The Japanese Patent Office (JPO) has issued the “Examination Guidelines for Patent and Utility Model in Japan” to facilitate better understanding of the examination practice in the JPO.  The guidelines were first issued in 1994 and amended several times to keep abreast of the advancing technology.

The last revision was made in December 2000, which is available in English at http://www.jpo.go.jp/quick_e/index_tokkyo.htm.

The latest amendments mainly concern the examination of claims limiting the claimed product in terms of “parameter,” “function,” “process” or “result.”

The description requirement under Japanese Patent Law is somewhat unique, and to acquaint the readers with the current practices to be able to appropriately respond to the requirement, we introduce below some of the important aspects

Examination of claims defined by “result,” “function” or “parameter”

• Clarity of Claims (Section 36, Para. 6, No. 2)
• Enablement (Section 36. Para. 4)

Briefly, the JPO accepts a claim wherein the claimed product is defined in terms of “parameter,” “function” and/or “process,” if it is recognized in the light of the specification that it is impossible to adequately define the claimed product other than by features of “parameter,” “function” and/or “process,” provided that the actual figure of the claimed product can be identified based on the claim recitation and in the light of the text of specification.

A claim wherein the claimed product is solely defined by “the result to be achieved by the invention” is not acceptable.

With respect to enablement, the specification has to sufficiently provide the Working Examples which support the FULL scope of the claims.

Applicant is also required to distinguish the claimed product defined in terms of “parameter,” “function” and/or “process” from prior art products not defined in terms of those criteria.

The JPO has prepared updated “Examination Examples” to facilitate easy understanding of the basic concept of the requirements to help applicants learn through examples of hypothetic cases how the objections could be overcome in each case study.  In the following, the Examination Guidelines are explained according to the “Examination Examples.”