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.
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.