JURISDICTION REPORT: JAPAN JPO EXAMINATION GUIDELINES REVISED
Ryo Maruyama Kyosei International Patent Office
Te Japanese Patent Office (JPO) Examination Guidelines have been revised regarding Section 1 paragraph 1: Te Description Requirements of a Specification and Claims (DRSC). Te guidelines set forth the JPO’s basic ideas in applying patent law and other related laws in order that examination procedures are conducted in a fair and efficient manner in accordance with certain criteria. Tose criteria have also been used as not only standards of judgment in the course of examination procedures but also as guides for applicants to manage patents.
Patent applications must meet the DRSC in terms of specifications and claims (for example, the invention by which a patent is sought must be clear), and unless such requirements are satisfied, a patent is not allowed to the applicant. Tis revision intends to clarify the description of the guidelines, so that the JPO’s examiners can make uniform and reasonable judgments concerning the examination of the description requirements, and mutual understanding between examiners and applicants can be further enhanced. Te revised guidelines will be applied to the examination procedures aſter October 1, 2011.
Revision of the DRSC examination guidelines Revision of Section 1 paragraph 1: Te DRSC of the Examination Guidelines (the Description Requirements) had been studied in the Industrial Structure Council, Intellectual Property Policy Committee, Patent System Little Assembly and the Examination Guidelines subcommittee of experts, from September 2010.
Te draſt of the revised guidelines was prepared in the wake of discussions in the subcommittee and public comments were solicited from the public (June 22 through July 21, 2011). Based on the above outcome, the guidelines regarding the Description Requirements will be revised.
Te guidelines subcommittee of experts is a committee which periodically reviews the guidelines, consisting of judicial people, patent attorneys, jurists, economists, scientists, business people and so forth. Te committee was set up in November 2010 in order to increase the transparency of review procedures concerning the guidelines, to allow the guidelines to cope with tends of technology and industry internationally, and to contribute to harmonisation of judgment among JPO’s examinations, JPO’s trials and court trials.
Key points of the revision Te guidelines will be revised:
(1) In view of opinions that some examinations of the Description Requirements are unnecessarily strict or that the examinations of the Description Requirements vary by examiners, the JPO will clarify the judgment method for violation of the Description Requirements.
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(2) In view of opinions that in some cases a notification of reasons for refusal does not include specific reasons why an application violates the Description Requirements, and therefore it is difficult for the applicant to find a measure for overcoming the reasons for refusal, and that the JPO should clearly set forth how an applicant should cope with the notification of reasons for refusal in order to overcome those reasons for refusal, the JPO will clarify the descriptions regarding the content an examiner should include in a notification of reasons for refusal and countermeasures an applicant can take in response to such a refusal.
(3) Explanations using specific cases regarding the above items (1) and (2) will be enriched.
Based on the above, the JPO expects that uniform and reasonable judgments concerning the examination of the Description Requirements will be made and mutual understanding between examiners and applicants can be further enhanced. We also feel relief that our clients would not receive too much strict office action from the JPO and bear the burden of explaining conflicted contents.
Ryo Maruyama is a patent attorney and vice president of Kyosei International Patent Office. He can be contacted at:
kyosei@tkc.att.ne.jp
World Intellectual Property Review November/December 2011
www.worldipreview.com
“THIS REVISION INTENDS TO CLARI FY THE GUIDELINES, SO THAT THE JPO’S EXAMINERS CAN MAKE UNIFORM AND REASONABLE JUDGMENTS CONCERNING THE EXAMINATION OF THE DESCRIPTION REQUIREMENTS.”
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