Description Requirements.doc1
SPECIFICATION
Anyone seeking a patent must submit a request, with the specifications, necessary drawings, and abstracts attached, to the Commissioner (Patent Law Section 36 (1) and (2)). Matters to be described in the specifications are provided under the Patent Law Section 36 (3) and contents to be stated in “detailed explanation of invention” and “scope of claims” (hereafter referred to as “description requirements for patent specifications”) are provided in Section 36 (4), (5), and (6). Requirements for when a person applies for two or more inventions in one request (hereafter referred to as “requirements for unity of invention”) are provided under Patent Law Section 37.
Description requirements for patent specifications is explained in Chapter 1 and requirements for the unity of invention is explained in Chapter 2.
CHAPTER 1 Description Requirements for Patent Specifications
1.Object of Specification
The object of Patent System is to encourage inventions by promoting their protection and utilization so as to contribute to the development of industry (Patent Law Section 1).
Namely, Patent System promotes protection of inventions by granting a patent right or exclusive right under certain conditions for a certain period of time to those who have developed and disclosed new technology, while it gives the public an opportunity to gain access to the invention by disclosing technical details of the invention. The protection and utilization of an invention as described above are promoted through a patent specification which serves both as a technical document disclosing technical details of an invention and as a document of title defining the technical scope of a patented invention accurately.
Description requirements for the”detailed description of invention”in a specification are provided under Patent Law Section 36(4), and description requirements for the “scope of claim”are provided under Patent Law Section 36(5) and (6). Only a specification that meets these description requirements serves both as a technical document and as a document of title.
2. Description Requirement for the Scope of Claim
The description of the scope of claims is significant, as the technical scope of the patent invention is based on itself. When the scope of claims does not comply with description requirements for, the rights may unjustly restrict the third party, and the patentee must deal with an unnecessary dispute themselves. Therefore, this point should be given due consideration when examining description requirements for the scope of claims.
2.1 Patent Law Section 36(5)
The scope of claim under paragraph (3)(iv) shall be separated into claim(s) each of which states all of matters that the patent applicant deems necessary to define the invention for which a patent is sought. This shall not prohibit the descriptions of the scope of claim to be such that an invention claimed in one claim is identical with an invention claimed in another claim.
(1) The first sentence of Section 36(5), therefore, provides that matters which the applicant deems necessary to define the invention for which a patent is sought be stated in the scope of claim without excess or shortage, so that (s)he neither states unnecessary matters nor omits necessary matters.
Since it is the applicant who determines to seek a patent for what invention, this Section sets forth that the applicant shall state in the claim all of matters the applicant himself/herself deems necessary to define the invention for which a patent is sought.
The second sentence of the revised Section 36(5) is the same as the previous Section 36(6). This is provided in order to assure to refrain from the first sentence being misunderstood that an invention must be defined by a single claim.
(2) Section 36(5) also makes clear the nature of claims. By clearly providing that it is in a claim that an applicant states matters which (s) he deems necessary to define the invention for which a patent is sought, this Section makes clear that the scope of the patent invention be determined based on the description of the claim and that the subject of examination be the invention identified based on the description of the claim.
(3) Since it should be at the applicant's own volition to determine whether matters stated in a claim are necessary and sufficient to define the invention for which a patent is sought, it is not proper for the examiner to determine that any matter stated by the applicant as necessary is unnecessary or that further matters are necessary in addition to those stated by the applicant as sufficient. For this reason, Section 36(5) is not made a basis for rejection of an application, opposition to a patent nor invalidation of a patent.
(4) The scope of claim must be separated into one or more claims each of which sets forth “matters which the applicant deems necessary to define the invention for which a patent is sought”. A claim constitutes a basic unit for the determination of patentability (Patent Law Sections 29, 29bis, 39 and 32), effect of patent right (Section 68), abandonment of patent right (Section 97), filing of patent opposition (Section 113), demanding of trial for invalidation (Section 123), registration fees (Sections 107 and 195), etc.
2.2 Patent Law Section 36(6)
The descriptions of the scope of claim under paragraph (3)(iv) shall comply with each of the following paragraphs:
(i) the invention for which a patent is sought is the one described in the detailed description of invention;
(ii) the invention for which a patent is sought is clear;
(iii) descriptions of each claim are concise; and
(iv) descriptions are as provided in an ordinance of the Ministry of International Trade and Industry.
2.2.1 Patent Law Section 36(6)(i)
(1) To state in a claim an invention which is not described in the detailed description of invention means to seek a patent protection for an invention which is not disclosed to the public. Section 36(6)(i) is intended to prevent this happening. This paragraph is kept unchanged from the provision of the previous Section 36(5)(i).
(2) A determination on whether an invention for which a patent is sought is “the one described in the detailed description of invention” should be made based on whether a matter corresponding to what is claimed is written in the detailed description of invention.
Thus, where a matter corresponding to what is claimed is not written in the detailed description of invention, it constitutes a violation of Section 36(6)(i).
Here, ”not written” means the following cases:
1) it is clear for a person skilled in the art (see Chapter) that a matter corresponding to what is claimed is neither stated nor implied in the detailed description of invention, or
2) terms used in the claims and those used in the detailed description of invention are inconsistent for a person skilled in the art, and as a result, the relation between the claim and the detailed description of invention is unclear.
Namely, if what is claimed could be understood from the detailed description of invention and implications, the examiner should not deem that a matter corresponding to what is claimed is “not written” in the detailed description of invention.
2.2.1.1 Typical Examples of Violation of Section 36(6)(i)
(1) It is clear for a person skilled in the art that a matter corresponding to what is claimed neither stated nor implied in the detailed description of invention.
Ex 1: A claim has a numerical limitation while any specific numerical value is neither stated nor implied in the detailed description of invention.
Ex 2: A claim is solely directed to an invention using an ultrasonic motor while the detailed description of invention states only the embodiment of the invention using a D.C. motor and it neither states nor implies anything about using an ultrasonic motor.
(2) Terms used in the claims and those used in the detailed description of invention are inconsistent for a person skilled in the art, and as a result, the relation between the claim and the detailed description of invention is unclear.
Ex 3: It is unclear whether the “data processing means” of a word processor stated in the claims corresponds to the “means for changing the size of characters,” the “means for changing line spacing” or both of them which are stated in the detailed description of invention.
2.2.2 Patent Law Section 36(6)(ii)
(1) Where an invention for which a patent is sought cannot be clearly identified on the basis of descriptions of each claim, one cannot find a claimed invention which is a subject of examination on patentabilility such as novelty or inventive step, etc. nor such a specification can serve as a document of title defining the technical scope of a patented invention.
Section 36(6)(ii) is intended to prevent from this happening and to make it clear that descriptions of scope of claims should be such that an invention can be clearly identified from one claim. Therefore, if a claim is not stated clearly enough to identify an invention and determination of patentability cannot be made, it constitute a violation of this paragraph.
(2) The invention is found based on matters to define the invention for which a patent is sought by an applicant (hereafter referred to as “matters to define the invention”) on the basis of descriptions of the claim, under the provision of Section 36 (5). Where, in interpreting the implications and contents of the matters to define the invention, not only the description of the claim but specifications excluding the scope of claims (in the explanation related to each paragraph of Section 36, referred to as “specifications excluding the scope of claims” but hereafter referred to as “specifications” for convenience) and descriptions of drawings and common general knowledge (see Chapter) as of the filing (or the prior date if the priority is lawfully claimed, hereinafter the same.) may also be taken into consideration.
In finding an invention, an examiner should not examine items (terms) which are not stated in a claim. In contrast, the examiner must be sure to consider the items included in the claim.
(3) From the significance of the scope of claims, the scope (see Note) of invention can be clearly identified. Therefore, the descriptions of matters to define the invention should be clearly identified as a premise.
(Note): The scope of invention means the scope of items coming under the invention.
(Points to be noted)
1) In the light of the spirit of the provision that “a patent applicant can define the invention for which a patent is sought” under Section 36 (5), the applicant can use various expressions in the claim to define “an invention of a product”, by means of function, work, property, characteristics, process, use, etc, as well as by means of such conventional expressions as combinations of tangible components or structural limitations.
Likewise, an applicant should be permitted to define “an invention of a process (a certain action or operation which involves a certain time-scale)” by means of a product used for the action or operation, use of a product, etc. as well as by means of such conventional expressions as combinations of process steps (action or operation).
2) On the other hand, under the provision of Section 36 (6) (ii), claims are described so that an invention should be clearly identified from a claim.
Therefore, attention must be drawn to the fact that definition of the invention using the various expressions mentioned above is allowed only when the invention is clear.
For example, in a technical field (e.g. chemical substance) where the predictability of correlation between work, characteristics, etc. of a product and structure is low, attention must be drawn to the fact that such a scope of invention might be unclear when a claim includes descriptions to define a product by its work, characteristics, etc.
2.2.2.1 Typical Examples of Violation of Section 36(6)(ii)
Typical examples of violations of Section 36 (6) (ii) are described below:
(I) The description of matters to define the invention is unclear.
(1) The invention is unclear resulting from the description of the claim itself being unclear.
An example is a case where a claim includes descriptions inadequate as Japanese language expression such as errors or unclear description, thereby a invention is made unclear, except for the case that defects in the descriptions of scope of claims are minor and do not place the invention unclear to a person skilled in the art.
(2) The invention is unclear as a result of the content of matters to define the invention being inconsistent with one another, being defined in a technically incorrect way, or the technical concept and technical relation being difficult to understand.
1) The content of matters to define the invention stated in a technically incorrect way:
Ex 1: “Alloy composed of 40 to 60wt. % A, 30 t0 50wt. % B, and 20 to 30wt. % C” (In this descriptions of scope of claim, the total sum of the maximum amount of component A and the minimum amounts of components B and C exceeds 100wt. % and includes technically incorrect descriptions.)
2) Where descriptions in a claim are deemed clear by itself, the examiner should examine whether a term in the claim is defined or explained in the specification (excluding claims) and drawings, and evaluate whether such definition or explanation, if any, makes the descriptions of scope of claims unclear.