As announced on 16 September 2015, the revised ‘Examination Guidelines for Patent and Utility Model in Japan’ (henceforth ‘Revised Examination Guidelines’) and the revised ‘Examination Handbook for Patent and Utility Model in Japan’ (henceforth ‘Revised Examination Handbook’) has been be applied to the examination of patents and utility models on or after 1st October 2015.
The ‘Revised Examination Guidelines’ are explained below.
The basic principles for this revision are:
So that case studies and court cases can be suitably added and updated, these have been moved to the ‘Revised Examination Handbook’, together with the former ‘Examination Guidelines for Specific Technical Fields’ (e.g. computer software, biological, and medical related fields).
Some of the major points of revision related to the examination proceedings in the ‘Revised Examination Guidelines’ are mentioned as follows.
In relation to the Clarity of Claims Requirement:
In relation to Novelty and Inventive Step:
The aforementioned major points of revision are divided into three sections (which correspond to Part I, Part II and Part III in the Guidelines), which are further explained in detail as follows.
NB: Sonderhoff & Einsel Law and Patent Office have underlined as required the below sections of the ‘Revised Examination Guidelines’.
The basic principle of examination has been clarified as: ‘On the premise that it is primarily the burden of the applicant, etc. to proceed with the prescribed procedures to obtain the patent right taking his/her own initiatives, the examiner should take into account the purport of establishment of high-quality patent right.’
Furthermore, the following procedures in relation to the examination, which are regarded to be more ‘applicant friendly’, have been added.
a) Regarding the subject of prior arts search:
‘The examiner takes into consideration the matters reasonably expected to be added to claims by an amendment as the subject of search, in view of the efficiency of the examination procedures until a decision to grant a patent is rendered.’ (Refer to 2.2 (2) in Section 2, Chapter 2, Part I); and
‘The examiner should give due consideration such that the least number of inventions are excluded from the subject of prior art search’ (Refer to 2.3 in Section 2, Chapter 2, Part I).
b) Regarding procedures when a reason for refusal has not been overcome:
In principle, a Decision of Refusal is issued.
However, ‘even when the notified reasons for refusal are unresolved, when it is determined that the examiner can show countermeasures available for the applicant to resolve the reasons for refusal and that it is likely to reach an agreement with the applicant for taking such countermeasures, the examiner shall communicate with the applicant and notify reasons for refusal if an agreement is reached. This notice of reasons for refusal shall be in principle issued as a “Final Notification of Reasons for Refusal”.’ (Refer to 3 in Section 5, Chapter 2, Part I).
It is explained that a ‘Final Notification of Reasons for Refusal’ could be issued also in the Internal Reconsideration Examination for similar cases (refer to 2. in Section 7, Chapter 2, Part I).
c) Regarding suggestions for amendments and divisional applications:
If the Examiner is able to indicate a way for the Applicant to respond in order to overcome the reasons for refusal, the Examiner shall proactively suggest to the Applicant any amendments or recommendation to file divisional applications etc.‘
(refer to 2.1 in Section 8, Chapter 2, Part I)
a) Regarding the Sufficiency of Disclosure Requirement and Support Requirement:
(1) The correlation between the Sufficiency of Disclosure Requirement and Support Requirement has been clarified.
‘Both requirements are different in their contents and also in gist thereof’ (refer to 4.1.2 in Section 1 in Chapter 1, Part II).
(2) When a reason for refusal is issued for not satisfying the Sufficiency of Disclosure Requirement or the Support Requirement, it has been set forth that it would not be appropriate for [the examiner] to ‘argue based only on a general argument such as “it is difficult make a prediction in the relevant technical field” without specific explanation of reasons, because this may make it difficult for the applicant to present effective counterarguments, or to understand the amendments to be made to overcome the reasons for refusal’ (refer to: 4.1.1 in Section 1, Chapter 1, Part II; and to 3.1.1 in Section 2, Chapter 2, Part II).
b) Regarding the Clarity of Claims Requirement:
(1) When there are expressions which render the scope unidentified:
It is explained [in these guidelines] that even if there are expressions which render the scope unidentified (e.g. expressions such as ‘about’, ‘roughly’, ‘approximately’, ‘substantially’ and ‘essentially’), it will not be immediately determined that the scope of an invention is unclear.
‘The examiner shall evaluate whether a person skilled in the art can understand the scope of a matter specifying the invention including the relevant expression by considering the description and drawings as well as the common general knowledge as of the filing.’ (refer to 2.2(5) in Section 3, Chapter 2, Part II).
(2) When an invention of a sub-combination is specified by a feature of ‘another sub-combination’:
Two types of unclear inventions are explained as follows.
(i) The case where the person skilled in the art cannot understand a feature of ‘another sub-combination’ based on the matter stated in a claim, even by considering the disclosure of the description and drawings, as well as the common general knowledge as of the filing, and as a result the invention is unclear.
(ii) The case where the person skilled in the art cannot clearly understand whether or how an invention of a sub-combination is specified by a feature of ‘another sub-combination’, even by considering the statements of the description and drawings as well as the common general knowledge as of the filing, and as a result the invention is unclear. (refer to 4.2 in Section 3, Chapter 2, Part II)
(3) When a process of production of a product is described in a claim for an invention of a product:
In light of the decisions of the Second Petty Bench of the Supreme Court of June 5, 2015 (case numbers 2012(ju)1204 and 2012(ju)2658) in the “pravastatin sodium” case, a revised procedure for [examining] the so-called product-by-process claim is explained [as follows in these guidelines].
‘When a production process of a product is described in a claim for an invention of a product, the description of such a claim can be said to satisfy the requirement that “the invention must be clearly described” in the claim solely in cases in which there were circumstances under which it was impossible or utterly impractical to directly define the product by its structure or properties at the time of filing the application. Otherwise, said invention of a product will be determined to be unclear.
The following can be mentioned as the aforementioned circumstances:
(i) where an analysis of the structure or property of the product was technically impossible at the time of filing; or
(ii) where, in view of the necessity to quickly file due to the nature of a patent application etc., a remarkably huge expenditure or amount of time would have been required to identify the structure or property of the product.
The Applicant can provide an explanation in the Detailed Description of the Invention, Written Argument etc. about the existence of the aforementioned circumstances.’
(refer to 4.3 in Section 3, Chapter 2, Part II)
Specific examples which fall under the aforementioned product-by-process claim and aforementioned circumstance may be found on items 2204 to 2205 of the ‘Revised Examination Handbook’.
The major points of revision in relation to novelty and inventive step are as follows.
a) It has been clarified [in the guidelines] that the basic idea of determining an inventive step is the comprehensive assessment of factors which do not support an inventive step, and factors which do support an inventive step.
1) ‘The examiner determines whether it can be reasoned that a person skilled in the art could have easily arrived at the claimed invention based on the prior art (hereinafter referred to as ‘reasoning’ in this Chapter), by adopting other prior art (hereinafter referred to as ‘secondary prior art’ in this Chapter) or considering the common general knowledge, in light of the various factors which do not support an inventive step (such factors are shown in the left column in the following Figure).
2) If the examiner determines that this reasoning is impossible based on the above step (1), he/she determines that the claimed invention has an inventive step.
3) If the examiner determines that the reasoning is possible based on the above step (1), he/she determines whether the reasoning is still possible by comprehensively assessing various factors, which includes factors which support an inventive step (such factors are shown in the right column in the following Figure).
4) If the examiner determines that the reasoning is impossible based on the above step (3), he/she determines that the claimed invention has an inventive step.
If the examiner determines that the reasoning is possible based on the above step (3), he/she determines that the claimed invention does not have an inventive step.’
(Refer to 3. in Section 2, Chapter 2, Part III).
b) It has been explained in these guidelines that the examiner will determine viewpoints for motivation as shown as (1)-(4) in the Figure by comprehensively consideration.
‘It is determined whether or not there is motivation for applying the secondary prior art to the primary prior art by comprehensively considering the viewpoints (1) to (4) in the above Figure: (1) Relation of technical fields; (2) Similarity of problems to be solved; (3) Similarity of operations or functions; and (4) Suggestions shown in the content of prior art. The examiner should note that it is not always possible to determine whether there is motivation by paying attention to only one of these viewpoints.’
It is particularly stated in regards to (1) ‘Relation of technical fields’, that in principle, ‘other viewpoints for motivation must be taken into consideration.’ (Refer to 3.1.1 in Section 2, Chapter 2, Part III).
c) It has been clarified [in the guidelines] that an obstructive factor is taken into consideration as a factor which supports an inventive step.
‘A factor which obstructs the application of the secondary prior art to the primary prior art (obstructive factor) supports the existence of an inventive step. However, if it is sufficiently reasoned that a person skilled in the art would easily conceive the claimed invention even after considering the obstructive factor, then the claimed invention does not have an inventive step. The following secondary prior art can be mentioned as examples of obstructive factors.
(i) secondary prior art which is applied to the primary prior art, whereupon the primary prior art cannot achieve its purpose
(ii) secondary prior art which is applied to the primary prior art, whereupon the primary prior art cannot function
(iii) secondary prior art which is considered to be excluded from the primary prior art, and unable to be adopted by the primary prior art
(iv) secondary prior art which a person skilled in the art would not apply due to a publication disclosing that the secondary prior art is inferior to the other embodiment with respect to operations and effects of the primary prior art’ (Refer to 3.2.2 in Section 2, Chapter 2, Part III).
d) Matters to bear in mind in determining an inventive step
Matters to bear in mind in relation to hindsight, object of the primary prior art etc., well-known technique, secondary considerations etc. have been clarified.
1) Regarding hindsight
‘The examiner should take note to avoid hindsight after acquiring knowledge of the claimed invention to determine an inventive step, such as in the following cases (i) or (ii).
(i) The examiner assumes that a person skilled in the art would have easily arrived at the claimed invention.
(ii) During determination of the cited invention, the examiner became influenced of the claimed invention.
2) Regarding the object etc. of the primary prior art:
‘The examiner will generally select the primary prior art which is same as or close to the claimed invention from the aspect of technical field or problem to be solved.
The primary prior art of which technical field or problem to be solved is considerably different from that of the claimed invention is likely to make the reasoning difficult. In this case, it should be noted that the examiner is required to reason more deliberately whether or not a person skilled in the art would arrive at the claimed invention starting from the primary prior art.
Moreover, where the problem to be solved of the claimed invention is novel …, and usually inconceivable by a person skilled in the art, may be a factor in support of the existence of an inventive step.’
3) Regarding well-known technique:
‘The examiner should not fail to consider whether reasoning is possible (i.e. to consider whether there is a factor teaching away from applying the well-known technique), merely because a given technique is well-known.’
4) Regarding secondary considerations:
‘The examiner may consider circumstances such as commercial success and attainment of a long felt need as a secondary consideration for supporting an inventive step. However, the Examiner may take this circumstance into consideration only when the examiner is convinced by the Applicant’s arguments and evidence that those circumstances are attributed only to the technical features of the claimed invention according to, and not to other factors such as sales promotion or advertisements and the like.’ (3.3 in Section 3, Chapter 2, Part III).
e) Examination manual for the determination of an invention and for the determination of the novelty thereof, when a description specifies an invention of a sub-combination by a feature relating to ‘another sub-combination’:
In this case, when it is understood that a structure, function etc. of a claimed sub-combination invention is specified by a feature of ‘another sub-combination’, ‘the Examiner shall find that the claimed sub-combination invention comprises such a structure, function etc.’. Moreover, the Examiner shall determine that this invention of a sub-combination has novelty when there is a difference between the invention of a sub-combination and a cited invention. (Refer to 4. in Section 4, Chapter 2, Part III).
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