a raw material(s) obtained
from a human body.
Additionally, methods for obtaining information
by measuring the functions or the structure of the organs in a human body are
not considered to be methods of diagnosis unless they include the steps of
judging the physical condition of the human body; the mental condition of a
human; or treatment/surgery plans related to these conditions. Thus, a method
for obtaining an image of an internal organ by X-rays may be patentable.
Other inventions
which are not deemed to be patentable include, but are not limited to methods
for contraception and delivery of a child, methods for the drawing of blood,
methods for transplanting or implanting artificial internal organs or
artificial limbs, and methods for preventing disease.
B.
Inventions which were created for personal use, academic, or experimental
purposes, and which are clearly commercially inapplicable also are not
industrially applicable inventions.
C.
Inventions which are not practical, such as a Dyson sphere, are not
industrially applicable inventions.
D.
Computer Programs (software) are patentable as products, and generally, the
criteria that the invention be the creation of a technical idea utilizing a law
of nature is satisfied by "concretely realising the information processing
performed by the software by using hardware resources". To put is simply,
there must be a readily understandable connection between the computer program
(software) and the hardware system of the computer.
Section
IV. Determination of Novelty and Inventive Step
Novelty
(Article 29(1) of the Patent Law)
If an invention
was publicly known, publicly worked, and described in distributed publications,
or made publicly available through a mode of telecommunications in Japan or
other country prior to the filing of the patent application of the invention in
question, the invention is generally deemed to NOT possess novelty.
I.
How the JPO determines novelty.
The JPO performs
an investigation to initially interpret the claimed invention and determine
what is actually described in the invention(s) cited in the prior art or cited
by an International Searching Authority (ISA) in an International Search Report
(ISR). Then the claimed invention is compared with the cited invention(s) to
determine the similarities and differences.
Interpretation
of the Claimed Invention
The descriptions in the
claims are the basic material by which the claimed invention is to be understood;
however, as the terms stated in the claims are defined further in the
description and the drawings, they should also be examined to provide a deeper
understanding of what is being claimed.
Determination
of what the Cited Invention(s) describes
Publicly known
facts, common general knowledge, inventions and matters described in the
publication are used to determine whether the cited invention is a publicly
worked or known invention and whether a person skilled in the art can or cannot
manufacture the product or use the process described in the cited invention.
The Examiner(s)
compare all of the features of the claimed invention with those of the cited
invention(s) to determine the features which are identical and which are
different. If no differences are found, it is deemed that the claimed invention
is not novel. If the features of the claimed invention are described as an
alternative, and none of the alternatives are different relative to the cited
invention(s), it is deemed that the claimed invention is not novel. An example
of an alternative would be a Markush-type formula with a multiple dependent
claim in which two or more other claims are cited, or claims in which statement
such as “a carboxyl group having 2 to 24 carbons”.
Note:
If the patent application is
filed within six (6) months (grace period) of the introduction of the invention
by the inventor in a printed publication, through electronic communication
means, or in a written presentation to a scientific organization designated by
the JPO, the disclosure of the invention against the inventor’s or right
holder’s will, or the display of the invention at certain types of exhibitions,
the invention of the patent application may still possess novelty. Any of the
above cases are referred to as Exceptions to Lack of Novelty of Invention.
In this case, it is
necessary to submit documents proving that the disclosure was made in such a
manner which corresponds to one of the abovementioned exceptions. Such a
document and its Japanese translation must be submitted within 30 days from the
filing of the application (with the exception of disclosure against the will of
the inventor(s) or right holder(s)).
However, if the invention is
publicly known or worked, or described in any publication, the invention shall
be deemed to lack novelty under Article 29(1) of the Japan Patent Law. For
example, an oral explanation of the invention without a confidentiality
agreement between the parties will result in the invention being considered as
prior art, and will be covered by the six-month grace period.
Use
of the six-month Novelty Grace Period
A request for a
six-month grace period may be requested for 1) a PCT application designating
Japan with the request for the grace period being made when the application
enters the Japanese national phase, or 2) a patent application directly filed
with the JPO prior to six-months from the disclosure which would destroy the
novelty of the invention.
Novelty
Part II (Article 29-bis of the Patent Law)
A claimed
invention of an application filed after a previous application which discloses
the same invention (no new technical matter) was filed is unpatentable,
regardless of when the previous application was published. The filing date serves as the basis
which determines that the previous application is that which may be patentable.
The same is true
in the case when there is a difference between the claimed invention and the
previous application, but it is judged to be a minor difference, and thus, the
two inventions are substantially identical.
The above shall
not apply in the cases when the same inventor(s) and/or the same applicant(s)
filed the claimed invention and the previous application.
Inventive
Step (Article 29-2 of the Patent Law) Non-Obviousness
If a person
skilled in the art would have easily made, conceived of, or arrived at the
claimed invention on the basis of the cited invention(s), the claimed invention
is unpatentable.
A person skilled in the art
is any person who comprehends the technical elements in the state of the art,
possesses the skill of what is deemed to be general common knowledge and the
skill to use the ordinary technical means in research and development in the
art to which the invention pertains at the time the application was filed. A person skilled in the art is one who
has the creativity to anticipate simple changes in design and has the ability
to select basic materials, both of which do not contribute to inventive step.
Process
for determining inventive step by a person skilled in the art
The claimed invention is
examined for an inventive step after the presence of novelty has been
determined. A publicly known and worked cited invention(s), which may also
include non-patent literature, such as academic documents, brochures, etc., is
sought using the description of the claim (in the case of patent literature) or
using the defining matters which define the invention or discovery stated in
the academic documents, etc. This cited invention(s) is compared with the
claimed invention.
The Examiner searches for common grounds
in the matters defining both the claimed invention and the cited invention. The
wording and phrasing of the matters may differ, yet, still remain virtually
identical to each other, and this shall be stated in the development of the
reasoning. The Examiner attempts to
provide reasoning that a person skilled in the art would have easily arrived at
the claimed invention on the basis of the similarities to the cited
invention(s).
The judgment of whether the
cited invention involves an inventive step, which is an effect beyond that
which would be anticipated by a person skilled in the art, is performed based
on the reasoning that the person skilled in the art would have easily produced
the claimed invention on the basis of the cited invention is made by
ascertaining what the person skilled in the art would do based on their
understanding of the state of the art in the field to which the application of
the cited invention pertains. This is referred to as the “reasoning”.
The reasoning itself can be
derived from numerous aspects including small changes made to the cited
invention to arrive at the claimed invention, and understanding the cause or
motivation by determining how the fields, problems, functions, suggestions in
the cited invention, and advantageous effects are related between the cited
invention and the claimed invention.
A)
Small changes and modification of design
If it can be judged that the
difference between the claimed invention and the cited invention is merely a
small change such as the selection of a more optimal material or an optimal
range to which a composition is added or a temperature at which a reaction is
performed, a modification to the design, or a simple aggregation of features
contained in the cited invention which a person skilled in the art could have
easily conceived of, then the claimed invention shall be deemed to lack an
inventive step.
B)
Motivation
If it can be
judged that the claimed invention merely applies a technical means to a field
which is clearly related to that in the cited invention, and hence, is merely
the exercise of the normal creative abilities of a person skilled in the art,
then the claimed invention shall be deemed to lack an inventive step. The same
is true if it is deemed that the problem to be solved is obvious based on the
cited invention.
If it can be
shown that the application of one cited invention to a second cited invention
due to the similarity of technical fields or the problem(s) to be solved would
easily result in the claimed invention, then the claimed invention shall be
deemed to lack an inventive step.
Example
1. Motorcycles and automobiles are both related to the technical field of
vehicles which comprise engines, thus applying a publicly known fuel control
valve for a motorcycle in an automobile would be easily done by a person
skilled in the art. Additionally, the problem of regulating the flow of fuel is
common in both motorcycle engines and automobile engines.
The fact that the technical
field and/or problems to be solved are similar or related serves as motivation
for combining a cited invention with a second cited invention to arrive at the
claimed invention. Thus, the claimed invention would not comprise an inventive
step.
If the problem to
be solved by the invention is an obvious problem which could be easily solved
by a person skilled in the art, then the claimed invention shall be deemed to
lack an inventive step. For example, merely attempting to produce a product at
a lower cost and with fewer steps is obvious and is a general problem of all
methods and inventions. A person
skilled in the art could apply a cited invention which was produced at a lower
cost and with fewer steps to a second cited invention to achieve the same goal,
and thus, arrive at the claimed invention.
C)
Function
If it can be
judged that the claimed invention has the same mode of operation and function
as that of the cited invention(s), then the claimed invention shall be deemed
to lack an inventive step.
Example
2. Cited invention 1 is equipped with an outlet for spraying a liquid for
cleaning a tube and Cited invention 2 has a tapered nozzle for directing a cleaning
fluid towards a glass surface to be cleaned. There is little difference between
the outlet of Cited invention 1 and the tapered nozzle for directing a fluid
towards a glass material to be cleaned of Cited invention 2, thus, the Examiner
can reason that converting an outlet into a tapered nozzle is within the range
which would be easily conceived of by a person skilled in the art.
D)
Suggestions
If it can be
judged that the claimed invention was actually suggested in the cited
invention, then the claimed invention shall be deemed to lack an inventive
step. A cited reference which
suggests that Cited invention 1 may be applied to Cited invention 2 is deemed
to be the motivation for applying Cited invention 1 to Cited invention 2.
E)
Advantageous Effects
If it can be
judged from the description and the drawings of the claimed invention that a
novel advantageous effect is brought about compared to the cited invention(s),
then the following should be considered. The advantageous effect may be a
different effect than that seen in the cited invention or may be the same
effect as that in the cited invention, however the degree or extent of the
effect in the claimed invention is significantly improved relative to the
claimed invention.
Is the
advantageous effect remarkable or could a person skilled in the art have easily
arrived at the claimed invention based on the cited invention(s)? In the case
of the former, a judgment that there is inventive step may be rendered.
The advantageous
effect is described within the specification or can be clearly and
unambiguously inferred from the description or drawings.
In some fields,
the effect of an invention can be predicted from its structure. In such cases,
the effect is not so much a factor in whether the structure could have easily
been produced by a person skilled in the art. In fields such as chemistry,
where the effect of the claimed invention cannot be easily determined based solely
on the structure of the compound, etc., a separate statement describing that the
compound has an advantageous effect is necessary in order to indicate that
there is indeed an inventive step.
If the effect is
within the range which would be anticipated by a person skilled in the art,
then the effect does not support the presence of an inventive step.
If the effect of newly
derived Compound X is remarkable relative to that of the conventional Compound
X, the claimed invention has an inventive step over the cited invention(s),
provided that the effect could not have been easily anticipated by a person
skilled in the art with reference to the cited invention(s).
If the advantageous and
remarkable effect is only brought about by the combination of the constituent
components and the combination of the constituent features and the effect brought
about thereby could not have been easily anticipated by a person skilled in the
art even though the cited invention(s) may disclose each of the constituent
components, the claimed invention has inventive step.