CATALOGUE OF REMAINING DIFFERENCES(Version 1)

Categories used in the Catalogue of Differing Practices and their meaning
Category I

The difference in practice can be resolved by a decision taken by the
TO of its own motion (for example, administrative decisions, internal
instructions, guidelines)

Category II

The difference in practice requires consultation of and/or agreement by
a separate statutory body within the TO/regional organisation to beresolved (for example, implementing regulations)Category III

The difference in practice implies that a decision of a legislative nature
be taken before the difference in practice can be resolved (for example,
national Patent Acts, regional conventions or treaties)

Category IV

The change in practice is triggered by a judicial decision.

I.

APPLICATION AND ITS CONTENT AS A BASIS FOR CLAIM
INTERPRETATIONA.

Incorporation by reference / Subsequent filing of missing parts
PCT reservations on Rule 20.8(a) and (b)

EPO
PCT

Reservations on PCT Rule 20.8(a) and (b): None

Legal basis

Incorporation by reference to an earlier application:
Art 80, Art 90, Rule 40 EPC
Subsequent filing of missing claims:
Art 90, Rule 57(c), Rule 58 EPC
Subsequent filing of missing parts in the description or missing drawings:
Art 80, Art 90, Rule 56 EPC

Category

Category II

In practice

Incorporation by reference (GL A-II, 4.1.3.1)
Instead of filing application documents, the applicant may file a reference
to a previously filed application according to Rule 40(1)(c). The previously
filed application relied on for the reference does not need to be claimed
as priority.
In order to qualify for a date of filing, the application must indicate thefollowing details on the filing date: (i) the filing date of the previous
application, (ii) its file number, (iii) the office where it was filed, (iv) an
indication that this reference replaces the description and any drawings(Rule 40(2)). The previous application referred to may also be an
application for a utility model. The applicant must supply a certified copyof the previously filed application within two months of the filing date
(Rule 40(3)), subject to exceptions (see OJ EPO 4/2009, 236). If thepreviously filed application is not in an official language of the EPO, theapplicant must also file a translation into one of those languages within
two months of the filing date (Rule 40(3)), unless already provided to the1

EPO.
The applicant also has the option of indicating that he wishes the claimsof the previously filed application to take the place of claims in theapplication as filed. Such an indication must be made on the date offiling, preferably by crossing the appropriate box in the Request for Grant(Form 1001). If this indication is made, then the claims of the previously
filed application will form the basis for the search, and will satisfy therequirement of Rule 57(c), so that an invitation under Rule 58 to fileclaims later will not be issued.
If the applicant does not refer to the claims of the previously filed
application, but refers only to the description and any drawings thereof,
he may at the same time as filing the reference (i.e. on the date of filing),
file a set of claims. If the applicant does not do so, he will be invited by
the EPO to file claims.
Subsequent filing of missing claims (GL A-III, 15)
For the purposes of obtaining a date of filing it is not necessary for theEuropean application to contain any claims. The presence of at least one
claim is nonetheless a requirement for a European application according
to Art. 78(1)(c), but a set of claims can be provided after the date of filingas follows:
If the application on filing contains neither at least one claim, nor any
indication that the claims of the previously filed application referred to on
filing shall take the place of claims in the application as filed, theapplicant shall file the claim(s) within two months after the EPO has
invited him to do so under Rule 58. If the applicant fails to do so within
this period, the application is refused according to Art. 90(5). The
applicant may also file the missing claims of his own motion after thefiling date, but before the EPO invites him to do so under Rule 58.
If the application was filed by means of a reference to a previously filed
application in accordance with Rule 40(3) and the applicant indicated on
the date of filing that the claims of the previously filed application were to
take the place of claims in the application as filed, then, provided thepreviously filed application also contained claims on its date of filing,claims were present on the European date of filing and nocommunication under Rule 58 will be sent.
Claims received after a date of filing has been accorded are neverconsidered as part of the application as filed. As a consequence, theymust meet the requirements of Art 123.
Subsequent filing of missing parts in the description or missing
drawings (GL A-II, 5)
Under Rule 56(1) and (2), the applicant may file missing parts of thedescription or missing drawings after the date of filing, either of its own
motion and within two months of the date of filing or on invitation of the
EPO within two months from of that invitation. In both cases, theapplication will be re-dated to the date of filing of the missing parts. It is tobe noted that under Rule 56, only whole figures will be accepted, even
where only a part of the original figure was missing.
Re-dating can be avoided under Rule 56(3) if the missing parts of thedescription or missing drawings are based on and completely containedin a priority document, and the latter is filed at the very latest together
with the missing parts, together with a translation where applicable (GLA-II, 5.4).
Re-dating can also be avoided if the applicant withdraws missing parts of2

the description or missing drawings which are either not based on aclaimed priority, or based on a claimed priority, but the requirements ofRule 56(3) are not met (GL A-II, 5.5)

JPO
PCT

Reservations on PCT Rule 20.8(a) and (b)Legal basis

Regulations under the PCT Rule 20.8
Regulations under the Patent Act Article 38-2-2Category

Category II, III

In practiceReservations on Rule 20.8(a) and (b) of the Regulations under the PCT
apply in the JPO.
“(1) The Commissioner of the Patent Office shall notify the applicant ofinternational patent application, for which the international filing date has
been accorded pursuant to Rules 20.3 (b)(ii) and 20.6(b) of theRegulations under the Patent Cooperation Treaty (hereinafter referred toas the “Regulations”), that the international filing date of suchinternational patent application shall be determined as the international
filing date accorded under one of provisions from among Rules 20.3(b)(i), 20.5(b) and 20.5(c) of the Regulations.
(2) The applicant of international patent application may submit
observations only within the time limit specified by the notification fromthe Commissioner of the Patent Office pursuant to the preceding
paragraph.
(4) The applicant of international patent application may request, only
within the time limit under paragraph (2), among the international patentapplication under paragraph (1), and with regard to description, claim(s)or drawings which have been determined as being included in suchinternational patent application pursuant to Rule 20.5(c) of theRegulations, that such description, claim(s) or drawings are not includedin the said international patent application.
(6) Where the request has been made pursuant to paragraph (4), theCommissioner of the Patent Office shall treat the description, claim(s) or
drawings involved in such request as being not included in theinternational patent application and determine, notwithstanding thenotification under paragraph (1), the international filing date of suchinternational patent application to be the international filing date accorded
under one of provisions from among Rules 20.3(b)(i), 20.5(b) and 20.5(c)of the Regulations.” (Regulations under the Patent Act Article 38-2-2(1),(2), (4), (6))

KIPO
PCT

Reservations on PCT Rule 20.8(a) and (b)Legal basis

Patent Act Article 42
Patent Act Article 47

Category

Category III

In practice

Rule 20.5 and 20.6 is reserved in KIPO under the PCT Rule 20.8(a) and(b)
1. Incorporation by reference is not allowed
Patent Act Article 42 paragraph (2)A person to obtain a patent shall file a written patent application3

accompanied by an abstract, drawing(s) (if necessary) and a description
stating (i) the title of the invention, (ii) a brief explanation of thedrawing(s), (iii) a detailed description of the invention and (iv) the scopeof claims.
2. Subsequent filing of missing parts only for the scope of claims
Patent Act Article 42 paragraph (5), (7)(5) Notwithstanding paragraph (2), a patent applicant may, at the time theapplication is filed, attach the description, from which the scope of claims
under paragraph (2)(iv) are omitted, to the written patent application. In
such cases, the applicant shall amend the description to include thescope of claims by either of the following deadlines: (i) the date marking
the elapse of one year and six months from the date that falls under anyof the subparagraphs of Article 64(1); or (ii) the date marking the elapseof three months from the date on which notification is given under Article
60(3) for a request to examine a patent application before the deadline
stipulated in subparagraph (i) of this paragraph (however, where thenotification is given more than one year and three months after the datethat falls under any subparagraph of Article 64(1), the date marking theelapse of one year and six months from that date).
(7) Where a patent applicant has filed a patent application but fails to
subsequently amend the description to include the scope of claims by therelevant deadline stipulated in subparagraph (5)(i) or (ii), the application
is deemed to have been withdrawn on the date immediately following therelevant deadline.
3. Scope of amendment
Patent Act Article 47 paragraph (2)(2) An amendment to the description or drawing(s) shall be made within
the scope of the matters disclosed in the description or drawing(s)originally attached to the written patent application.

SIPO
PCT

Reservations on PCT Rule 20.8(a) and (b)Legal basis

Art 33; Rule 101(2)Category

Category III

In practiceAn applicant may amend his patent application documents, provided thatthe amendment to the invention or utility model patent application
documents does not exceed the scope specified in the original written
descriptions and claims, or that the amendment to the design patentapplication documents does not exceed the scope shown in the original
drawings or pictures. (Art 33）
For any international application filed under the Patent Cooperation
Treaty designating China (hereinafter referred to as the international
application), the requirements and procedures for entering the phase ofprocess conducted by the patent administration department under theState Council (hereinafter referred to as entering the Chinese national
phase), the provisions prescribed in this chapter shall apply. Where noprovisions are made in this chapter, the relevant provisions in the Patent
Law and in any other chapters of these Implementing Regulations shallapply.(Paragraph 2, Rule 101)
According to the provisions of the PCT Regulations, where someelements or parts, which are missing when the applicant files theinternational application, they may be incorporated by reference of the4

corresponding parts in the earlier application, and the original filing dateshall be retained. Here, “elements” refer to all the description or claims,
and “parts” refer to part of the description, part of claims or all or part ofdrawings.
As China makes reservations to the above provisions of the Treaty andits Regulations, when the international applications enters the Chinese
national phase, where the original international filing date is retained
through incorporating the missing elements or parts by reference fromearlier application, the Patent Office shall not recognized it.
For the application documents which contain the elements or parts
incorporated by reference, where, at the time of going through theformalities for entering the national phase, the applicant indicates it in theentering statement and requests to amend the filing date for China, theelements or parts incorporated by reference can be retained in theapplication documents. The examiner shall redetermine the filing date in
China based on the records in the Notification on Decision ofConfirmation of Incorporation by Reference of Element or Part (Form
PCT/RO/114) delivered by the International Bureau, and issue theNotification of Redetermination of the Filing Date. With regard to theapplication whose filing date exceeds twelve months from priority date
due to redetermination of the filing date, the examiner shall issue theNotification that Claim to Priority Deemed Not to Have Been Made in
respect of the relevant priority claim. For the application documents
which contain the elements or parts incorporated by reference, where, atthe time of going through the formalities for entering the national phase,the applicant does not indicates it, or does not request to amend the filingdate in China, the elements or parts incorporated by reference are notpermitted to be retained in the application documents. The examiner shallissue the Notification to Make Rectification to notify the applicant todelete the elements or parts incorporated by reference. Where no
rectification is made within the time limit, the examiner shall issue theNotification that Application Deemed to be Withdrawn. The applicant
cannot request to retain the elements or parts incorporated by referenceby the means of requesting to amend the filing date in China insubsequent procedures.(Guidelines Part III Chapter 1 Section 5.3)
If the applicant indicates in entering statement that there are elements orparts incorporated by reference in the application documents and thefiling date for China has been redetermined in the preliminary
examination stage, the elements or parts incorporated by reference shallbe considered as part of the application documents originally submitted.
The applicant shall not be permitted to retain the elements or parts
incorporated by reference by the means of requesting to amend theinternational application date for China in the process of substantive
examination. (Guidelines Part III Chapter 2 Section 3.2)

USPTO
PCT

An international application which claims priority to an earlier application
may contain a statement incorporating by reference all or part of thedescription, claims, or drawings of such earlier application, subject tolater confirmation within a certain time limit. See PCT Rules 4.18 and20.6. The USPTO has not made a reservation under PCT Rule 20.8.

Legal basis

35 U.S.C. 112; 37 CFR 1.53 and 1.57

Category

Category III

5

In practiceAn application must be complete in and of itself at the time of filing inorder to comply with the disclosure requirements of 35 U.S.C. 112.
However, USPTO practice does permit an applicant to incorporatematerial into the specification by reference to patents, patent applications
and publications. The criteria for incorporation of material set forth in 37
CFR 1.57(b) and MPEP 608.01(p) depend upon whether the material isconsidered "essential" or "nonessential".
"An application for a patent when filed may incorporate 'essential
material' by reference to (1) a United States patent or (2) a U.S. patentapplication publication, which patent or patent application publication
does not itself incorporate such essential material by reference.
'Essential material' is defined as that which is necessary to (1) provide awritten description of the claimed invention, and of the manner or processof making and using it, in such full, clear, concise and exact terms as toenable any person skilled in the art to which it pertains, or with which it ismost nearly connected, to make and use the same, and set forth the bestmode contemplated by the inventor of carrying out the invention as
required by 35 U.S.C. 112, 1st paragraph, or (2) describe the claimed
invention in terms that particularly point out and distinctly claim theinvention as required by 35 U.S.C. 112, 2nd paragraph, or (3) describe
the structure, material or acts that correspond to a claimed means or stepfor performing a specified function as required by 35 U.S.C. 112, 6th
paragraph. See 37 CFR 1.57(c) and MPEP 608.01(p).
Nonessential material may be incorporated by reference to U.S. patents,
U.S. patent application publications, foreign patents, foreign publishedapplications, prior and concurrently filed commonly owned U.S.
applications, or non-patent publications. An incorporation by reference byhyperlink or other form of browser executable code is not permitted. See
37 CFR 1.57(d).
Although the filing date of an application is the appropriate reference
point in determining whether the application was submitted with anenabling disclosure an original incorporation by reference of essential
material may be cancelled and the actual material referenced by theincorporation inserted into the pending application, for example, if
applicant comes to believe that the incorporated material is not available
to the public.
The amendment adding the previously incorporated material must be
accompanied by a statement that the material being inserted is thematerial previously incorporated by reference and that the amendment
contains no new matter. See 37 CFR 1.57(f).
37 CFR 1.57(a) provides that, if all or a portion of the specification or
drawing(s) is inadvertently omitted from an application, but theapplication contains a claim under 37 CFR 1.55 for priority of a prior-filed
foreign application, or a claim under 37 CFR 1.78 for the benefit of aprior-filed provisional, nonprovisional, or international application, thatwas present on the filing date of the application, and the inadvertently
omitted portion of the specification or drawing(s) is completely containedin the prior-filed application, the claim for priority or benefit shall beconsidered an incorporation by reference of the prior-filed application as
to the inadvertently omitted portion of the specification or drawings. See
MPEP 201.17.
Incorporation by reference to a specific figure or table in a claim ispermitted only in exceptional circumstances where there is no practical
way to define the invention in words and where it is more concise to do6so.
An executed oath or declaration and any fees due may be filed
subsequent to the filing date of the application if submitted with thepayment of an applicable surcharge within the time period set forth by the
USPTO.
If an application omits pages of the specification or drawings and suchitems cannot be added by 37 CFR 1.57(a) (incorporation by reference
from a priority application), the filing date of the application will be thedate on which the omitted page(s) are submitted.

I.

APPLICATION AND ITS CONTENT AS A BASIS FOR CLAIM
INTERPRETATION

B.

Insertion into the statement of prior art of references discovered
subsequently
PCT reservation (PCT/GL/ISPE - Appendix A4.05)

EPO
PCT

PCT/GL/ISPE Appendix A4.05, Alternative A4.05[1]Legal basis

Art. 123(2), Rule 42 EPC

Category

Category II

In practice

The insertion into the statement of prior art of references to documents
identified subsequently, for example by the search report, should be
required, where necessary, to put the invention into proper perspective.
The subsequent inclusion of such a summary in the description does notcontravene Art. 123(2) (T 11/82, OJ 12/1983, 479;). For instance, while
the originally filed description of prior art may give the impression that theinventor has developed the invention from a certain point, the cited
documents may show that certain stages in, or aspects of, this allegeddevelopment were already known. In such a case the examiner should
require a reference to these documents and a brief summary of therelevant contents.
The subsequent inclusion of such a summary in the description does notcontravene Art. 123(2). The latter merely lays down that, if the applicationis amended, for example by limiting it in the light of additional informationon the background art, its subject-matter must not extend beyond thecontent of the application as filed. But the subject-matter of the European
patent application within the meaning of Art. 123(2) is to be understood –starting off from the prior art – as comprising those features which, in theframework of the disclosure required by Art. 83, relate to the invention(see also GL C-VI, 5.3).
References to the prior art introduced after filing must be purely factual.
Any alleged advantages of the invention must be adjusted if necessary in
the light of the prior art.
New statements of advantage are permissible provided that they do not
introduce into the description matter which could not have been deduced
from the application as originally filed (see GL C-VI, 5.3.4)
If the relevant prior art consists of another European patent application
falling within the terms of Art. 54(3), this relevant prior document belongs
to the state of the art for all Contracting States. This is the case even if
the two applications do not share any commonly designated State, or the7designation of commonly designated States has been dropped. (see IV,8). The fact that this document falls under Art. 54(3) must be explicitly
acknowledged. Thus the public is informed that the document is not
relevant to the question of inventive step (see IV, 11.2). According toRule 165, the above also applies to international applications
designating EP, for which the filing fee pursuant to Rule 159(1)(c) has
been validly paid and, where applicable, the translation into one of theofficial languages has been filed (Art. 153(3) and (4)).

JPO
PCT

PCT/GL/ISPE Appendix A4.05, Alternative A4.05[1]Legal basis

Patent Act Article 17-2(3)Patent Act Article 36(4)(ii)
Patent Act Article 48-7
Guidelines Part I, Chapter 3, 4
Guidelines Part III, Section I, 5.2(1)Category

Category I

In practice“Except in the case where the said amendment is made through thesubmission of a statement of correction of an incorrect translation, any
amendment of the description, scope of claims or drawings underparagraph (1) shall be made within the scope of the matters described in
the description, scope of claims or drawings originally attached to theapplication(in the case of a foreign language written application under
Article 36-2(2), the translation of the foreign language documents asprovided in Article 36-2(2) that is deemed to be the description, scope ofclaims and drawings under Article 36-2(4) (in the case where theamendment to the description, scope of claims or drawings has been
made through the submission of the statement of correction of anincorrect translation, the said translation or the amended description,scope of claims or drawings)).” (Patent Act Article 17-2(3))“Where the person requesting the grant of a patent has knowledge of any
invention(s) (inventions as provided in Article 29(1)(iii), hereinafter thesame shall apply in this item) related to the said invention, that has been
known to the public through publication at the time of filing of the patentapplication, the statement shall provide the source of the information
concerning the invention(s) known to the public through publication suchas the name of the publication and others.” (Patent Act Article 36(4)(ii))“Where the examiner recognizes that a patent application does notcomply with the requirements as provided in Article 36(4)(ii), theexaminer may notify the applicant of the patent thereof and give the said
applicant an opportunity to submit a written opinion, designating anadequate time limit for such purpose.” (Patent Act Article 48-7)“An examiner carries out judgment on requirements for disclosure of
information on prior art documents under Article 36(4)(ii) from theviewpoint of whether or not the information on prior art documents
relating to the invention for which a patent is sought is stated properly orin the detailed description of the invention. The typical cases in which thenotification under the Article 48-7 can be carried out as the result that it
does not comply with the requirements for disclosure of information onprior art documents are shown in the following items.
(1) When the information on prior art documents is not described and in
addition, the reason is not described at all.
8

(2) When the information on prior art documents is not described and thereason is described, however, it is recognized that the probability that an
applicant knows the invention described in a publication relating to theinvention for which a patent is sought at the time of filing is high.
Example: When the information on prior art documents is not describedand as the reason, it is described that the prior art that an applicant
knows is not the one relating to the invention described in a publication,
however, the applications by the applicant are disclosed in great numbersin the technical field relating to the invention for which a patent is sought.
(3) When the prior art is described in a specification or drawing of theapplication for which a patent is sought but the information on prior art
documents corresponding to the prior art concerned is not described andthe reason is not described. (Note: The invention, which is described in a
specification or drawing of the application for which a patent is sought asa prior art shall be treated as the invention that the person who seeks apatent knows at the time of filing of the patent).
(4) When only the place of information on the invention described in a
publication not relating to the invention for which a patent is sought is
described, and it is recognized that the probability that an applicant
knows the invention described in a publication relating to the invention forwhich a patent is sought at the time of filing is high.
Example 1: When only the information on prior art documents on thematters not relating to the invention for which a patent is sought andbeing different in technical field or subject from the invention for which apatent is sought is described, in spite of the fact that the invention
described in a publication, which is identical in technical field and subject
to the invention for which a patent is sought is known widely in general.
Example 2: When the information on prior art documents on the oldinvention with less connection is described in spite of the fact that the
new invention described in a publication with high relevancy with theinvention for which a patent is sought is known widely in general.”(Examination Guidelines Part I, Chapter 3, 4)“<<The Guideline applied to the application whose filing date is on orafter January 1, 2009 (In case of divisional applications and converted
applications, the filing date is actual filing date.)>>To provide description of the information on prior art documents (titles ofpublications concerning a related invention and any other information
about location relating to an invention disclosed in prior publications) is
required by the provision of Article 36(4)(ii) of the Patent Act. An
amendment adding the information on prior art documents to the detailed
description of the invention and an amendment adding the content of
documents to the column of [Background Art] in the detailed descriptionof the invention are acceptable because they do not introduce any newtechnical matter. However, an amendment adding information on an
evaluation of an invention such as a comparison with the invention of theapplication, an amendment adding information to carry out the invention
or an amendment adding the content of prior art documents for the
purpose of eliminating flaws to meet the requirement of Article 36(4)(i) of
the Patent Act is not acceptable because it introduces new technicalmatter.

KIPO
PCT

PCT/GL/ISPE Appendix A4.05, Alternative A4.05[2]9Legal basis

Patent Act Article 42(3)Patent Act Article 47(2)Guidelines Part IV, Chapter 2, 2.1

Category

Category III

In practice

1. Currently the statement of prior art of reference is not obligation of an
applicant and KIPO does not invite an applicant to insert additional priorart documents.
2. In case an applicant inserts prior art reference by amendment, where
just titles of prior art documents are added to a description, it shall not be
deemed as the addition of new matter. However, though an amendment
was based on the prior art documents, if such an amendment adds
matters which were disclosed only in the documents but not described in
the original description, it shall be deemed as the addition of new matter
except that such added matters are obvious to a person skilled in the art
in view of the original description. (Guidelines Part IV, Chapter 2, 2.1 )

SIPO
PCT

PCT/GL/ISPE Appendix A4.05, Alternative A4.05[1]Legal basis

Art 33, Rule 17

Category

Category III

In practice

The allowable amendments to the description include the scenario that thepart of “Background Art” is amended to make it consistent with theclaimed subject matter of the invention. Where the independent claim isdrafted according to the provisions of Rule 21, the relevant contents ofthe prior art described in the preamble portion of the claim shall becontained in the part of “Background Art” of the description, and the
documents reflecting the background art shall be cited. If, throughsearch, the examiner finds any reference documents which are evenmore related to the claimed subject matter of the invention than the priorart cited in the initial description by the applicant, the applicant shall beallowed to amend such part of the description by adding the contents ofthese documents and citing the documents. At the same time, thecontents describing the unrelated prior art shall be deleted. It shall be
noted that such amendment, in fact, has introduced the contents which
are not contained in the initial claims and description. However, since theamendment relates just to the background art other than the invention
per se, and the contents added are prior art already known to the public
before the date of filing, it is allowable. (Guidelines Part II Chapter 8
Section 5.2.2.2)

USPTO
PCT

The ISA/IPEA/US does not invite applicant to insert additional prior art
documents, subsequently discovered prior art documents, or a detailed
description of previously cited documents into the description. See
PCT/GL/ISPE AppendixA4.05, Alternative A4.05[2].

Legal basis

35 U.S.C. 132; 37 CFR 1.53

Category

Category III

In practiceAll amendments must find descriptive basis in the original disclosure,otherwise they raise the issue of new matter. As no new matter may beintroduced into an application after its filing date, inserting a statement
10

regarding the prior art into the specification is generally improper.

I.

APPLICATION AND ITS CONTENT AS A BASIS FOR CLAIM
INTERPRETATIONC.

Allowability of multiple dependent claims
PCT reservation (PCT/GL/ISPE - Appendix A5.16)

EPO
PCT

PCT/GL/ISPE Appendix A5.16, Alternative A5.16[2]Legal basis

Art 82, Art 84, Rule 43 EPC

Category

Category II

In practice

Dependent claims referring back to other independent and/or
dependent claims, alternatively or cumulatively (GL C-III, 3.4)
Any claim which includes all the features of any other claim is termed a"dependent claim". Such a claim must contain, if possible at the
beginning, a reference to the other claim, all features of which it includes.
Since a dependent claim does not by itself define all the characterisingfeatures of the subject-matter which it claims, expressions such as"characterised in that" or "characterised by" are not necessary in such aclaim but are nevertheless permissible. A claim defining further
particulars of an invention may include all the features of anotherdependent claim and should then refer back to that claim.
Also, in some cases, a dependent claim may define a particular feature
or features which may appropriately be added to more than one previous
claim (independent or dependent). It follows that there are several
possibilities: a dependent claim may refer back to one or more
independent claims, to one or more dependent claims, or to both
independent and dependent claims.
Number of dependent claims (GL C-III, 5)
While there is no objection to a reasonable number of such claims
directed to particular preferred features of the invention, the examinershould object to a multiplicity of claims of a trivial nature. What is or what
is not a reasonable number of claims depends on the facts andcircumstances of each particular case.

JPO
PCT

PCT/GL/ISPE Appendix A5.16, Alternative A5.16[2]Legal basis

Regulations under the Patent Act Note 14 of Form 29bis
Guidelines Part I, Chapter 1, 2.2.4.2(2), (3)Category

Category I, II

In practice“In the light of conciseness and clearness, multiple dependent form
claims preferably refer to two or more claims in alternative form, andimpose an identical technical limitation on the respective claims referredto. (Note 14d of Form 29bis, Regulations under the Patent Act)”(Guidelines Part I, Chapter 1, 2.2.4.2(2))“If a multiple dependent form claim refers to two or more claims in nonalternative form or if it does not impose an identical technical limitation on
11

the respective claims referred to, it does not comply with the instruction
on claiming practice which is provided in Note 14d of Form 29 ofRegulations under Patent Act. This instruction, however, is not one of thelegal requirements provided in the Act as a basis of a decision of refusal.
Therefore, mere non-compliance with the instruction does not constitutea reason for refusal of an application.” (Guidelines Part I, Chapter 1,
2.2.4.2(3)).

KIPO
PCT

PCT/GL/ISPE Appendix A5.16, Alternative A5.16[1]Legal basis

Patent Act Article 42(8)Enforcement Decree of the Patent Act 5(5), (6)Guidelines Part II, Chapter 4, 6.5, 6.6

Category

Category III

In practice

A claim depending on two or more claims shall include the numbers of
the cited claims in order for at least one of the cited claims to be selected(Enforcement Decree of the Patent Act 5(5), Guidelines Part II, Chapter
4, 6.5).
A claim that depends on two or more claims shall not refer to anotherclaim which cites more than two claims. The purpose of this provision is
to avoid difficulty in having to refer to other multiple claims in order tointerpret a single patent claim.
Meanwhile, since Article 5 (6) of the Enforcement Decree of the Patent
Act applies to claims that refer to more than two claims, it shall be notedthat this provision cannot apply to claims that cite only one claim.
(Enforcement Decree of the Patent Act 5(6), Guidelines Part II, Chapter
4, 6.6).

SIPO
PCT

PCT/GL/ISPE Appendix A5.16, Alternative A5.16[1]Legal basis

Rule 22(2)Category

Category II

In practice

Any dependent claim shall only refer to the preceding claim or claims.
Any multiple dependent claims, which refers to two or more claims, shallrefer to the preceding claims in the alternative only, and shall not serve
as a basis for any other multiple dependent claims.(Paragraph 2, Rule22)
Any dependent claim shall only refer to the preceding claim or claims.
Any multiple dependent claim, which refers to two or more claims, shallrefer to the preceding claims in the alternative only, and shall not serve
as a basis for any other multiple dependent claim, i.e. a subsequentmultiple dependent claim shall not refer to a preceding multiple
dependent claim. (Guidelines Part II Chapter 2 Section 3.3.2)

USPTO
PCT

The ISA/IPEA/US will permit a multiple dependent claim which refers tomore than one other claim only in the alternative. Multiple dependentclaims cannot form a basis for other multiple dependent claims. See
PCT/GL/ISPE, Appendix A5.16, Alternative A5.16[1].

Legal basis

35 U.S.C. 112; 37 CFR 1.75(c)12CategoryCategory III

In practice

A multiple dependent claim which refers to more than one other claim
can do so only in the alternative. Multiple dependent claims cannot forma basis for other multiple dependent claims.

I.

APPLICATION AND ITS CONTENT AS A BASIS FOR CLAIM
INTERPRETATIOND.

Allowability of multiple independent claims of overlapping scope /conciseness issue
PCT reservation (PCT/GL/ISPE - Appendix A5.42)

EPO
PCT

PCT/GL/ISPE Appendix A5.42, Alternative A5.42[1]Legal basis

Art 84, Rule 43 EPC

Category

Category II

In practice

Number of independent claims and their scope in general (GL C-II, 5)
The requirement that the claims must be concise refers to the claims intheir entirety as well as to the individual claims. The number of claims
must be considered in relation to the nature of the invention the applicant
seeks to protect. Undue repetition of wording, e.g. between one claim
and another, should be avoided by the use of the dependent form.
What is or what is not a reasonable number of claims depends on thefacts and circumstances of each particular case. The interests of therelevant public must also be borne in mind. The presentation of theclaims should not make it unduly burdensome to determine the matter forwhich protection is sought (T 79/91 and T 246/91, not published in OJ).
Objection may also arise where there is a multiplicity of alternatives
within a single claim, if this renders it unduly burdensome to determine
the matter for which protection is sought.
Number of independent claims and their scope within a category(GL C-III, 3.2)
According to Rule 43(2) the number of independent claims is limited to
one independent claim in each category (subject to transitional measures
EPC 1973/2000).
Exceptions from this rule can only be admitted in the specificcircumstances defined in sub-paragraphs (a), (b) or (c) of Rule 43(2)(e.g., if the subject-matter of the application involves one of the following(a) a plurality of interrelated products; (b) different uses of a product orapparatus or (c) alternative solutions to a particular problem, where it isinappropriate to cover these alternatives by a simple claim) and provided
the requirement of Art. 82 with regard to unity is met.

JPO
PCT

PCT/GL/ISPE Appendix A5.42: Neither A5.42[1] nor A5.42[2] applies.

Legal basis

Patent Act Article 36(5), Patent Act Article 36(6)(iii)
Guideline Part I, Chapter 1, 2.2.3

Category

Category III
13

In practiceAllowability of multiple independent claims of overlapping scope“an invention specified by a statement in one claim may be the same
invention specified by a statement in another claim” (Patent Act Article
36(5))
Conciseness issue“The statement of the scope of claims… shall comply with each of thefollowing items: … (iii) the statement for each claim is concise” (Patent
Act Article 36(6)(iii))“Article 36(6)(iii) does not deal with the inventive concept defined byclaim statement but deals with the conciseness of the statement itself.
Also, it does not require plural claims as a whole be concise when an
application contains two or more claims. Rather, it requires each claim be
stated concisely.” (Guideline Part I, Chapter 1, 2.2.3)

KIPO
PCT

PCT/GL/ISPE Appendix A5.42, Alternative A5.42[2]Legal basis

Patent Act Article 42(4)(ii)
Guidelines Part II, Chapter 4, 4.
Patent Act Article 42(8)Enforcement Decree of the Patent Act 5(2)Guidelines Part II, Chapter 4, 6.3

Category

Category II

In practice

1. About the conciseness of individual claim“Claim(s) shall define the invention clearly and concisely” (Patent Act
Article 42(4)(ii))“In case the statement of the claim is too prolix, such as the repetitive
statement of the identical contents, so that the subject of the invention
sought to be protected are unclear.” (Guidelines Part II, Chapter 4, 4.)
2. About the conciseness of total claims
KIPO does not limit the number of independent claims.
But “The claim shall be entered in a proper number according to thenature of the invention.” (Enforcement Decree of the Patent Act, Article
5(2))“Where claims are not described in a proper number are as follows: ①
where two or more inventions from different categories are described in asingle claim, ② where more than two matters are claimed, ③ where thesame claim is redundantly described (it means the case in which theclaim is identically expressed, and does not means the case in which theclaim is substantially identical with different expression), ④ wheremultiple claims are cited in a single claim, and so on.” (Guidelines Part II,
Chapter 4, 6.3)

SIPO
PCT

PCT/GL/ISPE Appendix A5.42, Alternative A5.42[1]Legal basis

Art 26(4)Category

Category III

In practice

The written claim shall, based on the written description, contain a clear
and concise definition of the proposed scope of patent
14

protection.(Paragraph 4 Art 26)
The requirement that the claims shall be concise means, on the one
hand, individual claims shall be concise, and on the other hand, theclaims as a whole shall be concise as well. For example, in one
application there should not exist two or more claims that havesubstantially the same extent of protection.
The number of claims shall be reasonable. It is permitted to have areasonable number of dependent claims in the claims to define those
preferable technical solutions of the invention or utility model.
The expression of the claims shall be concise. Except for the technicalfeatures, a claim shall neither contain unnecessary explanations as to thecause or reason, nor shall it contain commercial advertising.
In order to avoid undue repetition of the same content between one claim
and another, where possible, the claims shall be drafted in the manner ofreferring to a preceding claim to the largest extent. (Guidelines Part II
Chapter 2 Section 3.2.3)

USPTO
PCT

The ISA/IPEA/US does not generally object to the number of claims aslong as the claims differ from one another and there is no difficulty inunderstanding the scope of protection. See PCT/GL/ISPE, Appendix
A5.42, Alternative A5.42[1].

Legal basis

35 U.S.C. 112, 37 CFR 1.75

Category

Category III

In practiceThere is generally no objection to the number of independent claims aslong as the claims differ from one another and there is no difficulty inunderstanding the scope of protection.

II.

CLAIM INTERPRETATIONA.

Applicant acting as own lexicographer
PCT reservation (PCT/GL/ISPE Appendix A5.20)

EPO
PCT

PCT/GL/ISPE, Appendix A5.20, Alternative A5.20[1]Legal basis

None

Category

Category I, IV

In practice

Meaning and scope of a word in a claim (GL C-III, 4.2)
Each claim should be read giving the words the meaning and scope
which they normally have in the relevant art, unless in particular cases
the description gives the words a special meaning, by explicit definition orotherwise. Moreover, if such a special meaning applies, the examinershould, so far as possible, require the claim to be amended whereby themeaning is clear from the wording of the claim alone. This is importantbecause it is only the claims of the European patent, not the description,
which will be published in all the official languages of the EPO.
The claim should also be read with an attempt to make technical senseout of it. Such a reading may involve a departure from the strict literalmeaning of the wording of the claims. However, Art. 69 and its Protocol
15

do not provide a basis for excluding what is literally covered by the termsof the claims (see T 223/05).
Any inconsistency between the description and the claims should be
avoided if it may throw doubt on the extent of protection and therefore
render the claim unclear or unsupported under Art. 84, second sentenceor, alternatively, render the claim objectionable under Art. 84, first
sentence.

JPO
PCT

PCT/GL/ISPE, Appendix A5.20, Alternative A5.20[1]Legal basis

Guidelines Part I, Chapter 1, 2.2.2(3)~(4),Guidelines Part II, Chapter 2, 1.5.1

Category

Category I

In practice“Where the statement in a claim are deemed clear by itself, the examinershould examine whether a term in the claim is defined or explained in thedescription or drawings, and evaluate whether such definition or
explanation, if any, makes the claim statements unclear. For example, if
a clear definition of a term used in a claim, which is either completely
inconsistent with or different from what it normally means, is placed in thedetailed description of the invention, such a definition could make theinvention unclear. This is because such a definition could raise confusion
in interpretation of the term under the practice for identification of aclaimed invention which is done by taking into consideration thedescription, drawings and common general knowledge as of the filing
although the primary basis for the identification is statements of theclaim.” (Guidelines Part I, Chapter 1, 2.2.2(4))“The finding of a claimed invention should be made on the basis of thestatements of the claim. Matters (terms) stated in the claim defining theclaimed invention should be construed in the light of the description in thespecification (excluding the claim(s)), the drawings and the common
general knowledge as of the filing. The method of finding a claimed
invention is as follows.”“(1) When the claim statements are clear, the finding of the claimed
invention should be made just as stated in the claim. Terms or language
in such a claim should be construed as what they normally mean.”“(2) Even though the claim statements are clear, however, when terms or
language used in the claim (matters defining the claimed invention) aredefined or explained in the specification or the drawings, the definition or
explanation should be considered when the terms or language areconstrued. A mere illustrating of more specific concepts contained inconcepts of the matters in claims, which is described in a detailed
explanation or the drawings, does not correspond to the definition or the
explanation mentioned above. When statements in a claim, unclear ordifficult to understand, can be clarified by construing terms or language inthe claim in the light of the description in the specification, the drawings
and the common general knowledge as of the filing, they should bereferred to when the terms or language are construed.”“(3) If a claimed invention is not clear, even by referring to the description
in the specification, the drawings and the common general knowledge asof the filing, the finding of the claimed invention should not be
conducted.”“(4) Even though there is inconsistency between an invention found in a16

claim and an invention described in the specification and the drawings,
the finding and examination of an invention should not be made solely on
the basis of the description in the specification and the drawings,
disregarding the statements of the claim. Even though they are describedin the specification or the drawings, matters (terms or language), notstated in a claim, should not be treated as they do exist in the claim when
the finding of the claimed invention should be made. On the other hand,matters (terms or language) stated in a claim should be always
considered and should not be treated as they do not exist in the claim.”(Guidelines Part II, Chapter 2, 1.5.1)

KIPO
PCT

PCT/GL/ISPE Appendix A5.20, Alternative A5.20[1]Legal basis

Case No. 97Hu990 (Supreme Court, 22 Dec. 1998)
Guidelines Part III, Chapter 2, 4.1.1(3)Category

Category IV

In practice“4.1.1(3) In the case where an applicant specifically defines a term in thedetailed description to the extent that it is clearly understood that the term
is different from any general meaning in order to specify the term as
having a specific meaning other than general meaning in the technicalfield to which an invention pertains, the term is interpreted as a term withthe specific meaning defined in the detailed description.” Guidelines Part
III, Chapter 2, 4.1.1(3)“A term in a patent specification is interpreted with the general meaning
in the technical field and its usage should be consistent over the whole
specification. However, if an applicant intends to use a certain term tohave a specific meaning, an applicant is allowed to define the meaning of
the term. So, the term can be simply interpreted according to the specificdefinition when the meaning of term is defined in the description (CaseNo. 97Hu990 (Supreme Court, 22 Dec. 1998)).

SIPO
PCT

PCT/GL/ISPE Appendix A5.20: No reservation under A5.20[1] nor
A 5.20[2]Legal basis

Rule 3(1), 17(3), 19(3)Category

Category II

In practice

Any document submitted in accordance with the provisions of the Patent
Law and these Implementing Regulations shall be in Chinese; thestandard scientific and technical terms shall be used if there is aprescribed one set forth by the State; where no generally acceptedtranslation in Chinese can be found for a foreign name or scientific ortechnical term, the one in the original language shall be also
indicated.(Paragraph 1 Rule 3)
The description of the invention or utility model shall use standard terms
and be in clear wording, and shall not contain such references to theclaims as:”as described in claim…”, nor shall it contain commercial
advertising. (Paragraph 3 Rule 17)
The scientific and technical terms used in the claims shall be consistent
with that used in the description. The claims may contain chemical ormathematical formulae but no drawings. They shall not, except where
absolutely necessary, contain such references to the description or17

drawings as:”as described in part… of the description”, or “as illustrated
in Figure… of the drawings”.(Paragraph 3 Rule 19)
The description shall use the technical terms as recognized in thetechnical field to which the invention or utility model pertains. As for termsof natural science, where there is national standard, the standard terms
shall be used. Where there is no national standard, the terms generally
accepted in the art may be used, and little known or newly emerging
technical terms, or the terms in loan word (in Chinese transliteration or
free translation) may also be used, provided that their meanings are clear
to a person skilled in the art and are not misleading. If necessary,
specially formulated technical terms may be used, in which case theyshall be clearly and adequately defined or explained. Generally, terms
already having an established meaning in the art shall not be used tomean something different so as to avoid misunderstanding andconfusion. Technical terms and symbols used in the description shall beconsistent throughout. (Guidelines Part II Chapter 2 Section 2.2.7)
The extent of protection as defined by each claim shall be clear. The
extent of protection of a claim shall be construed according to themeaning of the words used in the claim. Generally, the words used in aclaim shall be understood as having the meaning that they normally havein the relevant art. In particular cases, where the description explicitly
gives a certain word a special meaning and, by virtue of the definition to
the word in the description, the extent of protection of the claim using theword is defined sufficiently clearly, such a case is also allowed. However,in this case the examiner should also invite the applicant to amend as far
as possible the claim whereby the meaning is clear from the wording of
the claim alone.
Any term which whose meaning is indefinite, such as “thick”, “thin”,“strong”, “weak”, “high temperature”, “high pressure”, “very broad scope”,
etc., shall not be used in a claim, unless the term has a well-recognizeddefinite meaning in the particular art, such as “high frequency” in relation
to an amplifier. Where the term has no well-recognized meaning, itshould, if possible, be replaced by a more precise wording selected fromthe description.
Such expressions as “for example”, “such as”, “had better …”,“particularly”, “if necessary”, and the like shall not be used in a claim,
since they will define different extents of protection in a single claim,
making the extent of protection thereof unclear. Where in a claim there
exists a generic term being followed by a specific term introduced by oneof the above expressions, the examiner shall invite the applicant toamend the claim, and it is allowed to maintain in the claim either of theterms or to define the different extents of protection in two claims with theterms respectively.
Generally, such terms as “about”, “approximately”, “etc.”, “or the like”,
and the like shall not be used in a claim, since they are likely to make theprotection extent of the claim unclear. Where in a claim there exists sucha term, the examiner shall make a judgment as to whether use of suchterm makes the claim unclear according to the specific situation, and if
not, the use of such term is permitted.
Except for being used with reference signs, chemical formulae, ormathematical formulae, use of parentheses in a claim, such as“(concrete) moulded brick”, shall be avoided as far as possible so as toprevent the claim from being unclear. However, bracketed expressions
with a generally accepted meaning are allowable, for example
18

“(meth)acrylate”, “containing A of 10%-60% (weight)”. (Guidelines Part II
Chapter 2 Section 3.2.2)
The technical terms used in the claims shall be consistent with thoseused in the description. (Guidelines Part II Chapter 2 Section 3.3)

USPTO
PCT

In interpreting claims, the ISA/IPEA/US takes into account any special
meaning provided in the description to a term appearing in the claim.
See PCT/GL/ISPE, Appendix A5.20, Alternative A5.20[1].

Legal basis

35 U.S.C. 112

Category

Category III

In practice

In interpreting claims, any special meaning provided in the description toa term appearing in the claim is taken into account, provided that the
special meaning is sufficiently clear in the specification such that any
departure from common usage would be understood by a person ofskilled in the art. See MPEP 2111.01.

II.

CLAIM INTERPRETATIONB.

Use claims in general
PCT reservation (PCT/GL/ISPE Appendix A5.21)

EPO
PCT

PCT/GL/ISPE, Appendix A5.21 applies

Legal basis

Rule 43(2) EPC

Category

Categories II, IV

In practice

Claim categories under the EPC (GL C-III, 3.1)
The EPC refers to different "categories" of claim ("products, process,apparatus or use"). In fact, there are only two basic kinds of claim, viz.
claims to a physical entity (product, apparatus) and claims to an activity(process, use). The second basic kind of claim ("process claim") isapplicable to all kinds of activities in which the use of some material
product for effecting the process is implied; the activity may be exercised
upon material products, upon energy, upon other processes (as in control
processes) or upon living things.
Use claims in general (GL C-III, 4.16)
Use of a productFor the purposes of examination, a "use" claim in a form such as "the useof substance X as an insecticide" should be regarded as equivalent to a"process" claim of the form "a process of killing insects using substance
X". Thus a claim in the form indicated should not be interpreted as
directed to the substance X recognisable (e.g. by further additives) as
intended for use as an insecticide. Similarly, a claim for "the use of atransistor in an amplifying circuit" would be equivalent to a process claim
for the process of amplifying using a circuit containing the transistor andshould not be interpreted as being directed to "an amplifying circuit inwhich the transistor is used", nor to "the process of using the transistor inbuilding such a circuit".
As to the requirement of novelty, it should be borne in mind that a claim
19

to the use of a known compound for a particular purpose (second nonmedical use) which is based on a technical effect should be interpreted
as including that technical effect as a functional technical feature, and isaccordingly not open to objection under Art. 54(1), provided that suchtechnical feature has not previously been made available to the public (G2/88, OJ 4/1990, 93, and G 6/88, OJ 4/1990, 114).
Use of a process
A claim directed to the use of a process for a particular purpose isequivalent to a claim directed to that very same process (see T 684/02).

JPO
PCT

PCT/GL/ISPE, Appendix A5.21 applies

Legal basis

Guidelines Part I, Chapter 1, 2.2.2.1(3)Category

Category I

In practice““Use” is interpreted as a term meaning a method for using things whichis categorized into “a process.” “Use of substance X as an insecticide” isinterpreted as terms meaning “method for using substance X as an
insecticide.” “Use of substance X for the manufacture of a medicament
for therapeutic application Y” is interpreted as terms meaning “method forusing substance X for the manufacture of a medicament for therapeutic
application Y.”” (Guidelines Part I, Chapter 1, 2.2.2.1(3))

KIPO
PCT

PCT/GL/ISPE Appendix A5.21 is not applied

Legal basis

Guidelines Part III, Chapter 2, 4.1.2(2)Category

Category I

In practice

Guidelines
4.1.2(2) The claim which includes an expression specifying a product by
its use“Where a claim includes an expression specifying a product by its use,
the examiner should interpret the claimed invention only as a productespecially suitable for the use disclosed in the claim, by taking into
account the detailed descriptions in the specification and drawings, andthe common general technical knowledge at the time of the filing.
Even if a product includes all technical characteristics described in theclaims, an examiner should not regard the product as the productdescribed in the claim when the product is not appropriate for the
relevant use or when the product needs conversion to be used.
For example, “crane hook with a shape of ~” merely indicates a hookincluding technical features with size and strength suitable for a crane.
So it is appropriate that the crane hook should be construed as a different
product from “fishing hooks” with regard to the structure.
If a product with a limitation of use is regarded as not being specificallysuitable for such use by taking into account the specification anddrawings, and the common general technical knowledge at the time of
the filing, it is construed that a limitation of use has no impact inspecifying an invention, thereby the limitation of use does not haveinfluence in the assessment of novelty.” (Guidelines Part III, Chapter 2,
4.1.2(2))
20

SIPO
PCT

PCT/GL/ISPE, Appendix A5.21 does not apply

Legal basis

Guidelines Part II Chapter 2 Section 3.2.2

Category

Category I

In practice

According to their nature, claims are divided into two basic kinds, namely,
claims to a physical entity and claims to an activity, which are simply
referred to as product claims and process claims respectively. The firstbasic kind of claim includes any physical entity (product, apparatus) thatis produced by a person’s technical skill. The second basic kind of claim
includes any activity with element of time or process (process, use).
Claims to a physical entity include claims to articles, substances,materials, tools, apparatus, and equipment etc. Claims to an activity
include claims to manufacturing processes, methods of use,
communication methods, processing methods, and methods of applying
a product for a specific purpose, etc. (Guidelines Part II Chapter 2
Section 3.1.1)
A use claim belongs to the category of process claim. However, theexaminer shall pay attention to distinguishing a use claim from a productclaim from the wording thereof. For example, a claim in such a form as“using compound X as an insecticide” or “the use of compound X as an
insecticide” is a use claim, and belongs to process claim, while a claim insuch a form as “an insecticide made of compound X” or “an insecticidecontaining compound X” is not a use claim but a product claim.
(Guidelines Part II Chapter 2 Section 3.2.2)
The examiner shall take notice of the wording to distinguish a use claim
from a product claim. For example, “using compound X as an insecticide”
or “the use of compound X as an insecticide” is a wording used in use
claim, which is of type of process claim, while the wording “an insecticide
made of compound X” or “the insecticide containing compound X” is not ause claim, but a product claim.
It shall also be clarified that “the use of compound X as an insecticide”
shall not be construed as equivalent to “the compound X for an
insecticide”. As the latter is a product claim defining the use, it is not ause claim. (Guidelines Part II Chapter 10 Section 4.5.1)
Claim of Medical Use of SubstanceAn application relating to the medical use of a substance shall not be
granted if its claim is drafted in the wording “use of substance X for thetreatment of diseases”, “use of substance X for diagnosis of diseases” or“use of substance X as a medicament”, because such claim is one for“method for the diagnosis or for the treatment of diseases” as referred toin Article 25.1(3). However, since a medicament and a method for the
manufacture thereof are patentable according to the Patent Law, it shallnot be contrary to Article 25.1(3) if an application for the medical use of a
substance adopts pharmaceutical claim or use claim in the form of
method for preparing a pharmaceutical, such as “use of substance X forthe manufacturing of a medicament”, “use of substance X for the
manufacturing of a medicament for the treatment of a disease” and soon.
The above-mentioned use claim in the form of method for manufacturing
a medicament may be drafted as “use of compound X for manufacturing
a medicament for the treatment of disease Y” or the like. (Guidelines Part
21

II Chapter 10 Section 4.5.2)
Novelty of Use Invention of Chemical Product
Since a chemical product is novel, the use invention of the novel productwill naturally possess novelty.
A known product is not rendered novel merely because a new application
thereof has been put forward. For example, if product X is known as adetergent, then the product X used as a plasticizer does not possess
novelty. However, a known product does not destroy the novelty of its
new use if the new use per se is an invention. This is because such use
invention is an invention of method of application, and the substance of
the invention lies in how to apply the product rather than the product per
se. For example, said product X is originally used as a detergent. Then,someone discovers from research that it can be used as a plasticizer
after adding to it certain additives. Then its preparation, the kind ofadditives selected and the proportion etc., are the technical features ofthe method of application. Under such circumstances, the examiner shallassess whether the method per se possesses novelty and shall notconsider that the method of application does not possess novelty on the
grounds that product X is known.
As for a medical-use invention relating to a chemical product, thefollowing aspects shall be taken into consideration when the examinationof novelty is carried out.
(1) Whether or not the new use is different in substance from the known
use. The use invention does not possess novelty when the difference
between the new use and the known use lies merely in the form of
expression, but the substance of them is the same.
(2) Whether or not the new use is revealed directly by the mechanism ofaction or pharmacological action of the known use. The use does notpossess novelty if it is directly equivalent to the mechanism of action or
pharmacological action of the known use.
(3) Whether or not the new use belongs to generic (upper level) term of
the known use. The known use defined by specific (lower level) term may
destroy the novelty of the use defined by generic (upper level) term.
(4) Whether or not the features relating to use, such as the object, mode,route, usage amount, interval of administration can define the procedureof manufacture of a pharmaceutical. The distinguishing features merely
present in the course of administration do not enable the use to possess
novelty. (Guidelines Part II Chapter 10 Section 5.4)

USPTO
PCT

The ISA/IPEA/US does not regard a "use" claim as equivalent to a"process" claim for purposes of international search and examination.
PCT/GL/ISPE, Appendix A5.21 is not followed.

Legal basis

35 U.S.C. 101, 112

Category
In practiceCategory III“Use claims” are generally regarded (1) as indefinite because suchclaims merely recite a use without any active, positive steps delimiting
how this use is actually practiced, and/or (2) as not falling into any of thestatutory categories of subject matter eligible for patent protection
because the claimed recitation of a use, without setting forth any steps
involved in the process, results in an improper definition of a process.
22

II.

CLAIM INTERPRETATIONC.

Functional claims (e.g. means-plus-function limitation)
Based on the Trilateral Comparative Studies

EPO
PCT

N.A.

Legal basis

Art 83 EPC (as a framework)

Category

Categories I, IV

In practice

Functional features in a claim allowable (GL C-III, 2.1)
It is not necessary that every feature be expressed in terms of astructural limitation. Functional features may be included provided that askilled person would have no difficulty in providing some means of
performing this function without exercising inventive skill.
Functional features in broad claims (GL C-III, 6.5)
A claim may broadly define a feature in terms of its function, i.e. as afunctional feature, even where only one example of the feature has been
given in the description, if the skilled reader would appreciate that othermeans could be used for the same function. In general, however, if theentire contents of the application is such as to convey the impression thata function is to be carried out in a particular way, with no intimation thatalternative means are envisaged, and a claim is formulated in such a way
as to embrace other means, or all means, of performing the function,then objection arises. Furthermore, it may not be sufficient if thedescription merely states in vague terms that other means may be
adopted, if it is not reasonably clear what they might be or how theymight be used.
Subject-matter defined in terms of a result to be achieved (GL C-III, 4.10)
It should be noted that the requirements for allowing a definition ofsubject-matter in terms of a result to be achieved differ from those forallowing a definition of subject-matter in terms of functional features. As ageneral rule, claims which attempt to define the invention by a result tobe achieved should not be allowed, in particular if they only amount toclaiming the underlying technical problem. However, they may be allowed
if the invention either can only be defined in such terms or cannot
otherwise be defined more precisely without unduly restricting the scopeof the claims and if the result is one which can be directly and positively
verified by tests or procedures adequately specified in the description or
known to the person skilled in the art and which do not require undue
experimentation (see T 68/85, OJ 6/1987, 228)
Functional definition of a pathological condition ( GLC-III, 4.22)
When a claim is directed to a further therapeutic application of a
medicament and the condition to be treated is defined in functional terms,
e.g. "any condition susceptible of being improved or prevented by
selective occupation of a specific receptor", the claim can be regarded asclear only if instructions, in the form of experimental tests or testable
criteria, are available from the patent documents or from the common
general knowledge allowing the skilled person to recognise which
conditions fall within the functional definition and accordingly within the23scope of the claim (T 241/95, OJ 2/2001, 103).

JPO
PCT

N.A.

Legal basis

Guidelines Part II, Chapter 2, 1.5.2

Category

Category I

In practice“When a claim includes an expression specifying a product by its
function, properties, etc. , such an expression should, in principle, be
construed as every product that has such function, properties, etc.,
except when it should be construed as different meanings according to
Guidelines Part II, Chapter 2, 1.5.1(2). (see, Note below) For example, “abuilding-wall material incorporating a layer that insulates heat” should beconstrued as a building-wall material incorporating “a product” that has “alayer capable of performing a work or function of heat-insulation.”(NOTE) For example, if a claim includes “heat-resistant alloy comprising
a composition of...,” and the expression “heat-resistant alloy” should beconstrued as “alloy used for a purpose of requiring heat resistance” as aresult of finding the claimed invention by considering the description,
drawings and the common general technical knowledge as of the filing,
the examiner should follow the guidelines set forth in Guidelines Part II.
Chapter 2. Section 1.5.2(2) ”When the claim includes an expression
specifying a product by its use”.”(Examination Guidelines Part II. Chapter 2. Section 1.5.2(1)①)“However, if the function, properties, etc. is inherent in the product, suchstatement does not help to specify the product and it should be construed
as the product itself.”(Examination Guidelines Part II. Chapter 2. Section 1.5.2(1)②)“There are also cases where a statement specifying a product by its
function, properties, etc. should not be construed as a specific productamong all products that have such function, characteristic, etc. byconsidering the common general technical knowledge as of the filing. For
example, if a claim includes “a means for fixing the first wooden member
to the second plastic member,” it is obvious that “a means for fixing” does
not represent a fixation means used for metals, such as welding, among
all fixation means.”(Examination Guidelines Part II. Chapter 2. Section 1.5.2(1)③)

KIPO
PCT

N.A.

Legal basis

Patent Act Article 42(6)Guidelines Part III, Chapter 2, 4.1.2(1)Case No. 2007Hu4977 (Supreme Court, 23 July 2009)

Category

Category I, Category III, Category IV

In practicePatent Act
Article 42 Patent Application(6) When stating the scope of claims under paragraph (2)(iv), theapplicant shall state the structure, method, functions, materials, or a
combination thereof etc. which are deemed to be necessary forspecifying the invention, for the purpose of clearly specifying the mattersfor which protection is sought.
24

Guidelines
4.1.2(1) A product specified by its work, function, property, orcharacteristic (hereinafter referred to as “the function, characteristic,etc.”)“Because it is possible to state the structure, method, functions, materials
or combination of these factors for the purpose of clarifying the subject
matters to be protected, when function, characteristic, etc. are disclosed
in the claims to limit the subject matters of the claimed invention, an
examiner should not exclude the function, characteristic, etc. from thefeatures of the invention when interpreting the claims.
When a claim includes an expression specifying a product by its function,
characteristic, etc., such an expression should, in principle, be construed
as every product that has such function, characteristic, etc., except whenit should be construed otherwise because the expression is specificallydefined in the detailed description.
However, it is noted that there are also cases where a product describedby its function, characteristic, etc. should not be construed as a specificproduct among all products that have such function, characteristic etc.
when taking into account the common general technical knowledge at thetime of the filing.” (Guidelines Part III, Chapter 2, 4.1.2(1))“In a case where “means to selectively join plastic materials” is disclosed,
it is appropriate that “the means to selectively join” mentioned here
should not apply to materials such as a magnet which is difficult to joinwith plastic material.” (Case No. 2007Hu4977 (Supreme Court, 23 July2009))

SIPO
PCT

N.A.

Legal basis

Art 26(4)Category

Category I

In practice

Usually, for product claims, features of function or effect shall be avoided
as far as possible to be used in defining the invention. It is only when acertain technical feature cannot be defined by a structural feature, or it ismore appropriate to be defined by a feature of function or effect than by astructural feature, and the function or effect can be directly andaffirmatively verified by experiments or operations as stated in thedescription or by customary means in the art, that definition by features offunction or effect in a product claim can be permissible.
Technical feature defined by function in a claim shall be construed asembracing all the means that are capable of performing the function. For
claim containing a feature defined by function, whether the definition byfunction can be supported by the description shall be examined. If thefunction is carried out in a particular way in the embodiments of thedescription, and the person skilled in the art would not appreciate that thefunction could be carried out by other alternative means not described in
the description, or the person skilled in the art can reasonably doubt that
one or more means embraced in the definition by function cannot solve
the technical problem aimed to be solved by the invention or utility modeland achieve the same technical effect, then the definition by function as
embracing the other alternative means or means incapable of solving thetechnical problem shall not be allowed in the claim.
Furthermore, if the description merely states in vague terms that other25

alternative means may be adopted, but the person skilled in the art
cannot understand what they might be or how they might be used, thendefinition by function in the claims is not permitted. In addition, claim ofpure functional definition cannot be supported by the description, andtherefore is not permitted. (Guidelines Part II Chapter 2 Section 3.2.1)

USPTO
PCT

N.A.

Legal basis

35 U.S.C. 112

Category

Category III

In practice

When an element is claimed using “means- or step- plus function”
language, such language is interpreted to read on only the structures ormaterials disclosed in the specification and “equivalents thereof” that
correspond to the recited function. Thus the specification must be
consulted to determine the structure, material, or acts corresponding to
the function recited in the claim.

III.

PRIOR ARTA.

Point of time to be considered for a prior art disclosure to be anticipatory
First-to-file v First-to-invent ; any other specific provisions or practices

EPO
PCT

N.A.

Legal basis

Art 54(2) EPC

Category

Category III

In practiceDate of filing as effective date (GL C-IV, 6.1)
An invention is "considered to be new if it does not form part of the stateof the art". The "state of the art" is defined as "everything made available
to the public by means of a written or oral description, by use, or in any
other way, before the date of filing of the European patent application"(GL C-IV, 6.1), subject to some specific exceptions (GL C-IV, 10; Section
III.C in this document).
Date of priority as effective date (GL C-IV, 6.4)
It should be noted that "date of filing" in Art. 54(2) and 54(3) is to beinterpreted as meaning the date of priority in appropriate cases (seeChapter GL C-V). It should be remembered that different claims, ordifferent alternatives claimed in one claim, may have different effective
dates, i.e. the date of filing or (one of) the claimed priority date(s). The
question of novelty must be considered against each claim (or part of aclaim where a claim specifies a number of alternatives) and the state of
the art in relation to one claim or one part of a claim may include matter,e.g. an intermediate document (see B-X, 9.2(iv)), which cannot be cited
against another claim or another alternative in the same claim because it
has an earlier effective date.

JPO
PCT

N.A.

Legal basis

Patent Act Article 29(1)(i)-(iii), 29(2)26Guidelines Part II, Chapter 2, 1.2.1, 1.2.4(2)Category

Category III

In practice“An inventor of an invention that is industrially applicable may be entitledto obtain a patent for the said invention, except for the following: (i)inventions that were publicly known in Japan or a foreign country, prior to
the filing of the patent application; (ii) inventions that were publicly
worked in Japan or a foreign country prior to the filing of the patentapplication; or (iii) inventions that were described in a distributed
publication, or inventions that were made publicly available through anelectric telecommunication line in Japan or a foreign country, prior to thefiling of the patent application.” (Patent Act Article 29(1)(i)-(iii))“Where, prior to the filing of the patent application, a person ordinarily
skilled in the art of the invention would have been able to easily make theinvention based on an invention prescribed in any of the items of thepreceding paragraph, a patent shall not be granted for such an invention
notwithstanding the preceding paragraph.” (Patent Act Article 29(2))“"Prior to the filing of the patent application," not stating "prior to the dateof filing of a patent application," implies the definite time even in hours
and minutes of the filing. Consequently, the invention filed is deemed
publicly known in Japan prior to the filing of a patent application, forinstance, when the application is filed after noon on the date while theinvention in question is publicly known before noon on the same date inJapan. The invention filed is deemed as having been described in a
distributed publication in foreign countries prior to the filing of the patentapplication, when the application is filed after noon on the date in Japan
while the publication is distributed in foreign countries before noon on thesame date in Japan.” (Guidelines Part II, Chapter 2, 1.2.1)“Time of distribution:① When the time of publication is indicated in a publication, it ispresumed as follows:(i) In the case where only the year of a publication is indicated, the last
day of that year; (ii) In the case where a month and a year of apublication is indicated, the last day of the month of the year; and (iii) In
the case where a day, a month and a year of a publication is indicated,that date.
② In the case where the date of publication is not indicated in a
publication(i) The distribution date of a foreign publication is presumed in the light ofthe period normally required to reach Japan from the country of the
publication, as far as the date of its receipt in Japan is clear. (ii) In thecase where there is a derivative publication such as a book review, an
extraction or a catalog, the date of distribution of the publication inquestion is presumed based on the publication date of the derivative
publication. (iii) In the case where there is a second edition or a second
print of the publication, the date of distribution is presumed to be thepublication date of the first edition indicated therein. (iv) In the casewhere other appropriate information is available, the date of distribution ispresumed or estimated therefrom.
③ In the case where the filing date of a patent application is the same as
the date of the Publication In the case where the filing date of a patentapplication is the same as the date of the publication, the time of
distribution is not deemed prior to the filing of a patent application, except
27when the filing time of application is clearly after the time of publication.”(Guidelines Part II, Chapter 2, 1.2.4(2))

KIPO
PCT

N.A.

Legal basis

Patent Act Article 29(1)Guidelines Part III, Chapter 2

Category

Category III

In practice

Under the Patent Act Article 29 paragraph (1), prior to the filing of thepatent application, (i) inventions publicly known, (ii) inventions publicly
worked (iii) inventions described in a publication, or (iv) inventions
published through electric telecommunication lines as prescribed byPresidential Decree are not patentable due to lack of novelty.
“In interpreting of “prior to the filing of the application”, the time of filingrefers to the exact point of time of filing, even to the hour and minute of
the filing, not to the date of filing (if the invention is publicly known in aforeign country, the time is converted into Korean time).” (Guidelines Part
III, Chapter 2, 3.1)
“For a publication as a prior art, the time of publication is presumed asfollows:① In the case where the time of publication is indicated in a publication(a) In the case where only the year of publication is indicated, the last dayof that year;(b) In the case where the month and year of publication is indicated, thelast day of the month of the year; and(c) In the case where the day, month and year of publication is indicated,that date.
② In the case where the time of publication is not indicated in a
publication(a) The distribution date of a foreign publication is presumed in light ofthe period normally required to reach Korea from the country of the
publication, as far as the date of its receipt in Korea is clear.
(b)In the case where there is a derivative publication such as a bookreview, an extraction or a catalog, the date of distribution of the
publication in question is presumed based on the publication date of thederivative publication.
(c)In the case where there is a second edition or a second print of the
publication, the date of distribution is presumed to be the publication dateof the first edition indicated therein, provided that the cited contents in thesecond edition or second print of the publication accords with thecontents of the first edition.
(d) In the case where other appropriate information is available, the dateof distribution is presumed or confirmed therefrom.” (Guidelines Part III,
Chapter 2, 3.3.3)

SIPO
PCT

N.A.

Legal basis

Art 22(5)Category

Category III

In practice

For the purposes of this Law, existing technologies mean the28technologies known to the public both domestically and abroad before
the date of application.(Paragraph 5 Art 22)
According to Article 22.5, the prior art means any technology known tothe public before the date of filing in China or abroad. The prior art
includes any technology which has been disclosed in publications in
China or abroad, or has been publicly used or made known to the public
by any other means in China or abroad, before the date of filing (or thepriority date where priority is claimed). (Guidelines Part II Chapter 3
Section 2.1)
As regards an invention or utility model application, the temporaldemarcation of prior art is its filing date or the priority date whereapplicable. Broadly speaking, all of the technical contents disclosed
before the filing date are within the scope of prior art; however, those
disclosed on the filing date are not. (Guidelines Part II Chapter 3 Section
2.1.1)The printing date of a publication is regarded as the date of disclosure,
except where the date of disclosure can be evidenced otherwise. Where
only a specific month or year is indicated as the printing date, the last dayof the month or year shall be regarded as the date of disclosure.
(Guidelines Part II Chapter 3 Section 2.1.2.1)
The date on which the product or process is available to the public shallbe regarded as the date of disclosure by use. (Guidelines Part II Chapter
3 Section 2.1.2.2)
Disclosure by other means mainly refers to oral disclosure etc. Examples
include talking, reporting, speaking at symposium, broadcasting,televising, and cinematographing that make the technical contents known
to the public. For contents of talking, reporting, or speaking at
symposium, the date of action shall be regarded as the date ofdisclosure. For contents of broadcasting, televising, or cinematographingthat can be received by the public, the date of broadcast or showing shallbe regarded as the date of disclosure. (Guidelines Part II Chapter 3
Section 2.1.2.3)

USPTO
PCT

N.A.

Legal basis

35 U.S.C. 102, 37 CFR 1.131

Category

Category III

In practice

For U.S. patents, U.S. patent application publications, and other printed
publications, the date that the patent or publication is made available tothe public is the date it is available as a 35 U.S.C. 102(a) or (b)reference. A reference is a "printed publication" if it has been
disseminated or otherwise made available to the extent that persons
interested and ordinary skilled in the subject matter or art, exercisingreasonable diligence, can locate it.
For purposes of 35 U.S.C. 102(e), the effective U.S. filing date of the U.S.
patent or U.S. patent application publication may be used as the prior art
date. Furthermore, the filing date of an international application is a U.S.
filing date for prior art purposes under 35 U.S.C. 102(e) if theinternational application (1) has a filing date on or after November 29,
2000; (2) designated the United States; and (3) published under PCT
Article 21(2) in English. See MPEP 2136.03.
The foreign priority date of the reference (U.S. patents and U.S. patent29

application publications) cannot be used as the 35 U.S.C. 102(e) date forprior art purposes (the “Hilmer doctrine”). See 35 U.S.C. 102(e) and
MPEP 2136.03.
An applicant can overcome rejections based on references or activities
which are not statutory bars by establishing invention of the subject
matter of the rejected claim prior to the effective date of the reference or
activity on which the rejection is based. Prior invention may not beestablished in any country other than the United States, a NAFTA
country, or a WTO member country. See MPEP 715.

III.

PRIOR ART

B.

Restrictions, if any, as to given types of prior art documents (including
language)
PCT reservation on Article 64(4)a)

EPO
PCT

No reservation ON PCT Art 64(4)a)

Legal basis

Art 54(2) EPC

Category

Category III

In practice

The "state of the art" is defined as "everything made available to the
public by means of a written or oral description, by use, or in any otherway, before the date of filing of the European patent application". The
width of this definition should be noted. There are no restrictions
whatever as to the geographical location where or the language ormanner in which the relevant information was made available to the
public; also no age limit is stipulated for the documents or other sourcesof the information (GL C-IV, 6.1).

JPO
PCT

No declaration on PCT Article 64(4)aLegal basis

N.A.

Category

Category III

In practiceThere is no restriction on the types of documents available as a prior art.

KIPO
PCT

No declaration on PCT Article 64(4)aLegal basis

Patent Act Article 29(1)(ii)
Guidelines Part III, Chapter 2, 3.3.1

Category
In practiceCategory III
There is no restriction on the types of documents as a prior art.
“A distributed publication is “a document, a drawing or other similar
medium for the communication of information, duplicated by printing,mechanical or chemical methods, etc. for the purpose of disclosing thecontents to the public through distribution”.
A “Distribution” in the context of the wording “disclosing the contents tothe public through distribution” means placing a publication as defined
above in the condition where unspecified persons can read or see it. It
30

does not necessitate the fact of a certain person’s actual access to sucha publication.
Patent gazettes such as microfilm or CD-ROM should be considered as a
distributed publication, since the public could refer to the contents of thefilm by using a display screen and obtain a copy of it.
In addition, non-patent literatures which are stored in floppy discs, slides,
presentations or OHP materials as well as microfilms or CD-ROMs
should be regarded as distributed publication, as far as they are
produced to make available to the public.” (Guidelines Part III, Chapter 2,
3.3.1)SIPO
PCT

No reservation under PCT Art 64(4)aLegal basis

Art 22(5)Category

Category III

In practice

For the purposes of this Law, existing technologies mean thetechnologies known to the public both domestically and abroad before
the date of application.(Paragraph 5 Art 22)
According to Article 22.5, the prior art means any technology known tothe public before the date of filing in China or abroad. The prior art
includes any technology which has been disclosed in publications in
China or abroad, or has been publicly used or made known to the public
by any other means in China or abroad, before the date of filing (or thepriority date where priority is claimed).
The prior art shall be the technical contents that are available to the
public before the date of filing. In other words, the prior art shall be insuch a state that it is available to the public before the date of filing andshall contain such contents from which the public can obtain substantial
technical knowledge. (Guidelines Part II Chapter 3 Section 2.1)
Publications in the context of the Patent Law mean the independently
existing disseminating carriers of technical or designing contents, whichshall indicate or have other evidence to prove the date of public issue or
publication.
Publications of the above definition can be various printed or typed paper
documents, such as patent documents, scientific and technologicalmagazines and books, academic theses, specialized documents,
textbooks, technical manuals, officially published proceedings ortechnical reports, newspapers, sample books, product catalogues, andadvertisement brochures etc. They can also be audio or video materials
made by electric, optic, magnetic, or photographic means, such as
microfiches, films, negative films, videotapes, tapes, gramophonerecords, CD-ROMs, etc. Furthermore, they can be materials in otherforms, such as those on the Internet or in other online databases.
The determination of whether a document is a publication shall not beaffected by the place or language of issue, the manner of acquisition, or
its age. The amount of distribution, whether it has been read, or whether
the applicant is aware of it is of no relevance either. (Guidelines Part II
Chapter 3 Section 2.1.2.1)

USPTO
PCT

The ISA/IPEA/US does not restrict the types of prior art documents
31

specified in PCT Rules 33 and 64.
Legal basis

35 U.S.C. 102

Category

Category III

In practiceThere is no restriction on the types of documents available as prior art aswell as those that may be cited by an examiner. See III.A., above, fordifferences in the date a given prior art document is accorded for
anticipatory prior art purposes.

III.

PRIOR ARTC.

Grace period provisions
Based on the Trilateral Comparative Studies

EPO
PCT

N.A.

Legal basis

Art. 55(1), Rule 25 EPC

Category

Category III

In practiceNon prejudicial disclosures (GL C-IV, 10)
There are two specific instances (and these are the only two) in which aprior disclosure of the invention is not taken into consideration as part ofthe state of the art, viz. where the disclosure was due to, or inconsequence of:(i) an evident abuse in relation to the applicant or his legal predecessor –e.g. the invention was derived from the applicant and disclosed against
his wish (Art. 55(1)(a)). For "evident abuse" to be established, there mustbe, on the part of the person disclosing the invention, either actual intent
to cause harm or actual or constructive knowledge that harm would or
could ensue from this disclosure (see T 585/92, OJ 3/1996, 129).
(ii) the display of the invention by the applicant or his legal predecessor at
an officially recognised international exhibition as defined in Art. 55(1)(b).
The applicant must state, at the time of filing the application, that theinvention has been so displayed, and must also file a supporting
certificate within four months, giving the particulars required by Rule 25(see A-IV, 3). The exhibitions recognised are published in the Official
Journal of the EPO.
An essential condition, in both instances, is that the disclosure in point
must have taken place not earlier than six months preceding the filing of
the application. For calculating the six-month period the relevant date isthat of the actual filing date of the European patent application, not thepriority date (G 3/98, OJ 2/2001, 62, and G 2/99, OJ 2/2001, 83).

JPO
PCT

N.A.

Legal basis

Patent Act Article 30(1)-(3)Category

Category III

In practice

Exception to lack of novelty of invention(For patent applications filed on or after April 1st, 2012)32

“ In the case of an invention which has fallen under any of the items of
Article 29 (1) against the will of the person having the right to obtain apatent, such invention shall be deemed not to have fallen under any of
the items of Article 29 (1) for the purpose of Article 29 (1) and (2) for theinvention claimed in a patent application which has been filed by the said
person within six months from the date on which the invention first fell
under any of said items.” (Patent Act Article 30(1))“ In the case of an invention which has fallen under any of the items of
Article 29 (1) as a result of an act of the person having the right to obtaina patent (excluding those which have fallen under any of the items of said
paragraph through the publication in the bulletin pertaining to inventions,
utility models, designs or trademarks), the preceding paragraph shall also
apply for the purpose of applications of Article 29 (1) and (2) for theinvention claimed in a patent application which has been filed by said
person within six months from the date on which the invention first fell
under any of said items.” (Patent Act Article 30(2))“Any person seeking the application of the paragraph (2) of this Article
shall submit to the Commissioner of the Patent Office, at the time of filingof the patent application, a document stating that fact and, within thirtydays from the date of filing of the patent application, a document proving
the fact that the invention which has otherwise fallen under any of theitems of Article 29(1) is an invention to which the preceding paragraphmay be applicable. “(Patent Act Article 30(3))

KIPO
PCT

N.A.

Legal basis

Patent Act Article 30
Guidelines Part III, Chapter 2, 5.3

Category
In practiceCategory III
Patent Act
Article 30 Inventions not considered to be publicly known, etc.
(1) In the case public disclosure of an invention made by a person who
has a right to obtain a patent falls under any of the following
subparagraphs and the person files a patent application within six monthfrom the date of disclosure, the invention is not considered to correspondto any of the inventions under the subparagraphs of Article 29(1) uponassessing if the invention complies with Article 29(1) or (2).
(i) When a person with the right to obtain a patent causes the invention tofall under either subparagraph of Article 29(1); nonetheless, this provision
does not apply where a patent application or a patent registration is
published in the Republic of Korea or a foreign country in accordancewith a treaty or law(ii) When, against the intention of a person with the right to obtain apatent, the invention falls under either subparagraph of Article 29(1)(2) A person who intends to take advantage of Article 30 paragraph (1)subparagraph (i) shall state purport of such intention to theCommissioner of the Korean Intellectual Property Office when filing apatent application; the person shall also submit a document proving therelevant facts to the Commissioner of the Korean Intellectual Property
Office, within thirty days from the filing date of the patent application.
Guidelines33

5.3 Requirements for inventions under Article 30 paragraph (1)5.3.1 Where an invention is laid open by a person with the right to obtaina patent prior to the filing of the application(a) The invention is publicly known(or disclosed) by a person with theright to obtain a patent(b) A patent application shall be filed by a person with the right to obtain apatent within six month from the date of disclosure (when the date ofdisclosure is unclear, the first day of the month or the year of thedisclosure may be applied);(c) The purport of taking advantage of the provision of Article 30 shall be
stated in the application; and(d) Documents proving the relevant facts shall be submitted within thirtydays from the filing date.
5.3.2 When an invention is publicly known, against the intention of aperson with the right to obtain a patent
When an invention is publicly known against the intention of a personwith the right to obtain a patent, it does not matter how the invention is
publicly known. However, the person with the right to obtain a patentshall also file a patent application within six months from the date ofdisclosure, without the need to state the purport of taking advantage of
Article 30 in the application. (Guidelines Part III, Chapter 2, 5.3)

SIPO
PCT

N.A.

Legal basis

Art 24

Category

Category III

In practiceWithin six months before the date of application, an invention for which
an application is filed for a patent does not lose its novelty under any of
the following circumstances:(1) It is exhibited for the first time at an international exhibition sponsoredor recognized by the Chinese Government;(2) It is published for the first time at a specified academic ortechnological conference; and(3) Its contents are divulged by others without the consent of theapplicant. (Art 24)
The international exhibition recognized by the Chinese Government
referred to in Article 24, subparagraph(1) of the Patent Law means theinternational exhibition that is registered with or recognized by theInternational Exhibitions Bureau as stipulated by the International
Exhibitions Convention.
The academic or technological meeting referred to in Article 24,
subparagraph(2) of the Patent Law means any academic or technologicalmeeting organized by a competent department concerned of the StateCouncil or by a national academic or technological association.
Where any invention-creation for which a patent is applied falls under theprovisions of Article 24, subparagraph(1) or (2) of the Patent Law, theapplicant shall, when filing the application, make a declaration and, withina time limit of two months from the date of filing, submit certifying
documents issued by the entity which organized the international
exhibition or academic or technological meeting, stating the fact that the34

invention-creation was exhibited or published and with the date of its
exhibition or publication.
Where any invention-creation for which a patent is applied falls under theprovisions of Article 24, subparagraph(3) of the Patent Law, the patentadministration department under the State Council may, when it deems
necessary, require the applicant to submit the relevant certifying
documents within the specified time limit.
Where the applicant fails to make a declaration and submit certifying
documents as required in paragraph three of this Rule, or fails to submit
certifying documents within the specified time limit as required inparagraph four of this Rule, the provisions of Article 24 of the Patent Law
shall not apply to the application. (Rule 30)

USPTO
PCT

N.A.

Legal basis

35 U.S.C. 102

Category

Category III

In practiceThere is a one year grace period, i.e., applicant's disclosure of his or her
own work within the year before the U.S. application filing date cannot be
used against him or her. Furthermore, evidence that the claimed
invention was in public use or on sale in the US within the one year
period before the U.S. application filing date will not bar patentability. See
MPEP 2133.

III.

PRIOR ARTD.

Third parties contributions
Currently under development

EPO
PCT

N.A.

Legal basis

Art. 115, Rule 114(1) EPC

Category

Category III

In practiceObservations by third parties (GL E-VI, 3)
Following publication of the European patent application under Art. 93,
any person may present observations concerning the patentability of theinvention. Such observations must be filed in writing in English, French or
German and must include a statement of the grounds on which they arebased. That person may not be a party to the proceedings before the
EPO.
Documentary evidence and, in particular, publications submitted insupport of the arguments may be filed in any language. However, theEPO may request that a translation into one of its official languages be
filed within a period to be specified; otherwise the evidence will be
disregarded. Although the third party is sent acknowledgment of thereceipt of his observations, the EPO does not inform him of any further
action it takes in response to them.
The observations are communicated to the applicant or proprietor without
delay and he may comment on them. If they call into question the35

patentability of the invention in whole or in part, they must be taken into
account in any proceedings pending before a department of the EPO
until such proceedings have been terminated, i.e. they must be admitted
to the proceedings. If the observations relate to alleged prior art available
other than from a document, e.g. from use, this should be taken into
account only if the alleged facts either are not disputed by the applicant
or proprietor or are established beyond reasonable doubt. Observations
by third parties received after the conclusion of proceedings will not betaken into account and will simply be added to the file.

JPO
PCT

N.A.

Legal basis

Regulations under the Patent Act Article 13-2, 13-3

Category

Category II

In practice“Any person may offer any information to the Commissioner of the Patent
Office to the effect that the patent application falls under any of thefollowing items by submitting a publication, a copy of description, claim(s)for patent or utility model registration, or drawings or other documents
attached to a request of an application for patent of utility model
registration. However, this provision shall not apply when the patentapplication ceases to be pending before the Patent Office:(i) the amendment made in respect of the description, patent claim(s) or
drawings attached to the request of the patent application (excluding aforeign language file application under Article 36bis(36-2)(2) of the Patent
Act, a foreign language patent application under Article 184quater(1844)(1) of the said Act and an international application made in a foreign
language which is recognized as a patent application in accordance with
Article 184vicies(184-20)(4) of the said Act) does not comply with therequirements prescribed in Article 17bis(17-2)(3) of the Patent Act.
(ii) the invention claimed in the patent application is unpatentable inaccordance with the provision of Article 29, 29bis(29-2) or 39(1) to (4) of
the Patent Act.
(iii) the patent application does not comply with the requirements
prescribed in Article 36(4) or (6)(excluding (iv)) of the Patent Act.
(iv) where the patent application is a foreign language file application
under Article 36bis(36-2)(2) of the Patent Act, the features disclosed in
the description, patent claim(s) or the drawings attached to the request of
the patent application do not remain within the scope of the mattersstated in its foreign language paper under Article 36bis(36-2)(1) of thesaid Act.” (Regulations under the Patent Act Article 13-2(1))“Any person may offer any information to the Commissioner of the Patent
Office to the effect that the patent falls under any of the following items bysubmitting a publication, a copy of description, claim(s) for patent or utility
model registration, or drawings or other documents attached to a requestof an application for patent or utility model registration:(i) where the patent has been effected in respect of a patent application
with the amendment which does not comply with Article 17bis (17-2)(3) ofthe Patent Act (excluding the foreign language file application under
Article 36bis(36-2)(2) of the Patent Act, the foreign language patentapplication under Article 184quater(184-4)(1) of the said Act and aninternational application made in a foreign language which is recognized
as a patent application under Article 184vicies(184-20)(4) of the said
36Act);(ii) where the patent has been effected contrary to Article 29, 29bis(29-2)
or 39(1) to (4) of the Patent Act;(iii) where the patent has been effected in respect of a patent application
which does not comply with Article 36(4)(i) or (6)(excluding (iv)) of the
Patent Act;(iv) the features disclosed in the description, patent claim(s) or drawings
attached to the request of the foreign language file application under
Article 36bis(36-2)(2) of the Patent Act do not remain within the scope ofthe features disclosed in the foreign language document under Article
36bis(36-2)(1) of the said Act;(v) where the correction to the description, patent claim(s) or drawings
attached to the request of the patent application has been effected
contrary to the proviso to Article 126(1), (3) to (5) of the Patent Act(including its application under Article 134bis(134-2)(5) of the said Act) or
the proviso to Article 134bis(134-2) of the said Act.” (Regulations under
the Patent Act Article 13-3(1))

KIPO
PCT

N.A.

Legal basis

Patent Act Article 63bis
Guidelines Part V, Chapter 3, 6.4(7)Category
In practiceCategory III
Patent Act
Article 63bis Provision of Information on Patent Applications
After a patent application has been filed, any person may provide theCommissioner of the KIPO with information and evidence of a ground forrejecting the patent application. However, this provision may not apply if
the requirements stipulated in Articles 42(8) and 45 are not satisfied.
Guidelines
6.4(7) An examiner may use evidential documents submitted for
information for his/her examination according to Article 63 bis.
Where it is certain that evidential documents are periodicals or theircopies, or copies of description or drawing(s) having been published
before the application date, an examiner may use them as prior art
without additional examination of evidence.
Where evidential documents submitted are documents other thanperiodicals or their copies, or copies of description or drawing(s) having
been published before the application date, an examiner may use themas prior art only if an examiner is confident of the fact to be verified
without examination of evidence. However, where an applicant argues
the existence of the evidential fact in the written argument, an examiner
shall not admit the fact unless he/she finds its admission justifiable.
(Explanation) The Patent Act has no provisions regarding an examinationof evidence during examination. Therefore, where the evidential
documents submitted for reference information are documents other thanperiodicals or their copies, or copies of description or drawing(s) having
been published but the fact to be verified cannot be confirmed withconfidence, an examiner shall not decide to reject the application basedon this evidence.
37

(Note) Except for an application which has been invalidated, withdrawn,
or abandoned, or whose patent grant or rejection has been decided by an
examiner, anyone can provide relevant evidence to an examiner to argue
that an application of the claimed invention shall not be patented.
Information provision can be made by any person or corporation, except
for an incompetent minor who shall appoint a legal representative forsuch action. In the meanwhile, an examiner may refer documents orinformation provided by a group or association instead of invalidating or
returning them. (Guidelines Part V, Chapter 3, 6.4(7))

SIPO
PCT

N.A.

Legal basis

Rule 48

Category

Category II

In practice

Any person may, from the date of publication of an application for apatent for invention till the date of announcing the grant of the patentright, submit to the patent administration department under the StateCouncil his observations, with reasons therefore, on the application which
is not in conformity with the provisions of the Patent Law. (Rule 48)
The observations submitted by anyone to the Patent Office on an
invention application not in conformity with the provisions of the Patent
Law shall be included in the application file, and the examiner shall takethem into consideration in the course of substantive examination. It is notnecessary for the examiner to consider the observations submitted after
the issuance of Notification to Grant Patent Right. The handling of theobservation submitted by the public does not need to be notified to the
public concerned. (Guidelines Part II Chapter 8 Section 4.9)

USPTO
PCT

N.A.

Legal basis

35 U.S.C. 122; 37 CFR 1.99, 1.291, 1.292

Category

Category III

In practiceThird parties may submit patents or publications, with no further commentor explanation, for consideration in a pending published application
during a limited (2 month) period after publication of an application incompliance with 37 CFR 1.99.
The only forms of third party protest or pre-issuance opposition to apending application (permitted by the rules of practice) are protests under
37 CFR 1.291 (see MPEP 1901) and public use proceedings under 37
CFR 1.292 (see MPEP 720), which must be filed prior to publication of
the application (unless applicant otherwise consents).

III.

PRIOR ARTE.

"Secret prior art" and its relevance for the assessment of novelty
Based on the Trilateral Comparative Studies

EPO
PCT

N.A.
38

Legal basis

Conflicting European applications: Art 54(3) EPC
Conflicting PCT applications: Art 153, Rule 165 EPC
Conflicting national applications: Rule 138 EPC

Category

Category III

In practice

Under the European patent system, "secret prior art" is referred to as"conflicting applications".
Conflict with other European applications (GL C-IV, 7.1)
The state of the art also comprises the content of other European
applications filed or validly claiming a priority date earlier than – butpublished under Art. 93 on or after – the date of filing or valid date ofpriority of the application being examined. Such earlier applications arepart of the state of the art only when considering novelty and not when
considering inventive step. In case of an earlier application filed in a nonofficial language as permitted by Art. 14(2), it is the content of the original
text, and not the content of the translation as published, which is relevant
for the purposes of Art. 54(3).
Whether a published European application can be a conflicting
application under Art. 54(3) is determined firstly by its filing date and thedate of its publication; the former must be before the filing or valid priority
date of the application under examination, the latter must be on or afterthat date. If the published European application claims priority, the priority
date replaces the filing date (Art. 89) for that subject-matter in theapplication which corresponds to the priority application. If a priority claim
was abandoned or otherwise lost with effect from a date prior to
publication, the filing date and not the priority date is relevant,irrespective of whether or not the priority claim might have conferred avalid priority right.
Further it is required that the conflicting application was still pending at its
publication date (see J 5/81, OJ 4/1982, 155). If the application waswithdrawn or otherwise lost before the date of publication, but publishedbecause the preparations for publication had been completed, thepublication has no effect under Art. 54(3). Changes taking effect after thedate of publication (e.g. withdrawal of a designation or withdrawal of thepriority claim or loss of the priority right for other reasons) do not affectthe application of Art. 54(3).
Conflict with other Euro-PCT applications (GL C-IV, 7.2)
The above principles also apply to PCT applications designating EP, butwith an important difference. Art. 153, in conjunction with Rule 165,
makes it clear that a PCT application is not included in the state of the art
for the purposes of Art. 54(3) unless the PCT applicant has paid therequired filing fee under Rule 159(1)(c) and has supplied the PCT
application to the EPO in English, French or German (this means that atranslation is required where the PCT application was published inJapanese, Chinese, Spanish, Russian, Korean, Portuguese or Arabic).
Conflict with national rights in an EPO Contracting State (GL IV, 8)
Where a national right of an earlier date exists in a Contracting State
designated in the application, there are several possibilities ofamendment open to the applicant. First, he may simply withdraw thatdesignation from his application for the Contracting State of the nationalright of earlier date. Second, for such State, he may file claims which are
different from the claims for the other designated States. Third, theapplicant can limit his existing set of claims in such a manner that the39

national right of earlier date is no longer relevant.
Amendment of the application to take account of prior national rights
should be neither required nor suggested. However, if the claims havebeen amended, then amendment of the description and drawings should
be required if necessary to avoid confusion.

JPO
PCT

N.A.

Legal basis

Patent Act Article 29-2

Category

Category III

In practice“Where an invention claimed in a patent application is identical with aninvention or device (excluding an invention or device made by theinventor of the invention claimed in the said patent application) disclosed
in the description, scope of claims or drawings (in the case of the foreign
language written application under Article 36bis (2), foreign language
documents as provided in Article 36bis (1)) originally attached to thewritten application of another application for a patent or for a registrationof a utility model which has been filed prior to the date of filing of the said
patent application and published after the filing of the said patentapplication in the patent gazette under Article 66(3) of the Patent Act(hereinafter referred to as "gazette containing the patent") or in the utility
model bulletin under Article 14(3) of the utility Model Act (Act No. 123 of
1959) (hereinafter referred to as "utility model bulletin") describing
matters provided for in each of the paragraphs of the respective Article orfor which the publication of the patent application has been effected, apatent shall not be granted for such an invention notwithstanding Article
29(1) ; provided, however, that this shall not apply where, at the time of
the filing of the said patent application, the applicant of the said patentapplication and the applicant of the other application for a patent or forregistration of a utility model are the same person.” (Patent Act Article 292)

KIPO
PCT

N.A.

Legal basis

Patent Act Article 29 (3) (4)Guidelines Part III, Chapter 4

Category

Category III

In practicePatent Act Article 29 (3)(4) (Enlarged Concept of Novelty)(3) Where a patent application is filed for an invention that is identical toan invention or device described in the description or drawing(s) originallyattached to another application for a patent or a utility model registrationthat has been filed before the filing date of the patent application and laid
open or published after the filing of the patent application, the patent shallnot be granted for such an invention. However, this shall not apply where
the inventor of the concerned patent application and the inventor of theanother application for a patent or utility model registration are the same
person, or the applicant of the concerned patent application and theapplicant of the another application for a patent or utility model
registration are the same person at the time of filing of the concerned
patent application.
(4) where the another application for a patent or utility model registration40

falls under one of the following subparagraphs, “laid open” of paragraph(3) reads “laid open or published for an international publication under
Article 21 of the Patent Cooperation Treaty”, and "an invention or device
described in the description or drawing(s) originally attached to thewritten application" reads, in case the international application was filed in
Korean, "an invention or device described in the description, claim(s) or
drawing(s) of the international application as of the international filingdate" and, in case the international application was filed in a foreign
language, “an invention or device described in the description, claim(s) or
drawing(s) of both the international application as of the international
filing date and its translation”:(i) the another application for a patent is an international application thatis deemed to be a patent application according to Article 199(1)(including an international application that is deemed to be a patentapplication according to Article 214(4)); and(ii) the another application for a utility model registration is aninternational application that is deemed to be a utility model registration
application according to Article 34(1) of the Utility Model Act (including aninternational application that is deemed to be a utility model registration
application according to Article 40(4) of the Utility Model Act).

SIPO
PCT

N.A.

Legal basis

Art 22(2)Category
In practiceCategory III
Novelty means that the invention or utility model concerned is not an
existing technology; no patent application is filed by any unit or individual
for any identical invention or utility model with the patent administration
department under the State Council before the date of application forpatent right, and no identical invention or utility model is recorded in thepatent application documents or the patent documentations which are
published or announced after the date of application. (Paragraph 2 Art
22)
In accordance with Article 22.2, when novelty of an invention or utility
model application is examined, the applications relating to the identicalinvention or utility model which have been filed by any entity or individual
prior to the filing date of the application being examined with the Patent
Office and published or announced on or after said filing date, will takeaway the novelty of the application being examined. During examinationof novelty, for the sake of convenience, this kind of application that are
prejudicial to the novelty of the application being examined are called“conflicting applications”.
When conducting a search to determine whether there exists a conflicting
application, the examiner shall note that not only the claims but also thedescription (including drawings) of the earlier patent or patent application
shall be consulted, that is, the whole contents thereof shall be taken into
account.
A conflicting application can also be an international application entering
the Chinese national phase that was filed previously by any entity or
individual, published or announced by the Patent Office on or after thefiling date of the application being examined, and is for an identicalinvention or utility model.
41

It should be noted that conflicting applications refer to the applications forthe identical invention or utility model filed previously before but not on
the filing date of the application being examined. (Guidelines Part II
Chapter 3 Section 2.2)

USPTO
PCT

N.A.

Legal basis

35 U.S.C. 102

Category

Category III

In practice

Under 35 U.S.C. 102(e), the effective U.S. filing date of a U.S. patent or
U.S. patent application publication may be used as the prior art date.
Furthermore, the filing date of an international application is a U.S. filingdate for prior art purposes under 35 U.S.C. 102(e) if the international
application (1) has a filing date on or after November 29, 2000; (2)designated the United States; and(3) published under PCT Article 21(2) in English. See MPEP 2136.03.
Note that an application claiming the benefit of an earlier US provisional
application is to be treated as if filed on the provisional filing date, so longas it provides adequate written description support for the invention thatis ultimately claimed.
Thus under 35 U.S.C. 102(e), a U.S. patent or publication that publishedafter an application’s effective filing date is available as prior art if thepatent or publication has an effective filing date earlier than theapplication. Such prior art can be considered in assessing novelty as
well as nonobviousness. See MPEP 2136.03.
If a foreign patent grants an exclusionary right (is enforceable), but it issecret or private, it is not available as prior art for purposes ofdetermining novelty (or nonobviousness). The patent must be at least
minimally available to the public, e.g., laid open for public inspection ordisseminated in printed form. See MPEP 2126 and 2126.01.

III.

PRIOR ART

F.

Issues relating to double patenting and its prevention
Based on the Trilateral Comparative Studies

EPO
PCT

N.A.

Legal basis

N.A.

Category

N.A.

In practice

Double patenting in general (GL C-IV, 7.4)
The EPC does not deal explicitly with the case of co-pending European
applications of the same effective date. However, it is an accepted
principle in most patent systems that two patents cannot be granted tothe same applicant for one invention. It is permissible to allow anapplicant to proceed with two applications having the same description
where the claims are quite distinct in scope and directed to different
inventions.
Should two applications of the same effective date be received from two42

different applicants, each must be allowed to proceed as though the other
did not exist.
Potential double patenting in case of divisional applications (GL CIV, 7.4 and GL C-VI, 9.1.6)
However, in the rare case in which there are two or more European
applications from the same applicant definitively designating the same
State or States (by confirming the designation through payment of therelevant designation fees) and the claims of those applications have thesame filing or priority date and relate to the same invention (in the typicalcase: a parent application and an divisional application), the applicant
should be told that he must either amend one or more of the applications
in such a manner that they no longer claim the same invention, or choose
which one of those applications he wishes to proceed to grant ((GL C-IV,
7.4)
Thus, the parent and divisional applications may not claim the same
subject-matter. This means not only that they must not contain claims of
substantially identical scope, but also that one application must not claim
the subject-matter claimed in the other, even in different words. The
difference between the claimed subject-matter of the two applications
must be clearly distinguishable. As a general rule, however, one
application may claim its own subject-matter in combination with that of
the other application. In other words, if the parent and divisional
applications claim separate and distinct elements A and B respectively
which function in combination, one of the two applications may also
include a claim for A plus B (GL C-VI, 9.1.6).

JPO
PCT

N.A.

Legal basis

Patent Act Article 39

Category

Category III

In practice“(1)Where two or more patent applications claiming identical inventions
have been filed on different dates, only the applicant who filed the patentapplication on the earliest date shall be entitled to obtain a patent for theinvention claimed.
(2)Where two or more patent applications claiming identical inventions
have been filed on the same date, only one applicant, who was selectedby consultations between the applicants who filed the said applications,shall be entitled to obtain a patent for the invention claimed. Where noagreement is reached by consultations or consultations are unable to beheld, none of the applicants shall be entitled to obtain a patent for theinvention claimed.
(3)Where an invention and a device claimed in applications for a patent
and a utility model registration are identical and the applications for apatent and a utility model registration are filed on different dates, theapplicant for a patent may obtain a patent for the invention claimed
therein, only if the application for a patent is filed prior to the application
for a utility model registration.
(4)Where an invention and a device claimed in applications for a patent
and a utility model registration are identical (excluding the case where an
invention claimed in a patent application based on a utility model
registration under Article 46-2(1) (including a patent application that isdeemed to have been filed at the time of filing of the said patent43

application under Article 44(2) (including its mutatis mutandis application
under Article 46(5)) and a device relating to the said utility model
registration are identical) and the applications for a patent and a utility
model registration are filed on the same date, only one of the applicants,
selected by consultations between the applicants, shall be entitled toobtain a patent or a utility model registration. Where no agreement isreached by consultations or no consultations are able to be held, theapplicant for a patent shall not be entitled to obtain a patent for theinvention claimed therein.
(5)Where an application for a patent or a utility model registration has
been waived, withdrawn or dismissed, or where the examiner's decisionor trial decision to the effect that a patent application is to be refused has
become final and binding, the application for a patent or a utility model
registration shall, for the purpose of paragraphs (1) to (4), be deemed
never to have been filed; provided, however, that this shall not apply tothe case where the examiner's decision or trial decision to the effect thatthe patent application is to be refused has become final and binding on
the basis that the latter sentence of paragraph (2) or (4) is applicable tothe said patent application.
(6)An application for a patent or a utility model registration filed by aperson who is neither the inventor nor designer nor the successor in title
to the right to obtain a patent or a utility model registration shall, for the
purpose of application of paragraphs (1) to (4), be deemed to be neither
an application for a patent nor an application for a utility model
registration.
(7)The Commissioner of the Patent Office shall, in the case of paragraph(2) or (4), order the applicant to hold consultations as specified underparagraph (2) or (4) and to report the result thereof, designating anadequate time limit.
(8)Where no report under the preceding paragraph is submitted within
the time limited designated under the said paragraph, the Commissionerof the Patent Office may deem that no agreement under paragraph (2) or(4) has been reached.”(Patent Act Article 39)

KIPO
PCT

N.A.

Legal basis

Patent Act Article 36
Guidelines Part III, Chapter 5

Category

Category III

In practicePatent Act
Article 36 First-to-File Rule
(1) Where two or more patent applications claiming identical inventions
are filed on different dates, only the applicant of the patent application
with the earlier filing date may obtain a patent for the invention.
(2) Where two or more patent applications claiming identical inventions
are filed on the same date, only the applicant agreed upon by all theapplicants after consultation may obtain a patent for the invention. If noagreement is reached or no consultation is possible, none of theapplicants may obtain a patent for the invention.
(3) Where an invention of a patent application is the same as a device ofa utility model registration application and the applications are filed on44different dates, paragraph (1) applies mutatis mutandis. In addition,
where the applications are filed on the same date, paragraph (2) applies
mutatis mutandis.
(4) Where a patent application or a utility model registration application isinvalidated, withdrawn, or abandoned, or where a decision of rejection ora trial decision to reject the application has become final and binding, thepatent application or utility model registration application is deemed tohave never been filed in the application of paragraphs (1) to (3).
However, this provision shall not apply where a decision of rejection or atrial decision to reject the patent application or the utility model
registration application has become final and binding in accordance withthe latter sentence of paragraph (2) (including cases in which theprovision applies mutatis mutandis under paragraph (3)).
(5) When paragraphs (1) to (3) apply, a patent application or utility model
registration application filed by a person who is not the inventor, creatoror successor in title to the right to obtain a patent or utility model
registration is deemed never to have been filed.
(6) When paragraph (2) applies, the Commissioner of the KIPO shallorder the applicants to report on the results of the consultation within adesignated period. If the report is not submitted to the Commissioner ofthe KIPO within the designated period, the applicants are deemed not tohave reached an agreement prescribed in paragraph (2).

SIPO
PCT

N.A.

Legal basis

Art 9, Rule 41(1) and (2)Category

Category III

In practice

Only one patent can be granted for the same invention. However, where
the same applicant applies for a utility model patent and an invention
patent with regard to the same invention on the same day, if the utility
model patent acquired earlier is not terminated yet and the applicant
declares his waiver of the same, the invention patent may be granted.
If two or more applicants apply for a patent for the same invention
separately, the patent right shall be granted to the first applicant. (Art 9)
Two or more applicants who respectively file, on the same day(means
the date of filing or the priority date where priority is claimed),
applications for patent for the identical invention-creation, shall, after
receipt of a notification from the patent administration department under
the State Council, hold consultations among themselves to decide theperson or persons who shall be entitled to file the application.
Where an applicant files on the same day (means the date of filing)
applications for both a patent for utility model and a patent for invention
for the identical invention-creation, he or it shall state respectively upon
filing the application that another patent application for the identicalinvention-creation has been filed by him or it. If the applicant fails to doso, the issue shall be handled according to the provisions of Article 9,paragraph one of the Patent Law, only one patent right shall be granted
for any identical invention-creation. (Paragraph 1 and 2 of Rule 41)
Article 9 establishes the principle of non-double-patenting. The purposeof preventing duplicate patent rights being granted to an identicalinvention-creation is to prevent interference between patent rights.
As for invention or utility model, “identical invention-creation” referred to45

in Article 9 and Rule 41 means claims which exist in two or more
applications or patents, and have the same extent of patent protection.
(Guidelines Part II Chapter 3 Section 6)

USPTO
PCT

N.A.

Legal basis

35 U.S.C. 101, Judicial doctrine

Category

Categories III and IV

In practiceThere are two types of double patenting rejections. One is the “sameinvention” type double patenting rejection based on 35 U.S.C. 101 whichstates in the singular that an inventor “may obtain a patent.” The second
is the “nonstatutory-type” double patenting rejection based on a judiciallycreated doctrine.
A nonstatutory double patenting rejection is based on a judicially createddoctrine grounded in public policy and which is primarily intended toprevent prolongation of the patent term by prohibiting claims in a second
patent not patentably distinguishing from claims in a first patent. A
nonstatutory double patenting rejection is appropriate where theconflicting claims are not identical, but at least one examined claim is notpatentably distinct from the reference claim(s) because the examined
application claim is either anticipated by, or would have been obvious
over, the reference claim(s). See, e.g., In re Berg, 46 USPQ2d 1226
(Fed. Cir. 1998). See MPEP 804 for a discussion of nonstatutory double
patenting rejection. If the copending applications differ by at least one
inventor and at least one of the application is not patentable over theother, a provisional rejection under 35 U.S.C. 102(e) or 103 may bemade when appropriate. See MPEP 2127, subsection IV., 706.02(f)(2),706.02(k), 706.02(l)(1), and 706.02(l)(3).
If an application that has not been published has an assignee or inventor
in common with the application being examined, a rejection will be properin some circumstances. For instance, when the claims between the two
applications are not independent or distinct, a provisional nonstatutory
double patenting rejection may be made.

IV.

NOVELTY

A.

Prior art document enabling only in the light of extrinsic knowledge
available subsequently
PCT reservation (PCT/GL/IPSE Appendix A12.02)

EPO
PCT

PCT/GL/IPSE Appendix A12.02, Alternative A12.02[1]Legal basis

Art 54 EPC

Category

Category III

In practice

Extrinsic knowledge must be available at the date of publication of
the prior art document (GL C-IV, 9.3 and GL C-IV, 9.4)
Subject-matter can only be regarded as having been made available tothe public, and therefore as comprised in the state of the art pursuant toArt. 54(1), if the information given to the skilled person is sufficient to46

enable him, at the relevant date, to practise the technical teaching whichis the subject of the disclosure, taking into account also the generalknowledge at that time in the field to be expected of him (see T 26/85, OJ
1-2/1990, 22, T 206/83, OJ 1/1987, 5 and T 491/99, not published in OJ)(GL C-IV, 9.4).
Similarly, it should be noted that a chemical compound, the name orformula of which is mentioned in a prior-art document, is not thereby
considered as known, unless the information in the document, together,where appropriate, with knowledge generally available on the relevant
date of the document, enables it to be prepared and separated or, forinstance in the case of a product of nature, only to be separated (GL CIV, 9.4).
By "relevant" date is meant the publication date in the case of apreviously published document and the date of filing (or priority date,where appropriate) in the case of a document according to Art. 54(3),e.g., a conflicting application (GL C-IV, 9.3).

JPO
PCT

PCT/GL/IPSE Appendix A12.02, Alternative A12.02[2].1-2

Legal basis

Guidelines Part II, Chapter 2, 1.5.3 (3)Category

Category I

In practice“The finding of "an invention described in a publication" is made on thebasis of “the matters described in a publication.” Matters described in a
publication can be construed in the light of the common generalknowledge. The matters which a person skilled in the art can directly
derive from matters described in a publication in consideration of thecommon general knowledge as of the filing (hereinafter referred to as"matters essentially described, though not literally, in a publication") can
be a basis for the finding of an invention described in a publication. In
other words, “an invention described in a publication" means an invention
which a person skilled in the art can identify on the basis of the mattersboth described and essentially described, though not literally, in a
publication. Thus, unless an invention can be identified by a person
skilled in the art on the basis of the matters both described andessentially described, though not literally, in a publication, the invention
shall not be deemed to be "an invention described in a publication," i.e.,"a cited invention" under Article 29(1)(iii). For example, where “mattersdescribed in a publication” are a part of alternatives of Markush-type
formula, it is determined whether a person skilled in the art can identify
an invention of which a matter is one of the alternatives.” (Guidelines Part
II, Chapter 2, 1.5.3 (3))

KIPO
PCT

PCT/GL/IPSE Appendix A12.02, Alternative A12.02[2].1,2

Legal basis

Case No. 2004hu2307 (Supreme Court, 24 Mar. 2006)
Guidelines Part III, Chapter 2, 3.3.4
Guidelines Part III, Chapter 3, 5.2(5)Category
In practiceCategory I, Category IV
Guidelines“An invention described in a publication” means an invention identified by
the matters, which are directly and clearly described or considered to be47

essentially described, though not explicitly, in a publication. Here “Mattersessentially described, though not explicitly, in a publication” includes
those directly derivable from the matters described, taking the common
general knowledge into consideration. (Guidelines Part III, Chapter 2,
3.3.4)
Even though the prior art constitutes an incomplete expression or there isa defect in some of the prior art, it can be cited in assessing the inventive
step, when the person skilled in the art can readily understand thetechnical features of the claimed invention based on common technicalknowledge or empirical rules. (Guidelines Part III, Chapter 3, 5.2(5))(Example 1)
The claimed invention relates to a pharmaceutical compound to treat
neuro-degenerative disorders by using an estrogen compound alone. A
person skilled in the art can easily recognize from the cited invention thatsexual hormones such as estrogen are effective for curing neuroderogative disorders. And if this fact is not contrary to the technicalcommon sense at the time of filing the application, the cited invention canbe used as a prior art to assess the inventive step even if some defects
exist in the description of the cited invention due to insufficiently
disclosed pharmaceutical effects and real experiments. (Case No.
2004hu2307 (Supreme Court, 24 Mar. 2006))

SIPO
PCT

PCT/GL/IPSE Appendix A12.02, Alternative A12.02[2].1-2

Legal basis

Art 22(2)Category

Category III

In practice

When determining novelty, the examiner shall compare each claim of theapplication separately with the relevant technical contents disclosed ineach item of the prior art or each previously filed and later published or
announced invention or utility model, rather than with a combination of
the contents disclosed in several items of the prior art or several
previously filed and later published or announced applications or with a
combination of several technical solutions disclosed in one reference
document. (Guidelines Part II Chapter 3 Section 3.1)

USPTO
PCT

The ISA/IPEA/US considers knowledge that became available after the
publication date of the prior document but before the relevant date of theclaim being searched or examined to determine whether the priordocument provided a sufficient disclosure of every element or step of theclaimed invention. See PCT/GL/ISPE, Appendix A12.02, Alternative
A12.02[2].

Legal basis

In re Donohue, 766 F.2d 531, 226 USPQ 619 (Fed. Cir. 1985)

Category

Category IV

In practiceA reference contains an “enabling disclosure” if the public was inpossession of the claimed invention before the date of invention.
Therefore, knowledge that became available after the publication date of
the prior document but before the relevant date of the claim being
searched or examined is considered when determining whether the priordocument provided a sufficient disclosure of every element or step of theclaimed invention.
48

IV.

NOVELTY

B.

Established tests or practical guidance for the assessment of novelty
Based on the Trilateral Comparative Studies

EPO
PCT

N.A.

Legal basis

Art 54 EPC

Category

Categories III, IV

In practiceAssessment of novelty (GL C-IV, 9)
State of the art to be considered (GL C-IV, 9.1)
An invention is considered to be new if it does not form part of the stateof the art. It should be noted that in considering novelty, it is not
permissible to combine separate items of prior art together. It is also not
permissible to combine separate items belonging to different
embodiments described in one and the same document, unless suchcombination has specifically been suggested (T 305/87, OJ 8/1991, 429).
However, if a document (the "primary" document) refers explicitly toanother document as providing more detailed information on certain
features, the teaching of the latter is to be regarded as incorporated into
the document containing the reference, if the document referred to wasavailable to the public on the publication date of the document containing
the reference (see T 153/85, OJ 1-2/1988, 1). The relevant date fornovelty purposes, however, is always the date of the primary document.
Furthermore, any matter explicitly disclaimed (with the exception of
disclaimers which exclude unworkable embodiments) and prior art
acknowledged in a document, insofar as explicitly described therein, areto be regarded as incorporated in the document. It is further permissible
to use a dictionary or similar document of reference in order to interpret a
special term used in a document.
Novelty and implicit disclosures in a prior art document (GL C-IV, 9.2 andGL C-IV, 9.6)
A document takes away the novelty of any claimed subject-matter
derivable directly and unambiguously from that document including any
features implicit to a person skilled in the art in what is expressly
mentioned in the document, e.g. a disclosure of the use of rubber incircumstances where clearly its elastic properties are used even if this is
not explicitly stated takes away the novelty of the use of an elastic
material (GL C-IV, 9.2)
It may also happen that, in carrying out the teaching of the priordocument, the skilled person would inevitably arrive at a result fallingwithin the terms of the claim. An objection of lack of novelty of this kindshould be raised by the examiner only where there can be no reasonable
doubt as to the practical effect of the prior teaching. Situations of this kind
may also occur when the claims define the invention, or a feature thereof,by parameters. It may happen that in relevant prior art a different
parameter, or no parameter at all, is mentioned. If the known and theclaimed products are identical in all other respects (which is to be
expected if, for example, the starting products and the manufacturing
49

processes are identical), then in the first place an objection of lack ofnovelty arises. If the applicant is able to show, e.g. by appropriatecomparison tests, that differences do exist with respect to theparameters, it is questionable whether the application discloses all thefeatures essential to manufacture products having the parametersspecified in the claims (GL C-IV, 9.6)
Novelty and generic disclosure / specific examples in a prior document(GL C-IV, 9.5)
In considering novelty, it should be borne in mind that a genericdisclosure does not usually take away the novelty of any specificexample falling within the terms of that disclosure, but that a specificdisclosure does take away the novelty of a generic claim embracing that
disclosure, e.g. a disclosure of copper takes away the novelty of metal asa generic concept, but not the novelty of any metal other than copper,
and one of rivets takes away the novelty of fastening means as a genericconcept, but not the novelty of any fastening other than rivets.
Novelty and well-known equivalents (GL C-IV, 9.2)
The limitation to subject-matter "derivable directly and unambiguously"from the document is important. Thus, when considering novelty, it is notcorrect to interpret the teaching of a document as embracing well-known
equivalents which are not disclosed in the documents; this is a matter ofobviousness.
For assessment of novelty of selection inventions, see GL C-IV, 9.8.

JPO
PCT

N.A.

Legal basis

Guidelines Part II, Chapter 2, Section 1.5.4, 1.5.5

Category

Category I

In practice- Comparison of a claimed invention with a cited invention “(1) The comparison between a claimed invention and a cited invention isconducted by finding of the identicalness and the difference between thematters defining the claimed invention and the matters considered to beneeded at the expression of the cited invention in words (hereinafterreferred to as "matters defining the cited invention").
(2) A more specific concept within the concept of the claimed invention
may be compared with a cited invention for the purpose of finding theidenticalness and the difference between a claimed invention and a citedinvention, instead of the method of comparison mentioned (1).
An example of “a more specific concept within the concept of a claimed
invention” is the disclosed invention described in the description or thedrawing as a mode for carrying out the claimed invention. The mode
which is not disclosed in the description or the drawing may also becompared with the claimed invention as far as they are more specificconcepts within the concept of the claimed invention.
This alternative method would be helpful for the examination of novelty interms of claims with statements defining a product by its function orproperties, etc., or claims with numerical limitation, etc.
(3) In cases where the matters defining a claimed invention is comparedwith the matters described in a cited publication instead of the method ofcomparison mentioned (1), the finding of the identicalness and thedifference between the claimed invention and the cited invention may be50conducted in consideration of the common general knowledge as of thefiling. But the result of using this method shall be the same as the resultof the methods mentioned (1).
(4) The comparison shall not be conducted between a claimed invention
and a combination of two or more cited inventions.”(Guidelines Part II, Chapter 2, Section 1.5.4)- Determining whether a claimed invention is novel “(1) Where there is no difference between the matters defining a claimed
invention and the matters defining a cited invention as a result of thecomparison, the claimed invention is not novel. Where there is adifference, the claimed invention is novel.
(2) If matters defining a claimed invention are expressed by alternatives
either in form or de facto (Note1), and if any one of inventions each ofwhich is identified by supposing that each of the alternatives is a matterto define each of such inventions has no difference from a citedinvention, the claimed invention shall be deemed not to be novel.(Note 2)(Note 1) "Alternatives in form" means a claim statement with an apparent
form of alternatives. Among claims with "alternatives in form" are a claim
with Markush-type formula and a multiple dependent form claim whichrefers to two or more other claims in an alternative form. "Alternatives inde facto" means a claim statement which is of comprehensive nature but
intends to include a certain number of more specific matters. Whether aclaim statement is "de facto alternatives" should be determined in thelight of the description in the specification, the drawings and the common
general knowledge as of the filing in addition to the claim statement.
Among typical examples of claims having "de facto alternatives" is aclaim of which a matter defining the claimed invention is "an alkyl with 1
to 10 carbons." (The above claim statement of comprehensive natureincludes a methyl, an ethyl and so on.) As opposed to the above, a term
"thermoplastic resin" in a claim should not be construed as one thatmerely denotes a certain number of more specified matters by means of
the term of comprehensive nature except when it should be construed in
the light of the description in the specification, the drawings and thecommon general knowledge as of the filing in such a case as the term isdefined in the description of the invention. Thus, the term should not be
deemed to be de facto alternatives. In other words, it should beconstrued that the concept of "thermoplastic resin" includes uncertain
number of more specified matters (e.g., polyethylene, polypropylene,etc.), and that the term denotes a certain generic concept in terms ofcharacteristic which the more specific matters have in common (i.e.,"thermoplasticity" in this case).
(Note 2) The handling does not relate with the practice for the appropriate
time to stop prior art searches. See " PartⅨ: Procedure of Examination."(3) Handling of a claim with statements defining a product by its function
or characteristic, etc.
① Where a claim includes statements defining a product by its function
or characteristic, etc. and it falls under either the following (i) or (ii), there
may be cases where it is difficult to compare of the claimed invention witha cited invention. In the above circumstances, if the examiner has areason to suspect that the claimed product would be prima facie identicalwith the product of the cited invention without making a strict comparisonof the claimed product with the product of the cited invention, theexaminer may send the notice of reasons for refusal under Article 29(1)51as far as there is no other difference. Then an applicant may argue orclarify by putting forth a written argument or a certificate of experimental
results, etc. against the notice of reasons for refusal. The reason forrefusal is to be dissolved if the applicant’s argument succeeds inchanging the examiner’s evaluation at least to the extent that it is unclearthat the claimed product is prima facie identical with the product of thecited invention. Where the applicant’s argument, which is, for example,
abstract or general, does not change the examiner’s evaluation to that
extent, the examiner may render a decision of refusal under Article 29(1).
The above-mentioned handling, however, shall not be applied, if mattersdefining the cited invention fall under either the following (i) or (ii).
(i) a case where the function or characteristic, etc. is neither standard,
commonly used by a person skilled in the art in the relevant technicalfield nor comprehensible of its relation to a commonly used function or
characteristic, etc. to a person skilled in the art if the function or
characteristic, etc. is not commonly used, or(ii) a case where plural of functions or characteristics, etc. each of which
is either standard, commonly used by a person skilled in the art in therelevant technical field or comprehensible of its relation to a commonlyused function or characteristic, etc. to a person skilled in the art if thefunction or characteristic, etc. is not commonly used, are combined in aclaim so that the claim statements as a whole fall under (i).
(Note) Function or characteristic, etc. should be deemed to be standard if
it is either defined by JIS (Japanese Industrial Standards), ISO-standards(International Organization for Standardization-standards) or IECstandards (International Electro-technical Commission-standards), or if it
can be determined quantitatively by a method for testing or measuring
which is provided in those standards. Function or characteristic, etc.
should be deemed to be commonly used by a person skilled in the art if it
is commonly used by a person skilled in the art in the technical field aswell as its definition or the method for testing or measuring can beunderstood by a person skilled in the art.
② Examples where the examiner has a reason to suspect the prima facie
identity are the followings:
・ (s)he reveals that a prior art product is identical with the product of theclaimed invention as a result of converting the function or characteristic,
etc. into a different definition with the same meaning or a different
method for testing or measuring the same;・ where a claimed invention and a cited invention are defined by
identical or similar function or characteristic, etc. which are measured or
evaluated under different measuring conditions or different evaluation
methods, and there is a certain relationship between them, and there is ahigh probability that the function or characteristic, etc. defining the citedinvention, if measured or evaluated under the same measuring conditions
or evaluation method as the claimed invention, is included in the function
or characteristic, etc. defining the claimed invention;
・ a product of the claimed invention has been revealed identical instructure with a certain product after the filing and (s)he discovers theparticular product is publicly known prior to the filing;・ (s)he discovers a prior art product which is identical with or similar to amode for carrying out the claimed invention (for example, (s)he discovers
a prior art product of which starting material is similar to and of which
manufacturing process is identical with those of the mode for carrying out
52the claimed invention, or (s)he discovers a prior art product of whichstarting material is identical with and of which manufacturing process issimilar to those of the mode for carrying out the claimed invention, etc.);
and・ the claimed invention and a cited invention have common mattersdefining the inventions other than those defining a product by its function
or characteristic, etc., and the cited invention has the same objective or
effect as the matters defining a product by its function or characteristic,
etc. have, and there is a high probability that the function or
characteristic, etc. defining the cited invention is included in the function
or characteristic, etc. defining the claimed invention The examiner should
follow the ordinary method when the requirement of novelty can be
examined without using this exceptional handling.
The examiner should follow the ordinary method when the requirement ofnovelty can be examined without using this exceptional handling.
(4) Handling of a claim with statements defining a product by its
manufacturing process① If a claim is one with statements defining a product by its
manufacturing process, there may be cases where it is difficult todetermine what is the product per se structurally. In such circumstances,
if the examiner has a reason to suspect that the claimed product would
be prima facie identical with the product of the cited invention without
making a strict comparison of the claimed product with the product of thecited invention, the examiner may send the notice of reasons for refusal
under Article 29(1), as far as there is no other difference, as mentioned in
the above (3).
The above-mentioned handling, however, shall not be applied, if mattersdefining the cited invention include statements defining a product by its
manufacturing process.
② Examples where the examiner has a reason to suspect the prima facie
identity are the followings:
・ (s)he discovers a product of a cited invention of which starting material
is similar to and of which manufacturing process is identical with those of
the product of the claimed invention;・ (s)he discovers a product of a cited invention of which starting material
is identical with and of which manufacturing process is similar to those of
product of the claimed invention;
・ a product of the claimed invention has been revealed identical instructure with a certain product after the filing, and (s)he discovers theparticular product is publicly known prior to the filing of the application;and・ (s)he discovers a cited invention which is identical with or similar to amode for carrying out the claimed invention. The examiner should follow
the ordinary method when the requirement of novelty can be examined
without using this exceptional handling.”(Guidelines Part II, Chapter 2, Section 1.5.5)

KIPO
PCT

N.A.

Legal basis

Guidelines Part III, Chapter 2, 4.

53

CategoryCategory I

In practice

Guidelines
4. How to assess novelty(1) The examiner shall assess whether or not a claimed invention is novelby judging whether the claimed invention falls within the scope of theinventions set forth in the provision of Article 29 paragraph (1)subparagraph (i) to (ii).
(2) The claims must describe the subject matter for which protection issought. (Article 42 paragraph (4)) Thus, the assessment of novelty on an
invention is based on the subject matters described in the claims.
(3) When there are two or more claims in an application, assessment
over novelty should be made for each claim.
4.1 Specifying the invention disclosed in claims
4.1.1 General principle of specifying inventions(1) When the claim statements are clear, specifying the claimed
invention should be made as stated in the claim. The terminology
described in the claims are interpreted as having a general meaning andscope generally accepted in the technical field with the exception of thecase wherein the terminology has a specific meaning which is explicitly
defined in the description. The terminology should be interpreted in an
objective and reasonable way by taking into consideration of its technicalmeaning, taken together with the common general knowledge at the timeof filing, based on the general meaning of the terminology.
(2) In the case where the description of claims is clearly understood, an
examiner should avoid limited interpretation just by referencing detailed
description of the invention or drawings in finding technical features ofinvention. In the case where subject matters are not described in theclaims but in the detailed description of invention or drawings, anexaminer should specify the invention as not being described in theclaims. On the contrary, in the case where the subject matters aredescribed in the claims, an examiner should consider the subject mattersin claims when specifying an invention. It is possible to consider thedetailed description of invention or drawings in understanding the subject
matters disclosed in the claims but it is noted that an examiner should not
specify the claims by applying subject matters not described in theclaims. For example, where the scope of the subject matters described in
the claims are broader than embodiments in the detailed description,novelty and inventive step should not be assessed by interpreting thespecific embodiments described in the detailed description as theclaimed invention.
(3) In the case where an applicant specifically defines a term in thedetailed description to the extent that it is clearly understood that the term
is different from any general meaning in order to specify the term as
having a specific meaning other than general meaning in the technicalfield to which an invention pertains, the term is interpreted as a term withthe specific meaning defined in the detailed description. However, only
the description of a specific concept included in a generic concept of theterm described in the claims in the detailed description and drawings
does not fall under the specific definition aforementioned.
(4) In the case where a term disclosed in the claims is obscure andunclear, an examiner should examine whether the subject matter of
invention can be comprehended in view of the detailed description,54

drawings, and common general knowledge as of the time of filing. The
examiner can notify the applicant a ground for rejection on the ground oflack of clarity in describing specification and novelty at the same time,
when the claimed invention can be readily comprehended in view of thedetailed description or drawings, and common general knowledge as of
the time of filing.
(5) If a claimed invention is not clear, even in view of the detailed
description in the specification, the drawings and the common generalknowledge as of the time of filing, examination of novelty is notconducted and the ground for rejection due to lack of clarity in describing
specification is notified. (Guidelines Part III, Chapter 2, 4.)

SIPO
PCT

N.A.

Legal basis

Art 22(2)Category

Category III

In practicePrinciples of Examination
The following principles shall be complied with during the examination ofnovelty.
(1) Identical inventions or utility models
Comparing the application being examined with the relevant contents ofthe prior art or of the applications for invention or utility model filed
previously by any entity or individual with the Patent Office and publishedor announced on or after the filing date of the application being examined(hereafter “previously filed and later published or announced”
application), if their technical fields, technical problems to be solved,
technical solutions, and their expected effects are substantially the same,
they shall be regarded as identical inventions or utility models. It should
be noted that, in determining the novelty of an application, the examiner
shall first of all determine whether the technical solution of the application
being examined is substantially the same as that of the reference
document. When an application is compared with the contents disclosed
in a reference document, if the technical solution defined in a claim
therein and the technical solution disclosed in the reference document
are substantially the same, and the person skilled in the art from thesolutions can conclude that both of them can be applied to the same
technical field, solve the same technical problem, and have the same
expected effects, then they can be regarded as identical inventions orutility models.
(2) Separate comparison
When determining novelty, the examiner shall compare each claim of theapplication separately with the relevant technical contents disclosed ineach item of the prior art or each previously filed and later published or
announced invention or utility model, rather than with a combination of
the contents disclosed in several items of the prior art or several
previously filed and later published or announced applications or with a
combination of several technical solutions disclosed in one reference
document. (Guidelines Part II Chapter 3 Section 3.1)
Criterion for Examination
Article 22.2 shall serve as the criterion for judging whether an invention or
utility model possesses novelty.
55

Several circumstances that often arise in the judgment of novelty areprovided here to facilitate the understanding of this criterion.
Invention or Utility Model with Identical Contents
Where the claimed invention or utility model is completely identical withthe technical contents disclosed in a reference document, or there are
only simple changes in wording between them, the invention or utility
model does not possess novelty. Furthermore, the meaning of “identicalcontents” shall be construed as including the technical content directly
and unambiguously derivable from the reference document. For example,
a claim of an invention application is “a core of a motor rotor made of NdFe-B permanent magnet alloy having a tetragonal crystal structure and amain phase of Nd2Fe14B intermetallic compound”. If a reference
document discloses “a core of a motor rotor made of Nd-Fe-B magnet”,
the claim will lose novelty, since it is well known to a person skilled in theart that the so-called “Nd-Fe-B magnet” means the Nd-Fe-B permanent
magnet alloy having a main phase of Nd2Fe14B intermetallic compoundand a tetragonal crystal structure.
Specific (Lower Level) Term and Generic (Upper Level) TermIf, when the claimed invention or utility model is compared with areference document, the difference between them lies merely in the factthat a technical feature of the same nature is defined in a generic (upper
level) term in the former and in a specific (lower level) term in the latter,then the disclosure in the specific (lower level) term takes away thenovelty of the invention or utility model defined in the generic (upper
level) term. For example, a product “made of copper” disclosed in areference document takes away the novelty of an invention or utility
model for the same product “made of metal”. However, the disclosure of
the product made of copper does not take away the novelty of an
invention or utility model for the same product made of other specificmetal.
On the other hand, the disclosure in generic (upper level) term does nottake away the novelty of an invention or utility model defined in specific(lower level) term. For example, a product “made of metal” disclosed in areference document does not take away the novelty of an invention or
utility model for the same product “made of copper”. For anotherexample, if the difference between the claimed invention or utility modeland a reference document lies merely in that “chlorine” is used in theinvention or utility model to replace “halogen” or another specific halogen“fluorine” in the reference document, the disclosure of “halogen” or“fluorine” in the reference document does not take away the novelty of
the invention or utility model which is defined by “chlorine”.
Direct Substitution of Customary Means
If the difference between the claimed invention or utility model and areference document is merely a direct substitution of customary means
employed in the art, the invention or utility model does not possess
novelty. For example, if a reference document disclosed a device using
screw fastening, and the claimed invention or utility model only replaces
the screw fastening with bolt fastening, the invention or utility model does
not possess novelty.
Numerical Value and Numerical Range
If the claimed invention or utility model has a technical feature defined bynumerical values or a continuous numerical range, such as thedimensions of a component, temperature, pressure, and the content of56

components in a composition, while all other technical features are
identical with those in the reference document, then the determination ofnovelty shall be conducted according to the following rules.
(1) Where the values or numerical range disclosed in the reference
document fall entirely within the range of the above-defined technicalfeature, the reference document deprives the claimed invention or utility
model of novelty.
(2) Where the numerical range disclosed in the reference document andthe numerical range of the above-defined technical feature partiallyoverlap with each other or have at least a common end point, thereference document deprives the claimed invention or utility model ofnovelty.
(3) The two end points of the numerical range disclosed in the reference
document take away the novelty of the invention or utility model in which
the above-defined technical feature has discrete numerical values
including one of said two end points, but does not take away the noveltyof the invention or utility model in which the above-defined technicalfeature is a numerical value at any point between said two end points.
(4) Where the numerical values or numerical range of the above-definedtechnical feature fall within the range disclosed in the reference
document and do not have any common end point with it, the reference
document dose not take away the novelty of the claimed invention or
utility model.
Product Claims Including Feature of Performance, Parameters, Use, orManufacturing Process
For examination of novelty of the product claims including feature of
performance, parameters, use, or manufacturing process, the following
rules shall be followed.
(1) Product claims including feature of performance or parameters
For this kind of claims, the examiner shall consider whether the feature of
performance or parameters in a claim implies that the claimed producthas a certain particular structure and/or composition. If the performanceor parameters implies that the claimed product has a structure and/or
composition distinct from that of the product disclosed in the reference
document, the claim has novelty. On the other hand, if the person skilledin the art from the performance or parameters cannot distinguish theclaimed product from that disclosed in the reference document, it can bepresumed that the claimed product is identical with the product in thereference document and accordingly the claim does not have novelty,
unless the applicant can, based on the application or the prior art, provethat the claimed product having the feature of performance or parameters
is distinct from the product in the reference document in structure and/or
composition. For example, an application claims a compound A in a
crystalline state defined by a variety of parameters including X-diffraction
data, and the reference document also disclosed a compound A in a
crystalline state. If the crystalline state of the both cannot be
distinguished from each other based on the disclosure of the reference
document, it can be presumed that the claimed product is identical withthe product in the reference document and accordingly the claim does
not have novelty as compared with the reference document, unless theapplicant can, based on the application or the prior art, prove that theclaimed product is actually distinct in crystalline state from the productdisclosed in the reference document.
57

(2) Product claims including feature of use
For this kind of claims, the examiner shall consider whether the feature ofuse in a claim implies that the claimed product has a certain particular
structure and/or composition. If the use is fully determined by the inherent
property of the product and does not imply any change in the structure
and/or composition of the product, the product claim defined by this use
feature does not have novelty as compared with the product in thereference document. For example, comparing an invention of antiviralcompound X with compound X as a catalyst disclosed in a reference
document, although the use of compound X has been changed, thechemical formula which determines its inherent property has no change,
therefore the invention of antiviral compound X does not have novelty.
However, if the use implies that the claimed product has a certain
particular structure and/or composition, that is, the use indicates that thestructure and/or composition of the product has changed, then the use asa definitive feature of the structure and/or composition of the productmust be considered. For example, “a hook for crane” means a hookhaving the structure specifically suitable for a crane in size and strength.
It is distinct in structure from “a hook for angling” which has the same
shape but is used for fishing. Therefore they shall be considered as
different products.
(3) Product claims including feature of manufacturing process
For this kind of claims, the examiner shall consider whether the feature ofmanufacturing process results in a certain particular structure and/or
composition of the product. If the person skilled in the art can conclude
that the process will necessarily result in a product having a particular
structure and/or composition different from that of the product in thereference document, the claim has novelty. On the other hand, if theclaimed product, as compared with the product in the reference
document, has the same structure and composition despite the different
manufacturing process, the claim does not have novelty, unless theapplicant can, based on the application or the prior art, prove that theprocess results in a product having a different structure and/or
composition, or having a different performance thereby indicating that its
structure and/or composition has changed. For example, an application
claims a glass cup made by process X, and a reference document
disclosed a glass cup made by process Y. If the glass cups made by theboth processes respectively have the same structure, shape, andconstituent material, the claim does not have novelty. On the other hand,
if the process X comprises a step of annealing at a particular temperature
not disclosed in the reference document, which considerably increases
the breaking resistance of the glass cup so made as compared with thatin the reference document, then it indicates the claimed glass cup has adifferent microstructure due to the different manufacturing process, andhas an internal structure different from that in the reference document,
therefore the claim has novelty. (Guidelines Part II Chapter 3 Section 3.2)
Novelty of Chemical Invention
1 Novelty of Compound(1) For a compound claimed in an application, if it has been referred to ina reference document, it is deduced that the compound does not possess
novelty, unless the applicant can provide evidence to verify that thecompound is not available before the date of filing. The word “refer to”
mentioned above means to define clearly or explain the compound by thechemical name, the molecular formula (or structural formula), the58physical/chemical parameter(s) or the manufacturing process (including
the raw materials to be used).
For example, if the name and the molecular formula (or structure formula)of a compound disclosed in a reference document are difficult to be
identified or unclear, but the document discloses the same
physical/chemical parameter(s) or any other parameters used to identify
the compound as those of the claimed compound of an application, it isdeduced that the claimed compound does not possess novelty, unlessthe applicant can provide evidence to verify that the compound is notavailable before the date of filing.
If the name, molecular formula (or structure formula) andphysical/chemical parameter(s) of a compound disclosed in a reference
document are unclear, but the document discloses the same method of
preparation as that of the claimed compound of an application, it isdeduced that the claimed compound does not possess novelty.
(2) A general formula cannot destroy the novelty of a specific compound
included in the general formula. However, the disclosure of a specificcompound destroys the novelty of a claim for said general formulacontaining said specific compound, but it does not affect the novelty of acompound other than the specific compounds contained in said generalformula. A series of specific compounds may destroy the novelty of thecorresponding compounds in the series. The compounds in a range(such as C1-4) destroy the novelty of the specific compounds at the twoends of that range (C1 and C4). However, if the compound C4 has
several isomers, the compounds C1-4 cannot destroy the novelty of eachsingle isomer.
(3) The existence of a natural substance per se does not destroy thenovelty of the invented substance. A natural substance destroys thenovelty of said invented substance only when it is disclosed in areference document and is identical with or directly equivalent to theinvented substance in structure and morphology.
2 Novelty of Composition(1) Judgment of novelty on a composition merely defined by its
components
Composition X consisting of components (A+B+C) is disclosed in areference document,(i) if the subject matter of an invention application relates to composition
Y (components: A+B), and the claim for composition Y is presented in theclose-ended mode, for example, it is described as “consisting of A+B”,
the claim possesses novelty even if the technical problem solved by theinvention is the same as that of composition X;(ii) if the claim for composition Y is presented in the open-ended mode as“containing A+B”, and the technical problem solved by the invention is thesame as that of composition X, then the claim does not possess novelty;(iii) if the exclusive method is used to present the claim of composition Y,
i.e., when it is indicated that “C” is not contained in it, the claim
possesses novelty.
(2) Judgment of novelty on a composition defined by its components andcontents
For the judgment of novelty on a composition defined by its components
and contents, the provisions of Chapter 3, Section 3.2.4 of this Part shallapply.
59

3 Novelty of Chemical Product Characterized by Physical/ Chemical
Parameter(s) or Manufacturing Process(1) For the claim of a chemical product characterized byphysical/chemical parameter(s), if it is impossible to compare the productcharacterized by said parameter(s) with that disclosed in a reference
document based on the parameter(s) described and to determine thedifference between them, it is deduced the product claim characterizedby said parameter(s) does not possess novelty as required in Article
22.2.
(2) For the claim of a chemical product characterized by manufacturing
process, the novelty shall be determined on the product per se, rather
than merely comparing the manufacturing process therein with theprocess disclosed in a reference document to find whether or not the twoprocesses are identical. A different manufacturing process does notalways result in the change of a product per se.
If, compared with a product disclosed in a reference document, thedifference of said claimed product lies only in the manufacturing process,having neither parameters disclosed in the application, which may be
used to prove its difference, nor indications of any change in its function
and/or nature resulting from the difference of the process, then it isdeduced that the product claim characterized by the process does notpossess novelty as required in Article 22.2.
4 Novelty of Use Invention of Chemical Product
Since a chemical product is novel, the use invention of the novel productwill naturally possess novelty.
A known product is not rendered novel merely because a new application
thereof has been put forward. For example, if product X is known as adetergent, then the product X used as a plasticizer does not possess
novelty. However, a known product does not destroy the novelty of its
new use if the new use per se is an invention. This is because such use
invention is an invention of method of application, and the substance of
the invention lies in how to apply the product rather than the product per
se. For example, said product X is originally used as a detergent. Then,someone discovers from research that it can be used as a plasticizer
after adding to it certain additives. Then its preparation, the kind ofadditives selected and the proportion etc., are the technical features ofthe method of application. Under such circumstances, the examiner shallassess whether the method per se possesses novelty and shall notconsider that the method of application does not possess novelty on the
grounds that product X is known.
As for a medical-use invention relating to a chemical product, thefollowing aspects shall be taken into consideration when the examinationof novelty is carried out.
(1) Whether or not the new use is different in substance from the known
use. The use invention does not possess novelty when the difference
between the new use and the known use lies merely in the form of
expression, but the substance of them is the same.
(2) Whether or not the new use is revealed directly by the mechanism ofaction or pharmacological action of the known use. The use does notpossess novelty if it is directly equivalent to the mechanism of action or
pharmacological action of the known use.
(3) Whether or not the new use belongs to generic (upper level) term of
the known use. The known use defined by specific (lower level) term may
60

destroy the novelty of the use defined by generic (upper level) term.
(4) Whether or not the features relating to use, such as the object, mode,route, usage amount, interval of administration can define the procedureof manufacture of a pharmaceutical. The distinguishing features merely
present in the course of administration do not enable the use to possess
novelty.
(Guidelines Part II Chapter 10 Section 5)

USPTO
PCT

N.A.

Legal basis

35 U.S.C. 102

Category

Category III

In practice

After the application has been read and the claimed invention
understood, the examiner conducts a prior art search for the claimed
invention. For anticipation under 35 U.S.C. 102, the reference must teachevery aspect of the claimed invention either explicitly or impliedly. Any
feature not directly taught must be inherently present. See MPEP 706,
706.02 and 2131. The examiner determines what the claimed invention
is by giving the claims the "broadest reasonable interpretation consistent
with the specification."A reference may be relied upon for all that it contains. The court inCeleritas Technologies Ltd. v. Rockwell International Corp., 47 USPQ2d
1516, 1522-23 (Fed. Cir. 1998) held that the prior art anticipated theclaims even though it taught away from the claimed invention. "The factthat a modem with a single carrier data signal is shown to be less than
optimal does not vitiate the fact that it is disclosed." See MPEP 2123.
The determination of whether preamble recitations are structurallimitations or mere statements of purpose or use "can be resolved only
on review of the entirety of the [record] to gain an understanding of what
the inventors actually invented and intended to encompass by the claim."
Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 9 USPQ2d 1962,
1966 (Fed. Cir. 1989). If the body of a claim fully and intrinsically sets
forth all of the limitations of the claimed invention, and the preamble
merely states, for example, the purpose or intended use of the invention,rather than any distinct definition of any of the claimed invention's
limitations, then the preamble is not considered a limitation and is of no
significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard
Co., 51 USPQ2d 1161, 1165 (Fed. Cir. 1999).
If a prior art structure is capable of performing the intended use as recitedin the preamble, then it meets the claim. An anticipation rejection wasaffirmed by the court in In re Schreiber, 44 USPQ2d 1429, 1431 (Fed. Cir
1997) based on the factual finding that the reference dispenser (a spout
disclosed as useful for purposes such as dispensing oil from an oil can)would be capable of dispensing popcorn in the manner set forth inappellant's claim 1 (a dispensing top for dispensing popcorn in a
specified manner). See MPEP 2111.02.
When a claimed compound is not specifically named in a reference, butinstead it is necessary to select portions of teachings within the reference
and combine them, e.g., select various substituents from a list ofalternatives given for placement at specific sites on a generic chemical
formulas to arrive at a specific composition, anticipation can only befound if the classes of substituents are sufficiently limited or well61

delineated. Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990). If
one of ordinary skill in the art is able to "at once envisage" the specificcompound within the generic chemical formula, the compound isanticipated. One of ordinary skill in the art must be able to draw thestructural formula or write the name of each of the compounds includedin the generic formula before any of the compounds can be "at once
envisaged." One may look at the preferred embodiments to determine
which compounds can be anticipated. In re Petering, 133 USPQ 275(CCPA 1962). See MPEP 2131.02.
Anticipation of ranges:
When the prior art discloses a range which touches or overlaps theclaimed range, but no specific examples falling within the claimed range
are disclosed, a case by case determination must be made as toanticipation. In order to anticipate the claims, the claimed subject mattermust be disclosed in the reference with "sufficient specificity to constitutean anticipation under the statute." What constitutes a "sufficient
specificity" is fact dependent. If the claims are directed to a narrower
range, and the reference teaches a broad range, depending on the otherfacts of the case, it may be reasonable to conclude that the narrow range
is not disclosed with "sufficient specificity" to constitute an anticipation of
the claims. See e.g., Atofina v. Great Lakes Chem. Corp, 78 USPQ2d
1417, 1423 (Fed. Cir. 2006) wherein the court held that a reference
temperature range of 100-500 degrees C did not describe the claimed
range of 330-450 degrees C with sufficient specificity to be anticipatory.
Further, while there was a slight overlap between the reference's
preferred range (150-350 degrees C) and the claimed range, that overlap
was not sufficient for anticipation. "[T]he disclosure of a range is no morea disclosure of the end points of the range than it is each of theintermediate points." Id. at 1424. Any evidence of unexpected results
within the narrow range may also render the claims unobvious. The
question of "sufficient specificity" is similar to that of "clearly envisaging" aspecies from a generic teaching. See MPEP 2131.03 and 2131.02. Whenthe claimed product and the prior art product are identical in structure, aprima facie case of anticipation has been established. In re Best, 195
USPQ 430, 433 (CCPA 1977). See also Titanium Metals Corp. v.
Banner, 227 USPQ 773 (Fed. Cir. 1985) (Claims were directed to atitanium alloy containing 0.2-0.4% Mo and 0.6-0.9% Ni having corrosion
resistance. A Russian article disclosed a titanium alloy containing 0.25%
Mo and 0.75% Ni but was silent as to corrosion resistance. The Federal
Circuit held that the claim was anticipated because the percentages ofMo and Ni were squarely within the claimed ranges. The court went on to
say that it was immaterial what properties the alloys had or who
discovered the properties because the composition is the same and thus
must necessarily exhibit the properties.).
"[E]ven though product-by-process claims are limited by and defined by
the process, determination of patentability is based on the product itself.
The patentability of a product does not depend on its method of
production. If the product in the product-by-process claim is the same asor obvious from a product of the prior art, me and thus must necessarily
exhibit the properties, the claim is unpatentable even though the priorproduct was made by a different process." In re Thorpe, 227 USPQ 964,
966 (Fed. Cir. 1985).
Once the examiner conducts a search and finds a printed publication or
patent which discloses the claimed invention, the examiner should
determine whether the rejection should be made under 35 U.S.C. 102(a),62

(b), or (e). In order to determine which section of 35 U.S.C. 102 applies,
the effective filing date of the application must be determined andcompared with the date of the reference.
The effective filing date of a U.S. application may be determined asfollows:(A) if the application is a continuation or divisional of one or more earlier
U.S. applications or international applications and if the requirements of
35 U.S.C. 120 and 365(c), respectively, have been satisfied, the effective
filing date is the same as the earliest filing date in the line of continuation
or divisional applications.
(B) if the application is a continuation-in-part of an earlier U.S. application
or international application, any claims in the new application notsupported by the specification and claims of the parent application havean effective filing date equal to the filing date of the new application. Anyclaims which are fully supported under 35 U.S.C. 112 by the earlier
parent application have the effective filing date of that earlier parent
application.
(C) if the application claims foreign priority under 35 U.S.C. 119(a)-(d) or
365(a) or (b), the effective filing date is the filing date of the U.S.
application, unless (A) or (B) as set forth above applies. The filing date of
the foreign priority document is not the effective filing date, although thefiling date of the foreign priority document may be used to overcome
certain references.
(D) if the application properly claims benefit under 35 U.S.C. 119(e) to a
provisional application, the effective filing date is the filing date of theprovisional application for any claims which are fully supported under the
first paragraph of 35 U.S.C. 112 by the provisional application.
See MPEP 706.02, subsection VI. See III.A., above, for determining thedate of the reference. See MPEP 1893.03(b) for determining the effective
filing date of a national stage application submitted under 35 U.S.C. 371.
35 U.S.C. 102(a):35 U.S.C. 102(a) states that "[a] person shall be entitled to a patent
unless (a) the invention was known or used by others in thiscountry…before the invention thereof by the applicant for a patent." Theknowledge or use of 35 U.S.C. 102(a) must be knowledge or use which isaccessible to the public. The knowledge or use is accessible to the public
if there has been no deliberate attempt to keep it secret. W.L. Gore &Assoc. v. Garlock, Inc., 220 USPQ 303 (Fed. Cir. 1983). The knowledge
or use in 35 U.S.C. 102(a) must be knowledge or use in this country.
Prior knowledge or use which is not present in the United States, even if
widespread in a foreign country, cannot be the basis of a rejection under
35 U.S.C. 102(a). In re Ekenstam, 118 USPQ 349 (CCPA 1958). Priorknowledge or use under 35 U.S.C. 102(a) must be "by others," whichrefers to any entity which is different from the inventive entity of theapplication under examination. The entity need only differ by one person
to be "by others." This holds true for all types of references eligible asprior art under 35 U.S.C. 102(a) including publications as well as publicknowledge and use. Any other interpretation of 35 U.S.C. 102(a) "would
negate the one year [grace] period afforded under § 102(b)." In re Katz,
215 USPQ 14 (CCPA 1982). See MPEP 2132.
35 U.S.C. 102(b):35 U.S.C. 102(b) states that "[a] person shall be entitled to a patent
unless (b) the invention was…in public use or on sale in this country,
63more than one year prior to the date of application for patent in the UnitedStates." 35 U.S.C. 102(b) is applicable if the activity occurred more than
1 year prior to the effective filing date of the application.
Public Use (See MPEP 2133.03(a)):
The public use bar under 35 U.S.C. 102(b) arises where the invention isin public use more than one year before the effective filing date of the
U.S. patent application and the invention is ready for patenting. Invitrogen
Corp. v. Biocrest Manufacturing L.P., 76 USPQ2d 1741 (Fed. Cir. 2005).
An inventor's private use of the invention, for his or her own enjoyment is
not a public use. Moleculon Research Corp. v. CBS, Inc., 229 USPQ 805,
809 Fed. Cir. 1986).
Where the inventor or someone connected to the inventor puts theinvention on display or sells it, there is a "public use" within the meaningof 35 U.S.C. 102(b) even though by its very nature an invention iscompletely hidden from view as part of a larger machine or an article, if
the invention is otherwise used in its natural and intended way and thelarger machine or article is accessible to the public. In re Blaisdell, 113
USPQ 289, 292 (CCPA 1957).
"'Public use' of a claimed invention under 35 U.S.C. 102(b) occurs when
the inventor allows another person to use the invention without limitation,
restriction or obligation of secrecy to the inventor." In re Smith, 218
USPQ 976, 983 (Fed. Cir. 1983). The presence or absence of aconfidentiality agreement is not itself determinative of the public use
issue, but is one factor to be considered along with the time, place, andcircumstances of the use which show the amount of control the inventor
retained over the invention. Moleculon Research Corp. v. CBS, Inc., 229
USPQ 805, 809 (Fed. Cir. 1986).
On sale:The on-sale bar of 35 U.S.C. 102(b) occurs if there was a definite sale, oroffer to sell, more than one year before the effective filing date of the U.S.
patent application and the invention was ready for patenting. Pfaff v.
Wells Elecs., Inc., 48 USPQ2d 1641, 1646-47 (1998).
An invention may be deemed to be "on sale" even though the sale wasconditional. The fact that the sale is conditioned on buyer satisfaction
does not, without more, prove that the sale was for experimental
purpose. Strong v. General Elec. Co., 168 USPQ 8, 12 (5th Cir. 1970).
A "sale" need not be for profit to bar a patent. If the sale was for thecommercial exploitation of the invention, it is "on sale" within the meaningof 35 U.S.C. 102(b). In re Dybel, 187 USPQ 593, 599 (CCPA 1975).
A single sale or offer to sell the invention may bar patentability under 35
U.S.C. 102(b). Consolidated Fruit-Jar Co. v. Wright, 94 U.S. 92, 94(1876).
"[A]n assignment or sale of the rights in the invention and potential patentrights is not a sale of 'the invention' within the meaning of section 102(b)."Moleculon Research Corp. v. CBS, Inc., 229 USPQ 805, 809 (Fed. Cir.
1986).
Offer for sale:"Only an offer which rises to the level of a commercial offer for sale, one
which the other party could make into a binding contract by simple
acceptance (assuming consideration), constitutes an offer for sale under§ 102(b)." Group One, Ltd. v. Hallmark Cards, Inc., 59 USPQ2d 1121,
64

1126 (Fed. Cir. 2001).
A rejected offer may create an on sale bar. UMC Elecs. v. United States,
2 USPQ2d 1465, 1469 (Fed. Cir. 1987). See MPEP 2133.03(c).
Experimental use:
If the use or sale was experimental, there is no bar under 35 U.S.C.
102(b). "A use or sale is experimental for purposes of section 102(b) if it
represents a bona fide effort to perfect the invention or to ascertain
whether it will answer its intended purpose....If any commercial
exploitation does occur, it must be merely incidental to the primary
purpose of the experimentation to perfect the invention." LaBounty Mfg.
v. United States Int'l Trade Comm'n, 22 USPQ2d 1025, 1028 (Fed. Cir.
1992). "The experimental use exception...does not include market testing
where the inventor is attempting to guage consumer demand for his
claimed invention. The purpose of such activities is commercial
exploitation and not experimentation." In re Smith, 218 USPQ 976, 983(Fed. Cir. 1983). See MPEP 2133.03(e) to 2133.03(e)(7).

IV.

NOVELTYC.

Provisions, if any, for restoring novelty over accidental anticipation
PCT reservation (PCT/GL/ISPE Appendix 20.21)

EPO
PCT

PCT/GL/IPSE Appendix A20.21, Alternative A20.21[2]Legal basis

G 1/03, OJ 8-9/2004, 413
G 2/03, OJ 8-9/2004, 448

Category

Category IV

In practiceDisclaimers not disclosed in the application as filed (GL C-VI, 5.3.11)
Limiting the scope of a claim by using a "disclaimer" to exclude atechnical feature not disclosed in the application as filed does not infringeArt. 123(2) in the following cases (see G 1/03, OJ 8-9/2004, 413, and G
2/03, OJ 8-9/2004, 448, and III, 4.20):(i) restoring novelty over a disclosure under Art. 54(3);(ii) restoring novelty over an accidental anticipation under Art. 54(2). "An
anticipation is accidental if it is so unrelated to and remote from theclaimed invention that the person skilled in the art would never havetaken it into consideration when making the invention". The status of"accidental" should be ascertained without looking at the available further
state of the art. A related document does not become an accidental
anticipation merely because there are other disclosures even moreclosely related. The fact that a document is not considered to be theclosest prior art is insufficient for achieving the status of "accidental". An
accidental disclosure has nothing to do with the teaching of the claimed
invention, since it is not relevant for examining inventive step. For
example, this is the case when the same compounds serve as starting
materials in entirely different reactions yielding different end products(see T 298/01, not published in OJ). A prior art, the teaching of whichleads away from the invention, however, does not constitute anaccidental anticipation; the fact that the novelty destroying disclosure is acomparative example is also insufficient for achieving the status of65

“accidental” (see T 14/01 and T 1146/01, both not published in OJ);(iii) removing subject-matter which, under Art. 52 to Art. 57, is excluded
from patentability for non-technical reasons. For example, the insertion of"non-human" in order to satisfy the requirements of Art. 53(a) isallowable.
However, an undisclosed disclaimer is not allowable if it is made in order
to exclude non-working embodiments or remedy insufficient disclosure,or it makes a technical contribution to the invention.
An undisclosed disclaimer is, in particular, not allowable in the following
situations:(i) the limitation is relevant for assessing inventive step;(ii) the disclaimer, which would otherwise be allowable on the basis of aconflicting application alone (Art. 54(3)), renders the invention novel orinventive over a separate prior art document under Art. 54(2), which is a
not accidental anticipation of the claimed invention;(iii) the disclaimer based on a conflicting application removes also a
deficiency under Art. 83;
A disclaimer should remove no more than is necessary either to restore
novelty or to disclaim subject-matter excluded from patentability for nontechnical reasons. A claim containing a disclaimer must meet the clarity
and conciseness requirements of Art. 84. In the interest of the patent's
transparency, the excluded prior art should be indicated in the descriptionin accordance with Rule 42(1)(b) and the relation between the prior art
and the disclaimer should be shown.

JPO
PCT

PCT/GL/IPSE Appendix A20.21, Alternative A20.21[2]Legal basis

Guidelines Part III, Section I, 4.2(4)Category

Category I

In practice

The JPO considers that amendments to make claims including“disclaimer” mentioned below are acceptable.
“The word “disclaimer” stands for a claim expressly stating that a part ofsubject matter included in a claimed invention is excluded from the claim,
while retaining an original expression described in a claim before theamendment. The “disclaimer” which excludes some matters described in
the original description, etc. through an amendment while retaining
original expressions in a claim before the amendment is acceptable,
provided that the “disclaimer” after the exclusion remains within thescope of the matters described in the original description, etc..
The amendments described in (i) and (ii) below, which are both based ona “disclaimer”, are acceptable because they do not introduce any newtechnical matter.
(i) An amendment excluding only overlaps between a claimed invention
and the prior art, while retaining an original expression described in aclaim before the amendment, in case that the claimed invention may
result in loss of novelty or the like (Article 29(1)(iii), Article 29bis or Article39) because of the overlaps.
(Explanation) The “disclaimer” in the case of (i) above means a claim
excluding subject matter described in distributed publications, etc. or in
the description, etc. of an earlier filed application (including subject matter
virtually equivalent to the written matter) as the prior art under Article66

29(1)(iii), Article 29bis or Article 39, while retaining original expressions ofmatter in claims before the amendment. The amendment making“disclaimer” in the case of (i) above, which excludes the specific matters
included in the cited invention, does not introduce any alteration to thetechnical matters understood from the before-the-amendment
description, etc.. Hence, such an amendment is clear that it does not
introduce any new technical matter. An invention in an application
containing a “disclaimer” may be patented, in a case where it has aninventive step because it is remarkably different in technical ideas overthe prior art but it accidentally lacks novelty by overlapping with the art. Ina case where an invention is not remarkably different in technical ideas
over the prior art, a “disclaimer” hardly overcomes a rejection on the
grounds of lack of an inventive step. And if a large part or many parts ofan invention in claims are excluded in a “disclaimer”, attention should be
paid, because sometimes a single invention cannot definitely beconceived from a single claim.
(ii) An amendment excluding the term “human being,” while retaining an
original expression described in a claim before the amendment, in casethe application fails to meet the requirement in the first paragraph of
Article 29 (1) of the Patent Act or is refused under Article 32 of the Patent
Act because the invention in the claim originally encompasses “humanbeing.”(Explanation) The “disclaimer” in the case of (ii) means a claim statingthat the term “human being” is excluded from subject matter in claims,
while an original expression of matters described in claims before theamendment remains. The amendment making “disclaimer” in the case of(ii) above, which excludes the “human” from the subject matters of
invention, does not introduce any alteration to the technical mattersunderstood from the before-the-amendment description, etc.. Hence,such an amendment is clear that it does not introduce any new technicalmatter.
(Concrete examples)
Example for (i): Suppose that a “washing agent for an iron plate whose
main ingredient is inorganic salts containing sodium ion as a cation” isspecified in claims before making an amendment and that an invention of“a washing agent for an iron plate whose main ingredient is inorganic
salts containing carbon trioxide ion as an anion” is mentioned in a priorart and the sodium ion used as a cation is disclosed as a concrete
example. It is acceptable in this case to make an amendment specifying“inorganic salt containing sodium ion (except when carbon trioxide isused as an anion)” to exclude the matter concerning a prior art fromclaims.
Example for (ii): Suppose that “a mammal characterized in that a certain
polynucleotide with DNA Sequence No.1 is introduced into thechromosomes of the somatic cells of mammals and that the samepolynucleotide was regenerated in those cells” is specified in the claimsof an application before an amendment is made. “Mammals” essentially
include “human beings” unless the detailed description of the invention
clearly states that human beings are excluded. An invention directed toan object including human beings might be harmful to public order andimmorality, and therefore violates Article 32 of the Patent Act. An
amendment to change the language in claims to “mammals excluding
human beings” in order to exclude human beings from the claims is
acceptable even if human beings are not supposed to be excluded in the67

original description, etc..”(Guidelines Part III, Section I, 4.2(4))

KIPO
PCT

PCT/GL/IPSE Appendix A20.21, Alternative A20.21[1]Legal basis

Guidelines Part IV, Chapter 2, 1.2 (7)Category

Category I

In practice

Guidelines
1.2 (7) An amendment carried out by the so-called ‘disclaimer claim’ shallnot mostly deemed as the addition of new matter. In the case where thesubject of the invention regarding medical methods is not specified
between humans or animals, if the invention is clearly not targeted onparticular animals, the amendment of limitation in order to delete theparts related to humans shall not be deemed as the addition of new
matter.
(Example) Where ‘treatment methods for mammals’ are amended into‘treatment methods for mammals except for humans’ or ‘treatment
methods for livestock’ (Guidelines Part IV, Chapter 2, 1.2 (7))

SIPO
PCT

N.A.

Legal basis

Art 33Category

Category III

In practice

If no other numerical value within the initial numerical range of a certain
technical feature is described in the initial description and claims, whilenovelty and inventive step are prejudiced by the contents disclosed inreference documents, or the invention cannot be carried out when saidfeature adopts certain parts of the initial numerical range, in view of these
two situations, the applicant has to use a specific “disclaimer” to exclude
said parts from the initial numerical range so that the numerical range ofthe claimed technical solution does not include said parts obviously as awhole, such amendment shall not be allowed because the amendment
has gone beyond the scope of disclosure contained in the initialdescription and claims, with the exception that the applicant can prove, in
accordance with the contents described in the initial application, that theinvention cannot be carried out when said feature adopts the “disclaimed”
numerical value, or the invention possesses novelty and involves aninventive step when said feature adopts the numerical value after the“disclaimer”. For example, the numerical range in the claimed technicalsolution is X1=600-10000, the only difference between the technicalcontents disclosed in the reference documents and said technicalsolution is that said numerical range in the former is X2=240-1500. As X1
and X2 overlap partially, the claim does not possess novelty. The
applicant uses the specific “disclaimer” to amend X1, excluding from X1
the portion that X1 and X2 overlap, i.e., 600-1500, thus, said numerical
range of the claimed technical solution is changed to be from X1 >1500
to X1=10000. If the applicant can neither prove that the inventions within
the numerical range from X1>1500 to X1=10000 involve inventive stepwith reference to those within the X2=240-1500 range described in thereference documents based upon the initially disclosed contents and theprior art, nor prove that the invention cannot be carried out when X1 is68within 600-1500, such amendments shall not be allowed.
(Guidelines Part II Chapter 8 Section 5.2.3.3)

USPTO
PCT

In the ISA/IPEA/US, a negative limitation that is added in a new claim orby amendment will raise a new matter issue if the subject matter being
excluded does not have support in the application as filed. See
PCT/GL/ISPE, Appendix A20.21, Alternative A20.21[1].

Legal basis

35 U.S.C. 102

Category

Category III

In practiceThere are no provisions for restoring novelty over accidental anticipation.
A reference may be directed to an entirely different problem than the one
addressed by the inventor, or may be from an entirely different field of
endeavour than that of the claimed invention, yet the reference is still
anticipatory if it explicitly or inherently discloses every limitation recited in
the claims. See MPEP 2131.05.
Note however that applicant may amend the claims to add negative
limitations to overcome accidental anticipation provided that there is
support in the application as originally filed for the negative limitations. If
there is no support in the application as originally filed for the negative
limitations, then such an amendment would raise new matter.

IV.

NOVELTYD.

A new use of known product (e.g. use inventions)
Based on the Trilateral Comparative Studies

EPO
PCT

N.A.

Legal basis

Non-medical use of a known product: Art 54(1) EPC
First medical use of a known product: Art 54(4) EPC
Second or further medical use of a known product: Art 54(4) and (5) EPC

Category

Category III

In practice

Claims directed to a non-medical use of a known product(GL C-IV, 9.7)
A claim to the use of a known compound for a particular purpose (second
non-medical use) which is based on a technical effect should beinterpreted as including that technical effect as a functional technicalfeature, and is accordingly not open to objection under Art. 54(1),provided that such technical feature has not previously been madeavailable to the public (G 2/88, OJ 4/1990, 93, and G 6/88, OJ 4/1990,
114).
Claims directed to the first medical use of a known product(GL C-IV, 4.8)
According to Art. 54(4), where the substance or composition is known, it
may only be patented for use in "methods for treatment of the human or
animal body by surgery or therapy and diagnostic methods practised on
the human or animal body" (within the meaning of Art 53(c)) if the known
substance or composition was not previously disclosed for use in such69

methods.
Claims directed to the second or further medical use of a known
product (GL C-IV, 4.8)
Where a substance or composition is already known to have been used
in a first medical use in methods for treatment of the human or animal
body by surgery or therapy and diagnostic methods practised on thehuman or animal body, it may still be patentable under Art. 54(5) for any
second or further use in a method , provided that said use is novel andinventive.
Please note that, in the following of the decision of the Enlarged Board of
Appeal in G 2/08, the so-called "Swiss-type claims" are will no longer beallowable for all patent applications filed three months after the date of
publication of decision G2/08 in the Official Journal of the EPO.

JPO
PCT

N.A.

Legal basis

Guidelines Part II, Chapter 2, 1.5.2(2)Category

Category I

In practice“When a claim includes a statement specifying a product by its use, suchas “for use as ...” (i.e. limitation of use), the examiner should determine
the meaning of the limitation of use to specify the claimed invention byconsidering the description, drawings and the common general technicalknowledge as of the filing. (Note that when the examiner is unable todetermine the meaning as a matter specifying the claimed invention, theclaim may be unclear.
However, in the case of a chemical compound with a limitation of use
such as “for use as ...” (e.g., the chemical compound Z for use as Y),
such limitation of use usually only indicates the utility of the chemicalcompound alone. Thus, the claim should be construed to represent thechemical compound itself with no limitation of use (e.g., the chemicalcompound Z) without having to apply the approaches indicated in (1) and(2) below (see, Example 1) (court judgment for reference: Tokyo High
Court Judgment of July 8, 1997 [1995 (Gyo Ke) No. 27]). This approachshould be applied not only to chemical compounds but also to
microorganisms.”(1) General approach for the case where the claim includes alimitation of use“A limitation of use can be construed as a shape, structure, orcomposition (hereinafter simply referred to as a “structure, etc.”) which isparticularly suitable for such use, by considering the description,
drawings and the common general technical knowledge as of the filing.
As in such a case, where a product with a limitation of use is construed
as a product which is particularly suitable for such use, the productshould be construed as a product with the structure, etc. represented by
the limitation of use. ““Therefore, even when the matters specifying the claimed invention andthe matters specifying a cited invention are the same in all respects
except for the limitation of use, if the structure, etc. represented by thelimitation of use differs, the two should be regarded as different
inventions.““On the other hand, if a product with a limitation of use cannot be70construed as a product which is particularly suitable for such use even byconsidering the description, drawings and the common general technicalknowledge as of the filing, such limitation of use is not construed ashaving a meaning that specifies the product except when it should beconstrued as representing a use invention set forth in (2) below.”“Therefore, in this case, if the matters specifying the claimed invention
and the matters specifying a cited invention are the same in all respects
except for the limitation of use, the two cannot be regarded as different
inventions.”(2) Approach for the case where an invention of product with alimitation of use should be construed as a use invention“Generally, a use invention is construed as an invention based on
discovering an unknown attribute of a product and finding that the
product is suitable for a new use due to the presence of such attribute.”“When a claim includes a limitation of use and the claimed invention canbe construed as an invention based on discovering an unknown attributeof a product and finding that the product is suitable for new use due tothe presence of such attribute, the limitation of use should be regarded
as having a meaning that specifies the claimed invention and it isappropriate to construe the claimed invention by including the aspect of
the limitation of use. Therefore, in this case, even if the product itself isalready known, the claimed invention can be novel as a use invention.
However, even when an unknown attribute has been discovered, if theclaimed invention is not considered to provide new use for the product byconsidering the common general technical knowledge in the relevant
technical field as of the filing, the claimed invention is regarded as lacking
novelty. In addition, even when the claimed invention and a citedinvention are inventions of products defined by different wordings in thelimitation of use, the claimed invention is regarded as lacking novelty if
the two cannot be distinguished in terms of their use by considering thecommon general technical knowledge in the relevant technical field as of
the filing.
(Note 1)In general, when an unknown attribute of a product is discovered
and an invention is found to be creative in respect to its use for a certain
purpose that was unknown, such invention can be novel as a use
invention. This approach to use invention is generally applied to technicalfields in which it is relatively difficult to understand how to use the productfrom the structure or name of the product (e.g., the technical field of useof compositions containing chemical substances). On the other hand, theapproach to use invention is not applied to machines, instruments,
articles, and apparatuses because these products usually have fixeduses.
(Note 2)Even when the claimed invention provides a new use based on
an attribute of the product, if a person skilled in the art could have easily
arrived at such use based on known attributes or known productstructures, the claimed invention is regarded as lacking an inventive step
(Tokyo High Court Judgment of August 27, 2003 [2002 (Gyo Ke) No.
376]).
(Note 3) Looking at use inventions in respect to the statement in theclaims, there are claims expressed by agent form, the method of use as
well as those expressed by limitation of use. The guidelines mentioned
above can also be applied to use inventions other than those expressedby limitation of use. However, due to the reason indicated in B.1.b., the71

applicable scope of the guidelines should be limited to the cases where
any term that indicates use is included in the claims (e.g., “catalyst
comprising ...,” “ornamental material comprising an ... alloy” and “methodof killing insects using ...”).
(Examination Guidelines Part II. Chapter 2. Section 1.5.2(2))

KIPO
PCT

N.A.

Legal basis

Guidelines Part III, Chapter 1, 4.1.2
Guidelines Part III, Chapter 4, 6.3.5, 6.3.6

Category

Category I

In practice

Guidelines
1. Patentability of Use invention“A use invention, which claims a novel use of a known material based on
its inherent but newly found property, shall be treated distinctively from “amere discovery” in the Patent Act. A mere discovery of a use of a known
material does not constitute a statutory invention even if the use is novel.
A novel use based on the newly found property is, however, considered astatutory invention only when a non-obvious inventive effort is made todiscover the new property and provide the novel use.” (Guidelines Part
III, Chapter 1, 4.1.2)
2. Assessment of sameness of Use invention
When comparing the claimed invention with prior arts, simple differencein use or simple limitation of use is not considered as a special technicalfeature.
“6.3.5. Simple difference in use
A simple difference in use means the case where the difference of two
inventions is only in usage, and the difference of usage can be easily
expected from the inventions(Example)「a plasticizer for polyvinyl chloride resin comprising
Compound B」and 「a discoloration preventive agent for polyvinyl
chloride resin comprising Compound B」(Example)「the method of repelling hares by spraying Compound A in
the wild」(Hare Repellent A) and「the method of repelling deer byspraying Compound A in the wild」(Deer Repellent A)
6.3.6. Simple Limitation of Use
A simple limitation of use means the case where the difference of two
invention is whether the use is limited or not, and the limitation of use canbe obviously derived from the prior art and does not make any
unexpected effect.
(Example) 「a net made of flat threads」and「a net for fishing made offlat threads」(Guidelines Part III, Chapter 4, 6.3.5, 6.3.6)

SIPO
PCT

N.A.

Legal basis

Art 22(2)Category

Category III

72

In practiceAs the medical-use of a substance is a use for the diagnosis or treatment
of diseases, it falls into the situations provided for in Article 25.1(3);hence, it shall not be granted the patent right. However, if it is used forthe manufacturing of a medicament, it may be patentable under the
Patent Law.
Use Claim
Types of Use Claim
The invention relating to the use of a chemical product is made on thebasis of discovery of a new property of the product and the use of suchproperty. Regardless of a new or known product, its property is inherent
in the product per se. The essence of the use invention does not lie in the
product per se, but in the application of its property. Hence, a use
invention is an invention of process, and its claim is a process claim.
If product B is invented by making use of product A, the application shallbe based on product B per se, and its claim is a product claim rather thana use claim.
The examiner shall take notice of the wording to distinguish a use claim
from a product claim. For example, “using compound X as an insecticide”
or “the use of compound X as an insecticide” is a wording used in use
claim, which is of type of process claim, while the wording “an insecticide
made of compound X” or “the insecticide containing compound X” is not ause claim, but a product claim.
It shall also be clarified that “the use of compound X as an insecticide”
shall not be construed as equivalent to “the compound X for an
insecticide”. As the latter is a product claim defining the use, it is not ause claim. (Guidelines Part II Chapter 10 Section 4.5.1)
Claim of Medical Use of SubstanceAn application relating to the medical use of a substance shall not be
granted if its claim is drafted in the wording “use of substance X for thetreatment of diseases”, “use of substance X for diagnosis of diseases” or“use of substance X as a medicament”, because such claim is one for“method for the diagnosis or for the treatment of diseases” as referred toin Article 25.1(3). However, since a medicament and a method for the
manufacture thereof are patentable according to the Patent Law, it shallnot be contrary to Article 25.1(3) if an application for the medical use of a
substance adopts pharmaceutical claim or use claim in the form of
method for preparing a pharmaceutical, such as “use of substance X forthe manufacturing of a medicament”, “use of substance X for the
manufacturing of a medicament for the treatment of a disease” and soon.
The above-mentioned use claim in the form of method for manufacturing
a medicament may be drafted as “use of compound X for manufacturing
a medicament for the treatment of disease Y” or the like. (Guidelines PartII Chapter 10 Section 4.5.2)
Novelty of Use Invention of Chemical Product
Since a chemical product is novel, the use invention of the novel productwill naturally possess novelty.
A known product is not rendered novel merely because a new application
thereof has been put forward. For example, if product X is known as adetergent, then the product X used as a plasticizer does not possess
novelty. However, a known product does not destroy the novelty of its
73new use if the new use per se is an invention. This is because such use
invention is an invention of method of application, and the substance of
the invention lies in how to apply the product rather than the product per
se. For example, said product X is originally used as a detergent. Then,someone discovers from research that it can be used as a plasticizer
after adding to it certain additives. Then its preparation, the kind ofadditives selected and the proportion etc., are the technical features ofthe method of application. Under such circumstances, the examiner shallassess whether the method per se possesses novelty and shall notconsider that the method of application does not possess novelty on the
grounds that product X is known.
As for a medical-use invention relating to a chemical product, thefollowing aspects shall be taken into consideration when the examinationof novelty is carried out.
(1) Whether or not the new use is different in substance from the known
use. The use invention does not possess novelty when the difference
between the new use and the known use lies merely in the form of
expression, but the substance of them is the same.
(2) Whether or not the new use is revealed directly by the mechanism ofaction or pharmacological action of the known use. The use does notpossess novelty if it is directly equivalent to the mechanism of action or
pharmacological action of the known use.
(3) Whether or not the new use belongs to generic (upper level) term of
the known use. The known use defined by specific (lower level) term may
destroy the novelty of the use defined by generic (upper level) term.
(4) Whether or not the features relating to use, such as the object, mode,route, usage amount, interval of administration can define the procedureof manufacture of a pharmaceutical. The distinguishing features merely
present in the course of administration do not enable the use to possess
novelty. (Guidelines Part II Chapter 10 Section 5.4)

USPTO
PCT

N.A.

Legal basis

35 U.S.C. 102

Category

Category III

In practice

The discovery of a new use for an old structure based on unknown
properties of the structure might be patentable to the discoverer as aprocess of using. In re Hack, 114 USPQ 161, 163 (CCPA 1957).
However, when the claim recites using an old composition or structure
and the "use" is directed to a result or property of that composition or
structure, then the claim is anticipated. In re May, 197 USPQ 601, 607(CCPA 1978). See MPEP 2112.02.

V.

INVENTIVE STEP

A.

Cases where a single document calls into question the inventive step
PCT reservation (PCT/GL/ISPE Appendix A13.13)

EPO
PCT

PCT/GL/ISPE Appendix A13.13 applies
74Legal basis

Art 56 EPC

Category

Category I, IV

In practiceDefinition of a "X" document (GL B-X, 9.2)
Category "X" is applicable where a document is such that when taken
alone, a claimed invention cannot be considered novel or cannot be
considered to involve an inventive step.
Basis on which a document may be categorized "X" (GL C-IV, 11)
An invention is considered as involving an inventive step if, having regard
to the state of the art, it is not obvious to a person skilled in the art.
Whether one single document can call into question inventive step
depends on the knowledge and ability of the person skilled in the art(see T 32/81, OJ 6/1982, 225).
The "state of the art" for the purposes of considering inventive step is as
defined in Art. 54(2). It is to be understood as concerning such kind of
information as is relevant to some field of technology (T 172/03, notpublished in OJ). It does not include later published European
applications referred to in Art. 54(3). The state of the art may reside in therelevant common general knowledge, which need not necessarily be inwriting and needs substantiation only if challenged (see T 939/92, OJ
6/1996, 309).
The "person skilled in the art" should be presumed to be a skilled
practitioner in the relevant field, who is possessed of average knowledge
and ability and is aware of what was common general knowledge in theart at the relevant date (see T 4/98, OJ 2002, 39, T 143/94, OJ 1996,
430, T 426/88, OJ 1992, 427). He should also be presumed to have hadaccess to everything in the "state of the art", in particular the documents
cited in the search report, and to have had at his disposal the normalmeans and capacity for routine work and experimentation. If the
problem prompts the person skilled in the art to seek its solution inanother technical field, the specialist in that field is the person qualified tosolve the problem.
The skilled person is involved in constant development in his technicalfield (see T 774/89, T 817/95, not published in OJ). He may be expected
to look for suggestions in neighbouring and general technical fields (seeT 176/84, OJ 2/1986, 50, T 195/84, OJ 2/1986, 121) or even in remotetechnical fields, if prompted to do so (T 560/89, OJ 12/1992, 725).
Assessment of whether the solution involves an inventive step must
therefore be based on that specialist's knowledge and ability (see T
32/81, OJ 6/1982, 225).

JPO
PCT

PCT/GL/ISPE Appendix A13.13 applies.

Legal basis

Guidelines Part II, Chapter 2, 2.4, 2.5

Category

Category I

In practiceIn the JPO, an examiner can deny the inventive step of the claimed
invention based on a single prior art.

KIPO
PCT

PCT/GL/ISPE Appendix A13.13 is applied

Legal basis

Guidelines Part III, Chapter 3, 6.
75

CategoryCategory I, Category IV

In practice

The KIPO allows the cases where a single document calls into question
the inventive step.
Guidelines
6. Grounds of assessing the inventive step
6.1 Probable cause or motivation
The following cases can be significant grounds for assessing that aperson skilled in the art would have been led to the claimed invention
based on the cited invention; suggestions shown in the disclosures of thecited inventions, a common problem to be solved described in claims, acommon function or operation, close relevance of technical fields.
6.1.1 Suggestions shown in the disclosures of the cited inventions
Suggestions shown in the disclosures of the cited inventions relevant to aclaimed invention can be significant grounds for assessing that a person
skilled in the art would have been led to the claimed invention.
6.1.2 Common problem to be solved(1) A common problem to be solved can be a significant ground forassessing that a person skilled in the art would have been led to theclaimed invention by applying or combining cited inventions. If thetechnical problems to be solved described in the claimed invention andcited invention are not in the same technical field, the examiner decides
whether the technical problem of the claimed invention is obvious in therelevant field of the art or easily conceivable in light of technical common
sense, and whether that reasoning can be used as a ground for denying
the inventive step by scrutinizing the technical problem.
(2) Even in the case of a cited invention with a different problem
compared to a claimed invention, if it is obvious that a person skilled in
the art can easily arrive at the claimed invention through a mere exercise
of ordinary creativity, the inventive step of the claimed invention can bedenied.
6.1.3 Common function or operation
A common function or operation of a claimed invention and a citedinvention is a well-founded ground that a person skilled in the art would
have arrived at the claimed invention.
6.1.4 Close relation of technical fields
The notion that there exists a publicly known technical means for solving
the technical problem set out in the claimed invention in the relevant
technical field can be a strong ground that a person skilled in the art
would have made the claimed invention.
6.2 Mere exercise of ordinary creativity of a person skilled in the art
A common improvement comprising general applications of a known art,
inferences from the known physical properties, or references to othertechnical fields to solve a known problem falls into the scope of ordinary
creativity of a person skilled in the art. Practices in such scope include
selection of an optimal material among the publicly known materials toachieve a specific goal, optimization of a numerical value range,
replacing with equivalents, and mere modification of design in applying a
specific technology, partial removal of technical features and merechange of the use. When the differences between the claimed invention
and the cited invention fall within the aforementioned scope, it is usually76

considered that a person skilled in the art would have readily made theclaimed invention, unless there is another ground for assessing theinventive step.
6.2.1 Replacement with Equivalents
Replacing a part of an invention with a publicly known part, which iscapable of carrying out the same function and interchangeable, is notconsidered being inventive for it falls within the scope of ordinary
creativity of a person skilled in the art, unless otherwise the replacement
has an unforeseeable advantage.
In order to acknowledge the replacement with equivalents as a mere
exercise of ordinary creativity of a person skilled in the art, it should bejustified that the replacement is obvious to a person skilled in the art at
the time of filing the application in addition to the fact that the substituted
known feature functions as an equivalent. The examiner is allowed tosubmit the proof that the substituted feature had been known as anequivalent before the filing of the present application in the same
technical field.
6.2.2 Simple modification of design in applying specific technology
When an invention is merely drawn by applying normal design
procedures maintaining the technical concept of the prior art and is notconsidered to have an effect unforeseen in the prior art, the inventive
step of the invention cannot be acknowledged. For example, if thedifference between the claimed invention and the cited prior art is only
caused by the application of particular parameters such as size,
proportion, relative dimensions, and amount from a limited range ofpossibilities, the inventive step cannot be acknowledged. On the contrary
if the difference can lead to any particular change in the function oroperation with an unforeseeable advantage, the invention is regarded as
involving an inventive step.
6.2.3 Partial removal of constituentsThe claimed invention is not considered inventive when the removal of afunction or an effect as a result of the omission of some constituents
disclosed in the prior art is obvious to a person skilled in the art.
However, considering the state of the art, the inventive step can be
acknowledged when the omission of some constituents does not affectthe function of the invention or rather enhances the function.
6.2.4 Mere change and limitation of use
Mere change in the use of a known invention or a further limitation ofsuch use is not considered inventive. In other words, the claimed
invention, which is distinguished from the prior art only in a modificationof its use or further extension of its use without exhibiting any advantage,is not considered inventive.
6.2.5 General application of known art
The claimed invention, which merely consists of a known technique in aclosely analogous situation in order to solve a problem posed by the priorart with readily anticipated effect, is not inventive. However, the claimed
invention is considered inventive when the application of the known
technique leads to unexpected advantageous effects in combination withother components in comparison with the prior art. (Guidelines Part III,
Chapter 3, 6.)

SIPO
77

PCT

PCT/GL/ISPE, Appendix A13.13 applies

Legal basis

Art 22(3), Guidelines Part II Chapter 7 Section 12

Category

Category I

In practice

In a search report, the following symbols are used to express therelevance of a reference document with a claim:“X”: the document that when taken alone, prejudices the novelty or
inventive step of the claim;(Guidelines Part II Chapter 7 Section 12)
Prominent Substantive FeaturesThat an invention has prominent substantive features means that, having
regard to the prior art, it is non-obvious to a person skilled in the art. If theperson skilled in the art can obtain the invention just by logical analysis,
inference, or limited experimentation on the basis of the prior art, theinvention is obvious and therefore has no prominent substantive feature.
(Guidelines Part II Chapter 4 Section 2.2)
Notable ProgressThat an invention represents notable progress means that the invention
can produce advantageous technical effect as compared with the priorart. For instance, the invention has overcome the defects anddeficiencies in the existing technology, or has provided a different
technical solution to solve a certain technical problem, or represents acertain new trend of technical development. (Guidelines Part II Chapter 4
Section 2.23)
Person Skilled in the Art
Whether or not an invention involves an inventive step shall be evaluatedon the basis of the knowledge and capability of the person skilled in theart. The person skilled in the art refers to a fictional “person” who ispresumed to be aware of all the common technical knowledge and haveaccess to all the technologies existing before the filing date or the priority
date in the technical field to which the invention pertains, and havecapacity to apply all the routine experimental means before that date.
However, he is not presumed to have creativity. If the technical problem
to be solved impels that person to seek technical means in othertechnical field, he should also be presumed to have access to therelevant prior art, common technical knowledge, and routine experimentalmeans in the other technical field before the filing date or the priority
date.
The purpose of establishing such a concept is to unify the standard of
examination and to avoid subjectivity as far as possible. (Guidelines PartII Chapter 4 Section 2.4)
Examination of Inventive Step of Invention
The determination as to whether or not an invention involves an inventive
step shall be considered only when the invention has novelty.
1 Principles of Examination
In accordance with Article 22.3, when the inventive step of an invention is
examined, the examiner shall examine whether or not the invention has
prominent substantive features and whether or not it represents notable
progress.
When evaluating whether or not an invention involves an inventive step,78

the examiner shall consider not only the technical solution itself, but also
the technical field to which the invention pertains, the technical problem
solved, and the technical effects produced by the invention. The invention
shall be considered as a whole.
In the examination of inventive step, it is permissible to combine together
different technical contents disclosed in one or more prior art documents
to assess the claimed invention, which is different from the principle of“separate comparison” in the examination of novelty (see Chapter 3,
Section 3.1 of this Part).
If an independent claim involves an inventive step, there is no need to
examine the inventive step of its dependent claims.
2 Criterion for Examination
When the inventive step of an invention is assessed, Article 22.3 shall be
the governing criterion for examination. In order to facilitate theunderstanding of this criterion, the typical approach to the assessment ofprominent substantive features and the criterion for determining notable
progress are respectively provided in the following.
2.1 Assessment of Prominent Substantive Features
To determine whether an invention has prominent substantive features isto determine, to the person skilled in the art, whether the claimed
invention is non-obvious as compared with the prior art.
If the claimed invention is obvious as compared with the prior art, it does
not have prominent substantive features. On the contrary, if the result ofcomparison shows that the claimed invention is non-obvious ascompared with the prior art, it has prominent substantive features.
2.1.1 Approach to Assessment
Usually the following three steps are followed to determine whether aclaimed invention is obvious as compared with the prior art.
(1) Determining the closest prior art
The closest prior art refers to a technical solution in the prior art that is
the most closely related to the claimed invention, which shall be the basis
for determining whether or not the claimed invention has prominent
substantive features. The closest prior art may, for example, be an
existing technology in the same technical field as the claimed invention,and its technical problem to be solved, technical effects, or intended use
are the closest to the claimed invention, and/or has disclosed thegreatest number of technical features of the claimed invention; or be an
existing technology which, despite being in a different technical field fromthe claimed invention, is capable of performing the function of theinvention and has disclosed the greatest number of technical features of
the invention. It should be noted that, when determining the closest priorart, account shall be first taken of the prior art in the same or similar
technical fields.
(2) Determining the distinguishing features of the invention and thetechnical problem actually solved by the invention
During examination, the examiner shall objectively analyze anddetermine the technical problem actually solved by the invention. For thispurpose, the examiner shall first determine the distinguishing features of
the claimed invention as compared with the closest prior art and thendetermine the technical problem that is actually solved by the invention
on the basis of the technical effect of the distinguishing features. The
technical problem actually solved by the invention, in this sense, means
79the technical task in improving the closest prior art to achieve a better
technical effect.
In the course of examination, because the closest prior art identified by
the examiner may be different from that asserted by the applicant in thedescription, the technical problem actually solved by the invention, whichis redetermined on the basis of the closest prior art, may not be the sameas that described in the description. Under such circumstance, thetechnical problem actually solved by the invention shall be redeterminedon the basis of the closest prior art identified by the examiner.
The redetermined technical problem may depend on the particularsituations of each invention. As a principle, any technical effect of an
invention may be used as the basis to redetermine the technical problem,
as long as the technical effect could be recognized by a person skilled in
the art from the contents set forth in the description.
(3) Determining whether or not the claimed invention is obvious to aperson skilled in the art
At this step, the examiner shall make a judgment, starting from theclosest prior art and the technical problem actually solved by theinvention, as to whether or not the claimed invention is obvious to aperson skilled in the art. In the course of judgment, what is to be
determined is whether or not there exists such a technical motivation in
the prior art as to apply said distinguishing features to the closest prior art
in solving the existing technical problem (that is, the technical problem
actually solved by the invention), where such motivation would prompt a
person skilled in the art, when confronted with the technical problem, toimprove the closest prior art and thus reach the claimed invention. If
there exists such a technical motivation in the prior art, the invention is
obvious and thus fails to have prominent substantive features.
Under the following circumstances, it is usually thought there exists sucha technical motivation in the prior art.
(i) The said distinguishing feature is a common knowledge, such as acustomary means in the art to solve the redetermined technical problem,
or a technical means disclosed in a textbook or reference book to solve
the redetermined technical problem.
(ii) The said distinguishing feature is a technical means related to theclosest prior art, such as a technical means disclosed in other part of thesame reference document, the function of which in the other part is thesame as the function of the distinguishing feature in the claimed invention
in solving the redetermined technical problem.
(iii) The said distinguishing feature is a relevant technical means
disclosed in another reference document, the function of which in thatreference document is the same as the function of the distinguishingfeature in the claimed invention in solving the redetermined technicalproblem.
(Guidelines Part II Chapter 4 Section 3)
Assessment of Notable Progress
When evaluating whether or not an invention represents notable
progress, the examiner shall primarily consider whether or not theinvention produces advantageous technical effects. Usually, an invention
shall be regarded as producing advantageous technical effects andtherefore representing notable progress in any of the following
circumstances:80

(1) where, as compared with the prior art, the invention produces a better
technical effect, such as quality improved, output increased, energy
saving, and environmental pollution prevented or controlled;(2) where the technical solution provided by the invention is of a different
inventive concept and can produce a technical effect of substantially thesame level as in the prior art;(3) where the invention represents a new trend of technical development;or(4) where, despite negative effect in some respect, the invention
produces outstanding positive technical effects in other respects.
(Guidelines Part II Chapter 4 Section 3.2.2)

USPTO
PCT

In the ISA/IPEA/US, the content of a single reference can call into
question the inventive step of a claimed invention. See PCT/GL/ISPE,
Appendix A13.13.

Legal basis

35 U.S.C. 103

Category

Category III

In practice

The content of a single reference may render a claimed invention prima
facie obvious. See, e.g., MPEP 2144.08 for guidance. Furthermore,
there are no restrictions as to the number of prior art references thatmight be combined for rejecting a claim for obviousness.

V.

INVENTIVE STEP

B.

Established tests or practical guidance for the assessment of inventive step
PCT reservation (PCT/GL/ISPE Appendix A13.08)

EPO
PCT

PCT/GL/ISPE Appendix A13.08 applies

Legal basis

Art 56 EPC

Category

Category III

In practiceProblem-and-solution approach (GL C-IV, 11.5)
In order to assess inventive step in an objective and predictable manner,
the so-called "problem-and-solution approach" should be applied. Thus
deviation from this approach should be exceptional. In the problem-andsolution approach, there are three main stages:
Determination of the closest prior art (GL C-IV, 11.5.1)
The closest prior art is that which in one single reference discloses the
combination of features which constitutes the most promising starting
point for an obvious development leading to the invention. In selecting
the closest prior art, the first consideration is that it should be:(i) be directed to a similar purpose or effect as the invention or at least
belong to the same or a closely related technical field as the claimed
invention(ii) be assessed from the skilled person's point of view on the day before
the filing or priority date valid for the claimed invention81

(iii) take into account what the applicant himself acknowledges in his
description and claims to be known
Determination of the objective technical problem (GL C-IV, 11.5.2)
The determination of the technical problem consists in:(i) identifying the differences, in terms of technical features (either
structural or functional) between the claimed invention and the closest
prior art, and the technical effect resulting from the distinguishingfeatures. Features which cannot be seen to make any contribution, either
independently or in combination with other features, to the technicalcharacter of an invention are not relevant for assessing inventive step.
(ii) formulating the "objective technical problem", e.g., the aim and task ofmodifying or adapting the closest prior art to provide the technical effects
that the invention provides over the closest prior art, based on objectively
established facts. It is noted that the objective technical problem must be
so formulated as not to contain pointers to the technical solution (no expost facto analysis).
Obviousness to the skilled man - The could-would approach (GL CIV, 11.5.3)
In the third stage the question to be answered is whether there is any
teaching in the prior art as a whole that would (not simply could, butwould) have prompted the skilled person, faced with the objective
technical problem, to modify or adapt the closest prior art while taking
account of that teaching, thereby arriving at something falling within theterms of the claims, and thus achieving what the invention achieves. This
must have been the case for the skilled person before the filing or priority
date valid for the claim under examination.

JPO
PCT

PCT/GL/ISPE Appendix A13.08 does not apply

Legal basis

Guidelines Part II, Chapter 2, 2.4,2.5

Category

Category I

In practicePrinciple of Method of Determining whether a Claimed Invention
Involves an Inventive Step“(1) Whether or not a claimed invention involves an inventive step isdetermined whether the reasoning that a person skilled in the art could
have easily arrived at a claimed invention based on cited inventions canbe made by constantly considering what a person skilled in the art would
do after precisely comprehending the state of the art in the field to which
the present invention pertains at the time of the filing.
(2) Concretely, after finding of a claimed invention and one or more citedinventions, one cited invention most suitable for the reasoning isselected. And comparison of the claimed invention with a cited invention
is made, and the identicalness and the difference in matters defining theinventions are clarified. Then, the reasoning for lacking an inventive stepof the claimed invention is attempted on the basis of the contents of theselected invention, other cited inventions (including well-known orcommonly used art) and the common general knowledge. The reasoning
can be made from various and extensive aspects. For example, theexaminer evaluates whether a claimed invention falls under a selection ofan optimal material, a workshop modification of design, a mere
juxtaposition of features on the basis of cited inventions, or whether thecontents of cited inventions disclose a cause or a motivation for a person
82skilled in the art to arrive at the claimed invention. If advantageous effectsof the claimed invention over a cited invention can be clearly found in thedescription in the specification, etc., it is taken into consideration as facts
to support to affirmatively infer the involvement of an inventive step.
When the reasoning can be made as a result of the above method, theclaimed invention should be denied its inventive step. When thereasoning cannot be made, the claimed invention should not be denied
its involvement of an inventive step.
(3) The method of finding a claimed invention and cited inventions, andcomparing the two, set forth in "Method of Determining whether aClaimed Invention is Novel" (see 1.5.1 to 1.5.4) is also applied to thedetermination of the inventive step requirement.”
Specific Examples of Reasoning
The reasoning can be made from various and extensive aspects.
Examples are as follows.
(1) Selection of an optimal material, workshop modification of design,
mere juxtaposition of features① Selection of an optimal material, workshop modification of design, etc.
Among exercises of ordinary creativity of a person skilled in the art are aselection of an optimal material from publicly known materials which
achieve a specific object, an optimization of a numerical value range, areplacement with equivalents, and a workshop modification of design inapplying specific technology. When the difference of a claimed invention
in comparison falls only under these categories, it is usually consideredthat a person skilled in the art could have easily arrived at it, unlessotherwise there is another ground for inferring inventive step.
② Mere juxtaposition of features
If matters defining an invention are not linked each other functionally or
operationally and the invention is a combination of each matter (merejuxtaposition of features), the invention is deemed as a mere exercise ofordinary creativity of a person skilled in the art, unless otherwise there isanother ground for inferring inventive step.
(2) Probable cause or motivation① Close relation of technical fields
An attempt to apply a technical means in a related technical field in orderto solve a problem is a mere exercise of ordinary creativity of a person
skilled in the art. A replaceable or add-able means in a related technicalfield, for example, can be a strong ground for the reasoning that a person
skilled in the art would have been led to a claimed invention.
② Close similarity of a problem to be solved
A close similarity of a problem to be solved can be a strong ground forthe reasoning that a person skilled in the art would be led to a claimed
invention by applying or combining cited inventions.
When a cited invention does not intend a similar problem to be solved tothat of a claimed invention, further examination based on the state of theart should be conducted whether a problem to be solved is evident orwhether it would have been easily conceived.
Even based on a problem to be solved of a cited invention which isdifferent from that of a claimed invention, the inventive step of theclaimed invention can be denied regardless of the difference in problems,83

if the reasoning can properly be made that a person skilled in the art
could have easily arrived at the matters defining the claimed invention ina different way of thinking from the problem-solution of the claimed
invention. This also applies to inventions wherein any problem to besolved cannot be identified, for example, inventions based on a discovery
by trial and error.
③ Close similarity of function, work or operation
If a close similarity in function, work or operation exists between aclaimed invention and a cited invention or between cited inventions, there
can be a well-founded reasoning that a person skilled in the art would
have been led to the claimed invention by applying and combining thecited inventions.
④ Suggestions shown in the contents of cited inventions
Suggestions shown in the contents of cited inventions relevant to aclaimed invention can be a strong ground for the reasoning that a person
skilled in the art would have been led to the claimed invention.
(3) Advantageous effects
If an advantageous effect compared to cited inventions can clearly be
identified from descriptions in the specification and the drawings, it istaken into consideration as a fact to support to affirmatively infer its
inventive step. An advantageous effect compared to cited inventions
means an effect which is advantageous in comparison with an effect of acited invention, among the effects derived from the matters defining aclaimed invention (i.e., among the characteristic effects).
① Advantageous effects to be considered
Reasoning is attempted by confirming and taking into consideration an
advantageous effect, if any, of a claimed invention compared to citedinventions. It is noted that regardless of advantageous effects, inventive
step may be properly denied by the uncontestable reasoning that aperson skilled in the art could have easily arrived at a claimed invention.
However, when the advantageous effect compared to the cited invention
so remarkable that it cannot be foreseen by a person skilled in the art
from the state of the art, there may be cases where its inventive step is
not denied.
For example, even though a reasoning seems to be possible that aperson skilled in the art could have easily arrived at a claimed invention
because of the close similarity between the matters defining a citedinvention and the ones defining a claimed invention or because of a
combination of plural cited inventions, the inventive step should bepositively inferred if a claimed invention has an advantageous effect,qualitatively different or qualitatively the same but quantitatively
prominent in comparison with those of cited inventions, and if theadvantageous effect cannot be foreseen by a person skilled in the art
from the state of the art.
Particularly, in the case of an invention in a technical field in which aneffect of a product is difficult to predict from its structure like a selection
invention explained later, the advantageous effect compared to the citedinvention is an important fact to positively infer its inventive step.
② Effects to be considered, asserted in a written argument, etc.
Where advantageous effects compared to cited inventions are describedin a specification, or where advantageous effects are not explicitly
84described but can be inferred from the statements in the specification or
the drawings by a person skilled in the art, the effects asserted or verified(e.g., experimental results) in a written argument, etc. should beconsidered. However, the effects asserted in the written argument, which
are not described in the specification and that a person skilled in the art
couldn’t deduce from the description of the specification or the drawings,
should not be taken into consideration (Reference: Hei 9 (Gyo Ke) 198).
③ Method of handling selection invention(i) Where an invention with a generic concept is expressed in a citedreference, an invention with more specific concept selected from thegeneric concept is called "selection invention," if it is novel over thegeneric invention and pertains to a technical field in which an effect of a
product is difficult to understand from its structure. Where an invention isexpressed as alternatives either in form or de facto in a cited reference,an invention selected from a group of inventions each of which is
identified by supposing that each of the alternatives is a matter to define
each of such inventions is also called "selection invention,” if it is novel
over the alternatives and pertains to a technical field in which an effect ofa product is difficult to understand from its structure. Thus, an invention
can be a selection invention, if it is not an invention described in a
publication (refer to 1.5.3(3)).
(ii) A selection invention involves an inventive step, when it generates anadvantageous effect, not disclosed in a cited reference, qualitatively
different or qualitatively the same but quantitatively prominent incomparison with that of an invention with a generic concept in a citedinvention, neither of the effect being foreseen by a person skilled in theart from the state of the art.
(References: Sho 34 (Gyo Na) 13, Sho 51 (Gyo Ke) 19, Sho 53 (Gyo Ke)
20, Sho 60(Gyo Ke) 51)④ Method of handling invention with numerical limitation
When a claimed invention is defined by specific numerical values, i.e., aninvention with numerical limitation, the determination of inventive stepcomes under the following criteria.
(i) Optimizing by experiment a numerical range is normally considered as
an exercise of ordinary creativity of a person skilled in the art, and hence
its inventive step is denied in general.
(ii) However, a claimed invention involves an inventive step, when within
a limited numerical range it has an advantageous effect, not disclosed incited references, and qualitatively different or qualitatively the same but
quantitatively prominent in comparison with that of a cited, neither of theeffects also being foreseen by a person skilled in the art from the state of
the art.
The remarkable effect should be confirmed in any part of a limited
numerical range.
In addition, a note to what is called the significance of critical range ofnumerical limitation is the following.
A remarkable difference in effect is required between inside and outside
the limited numerical range where a claimed invention is on thecontinuation of a cited invention, that is, the two inventions differ only inthe presence and lack of the numerical limitations, respectively, and havethe closely similar problem to be solved.
However, where two inventions have different problems to be solved and85

qualitatively different effects respectively, the significance of critical rangeof numerical limitation is not required even though the two inventions
have the same matters defining the inventions except for the numericallimitation (Reference: Sho 59 (Gyo Ke) 180).
(Guidelines Part II, Chapter 2, 2.4,2.5)

KIPO
PCT

PCT/GL/ISPE Appendix A13.08 is not applied

Legal basis

Guidelines Part III, Chapter 3, 5.1

Category

Category I

In practice

Guidelines
5.1 Procedures of assessing the inventive step
The procedures of assessing the inventive step are as follows:(1) First, specify the claimed invention. The method of specifying theclaimed invention is the same with that of “assessing novelty” in Chapter
2.
(2) Secondly, specify the cited invention(s). The method of specifying thecited inventions is the same with that of “assessing novelty” in Chapter 2.
The examiner shall specify the cited inventions from the point of view of aperson skilled in the art, on the assumption of the common technical field
and technical problems of the claims of present invention.
(3) Select the cited invention which is the closest to the claimed invention(herein after “the closest cited invention”) and makes a clear differenceby comparing the closest cited invention with the claimed invention. In
doing so, the examiner shall take into consideration the structural
combination of the elements of an invention. More specifically,organically combined structural elements of an invention shall becompared as one integrated unit (without being separated) with theircorresponding elements in the cited invention.
(4) The examiner assesses whether an invention described in the claims
can be easily made by a person skilled in the art, in view of citedinventions and the common general knowledge before the filing, although
there is a difference between the claimed invention and the citedinvention(s).(Guidelines Part III, Chapter 3, 5.1)

SIPO
PCT

Partially adopts PCT/GL/ISPE Appendix A13.08

Legal basis

Art 22(3)Category

Category III

In practice

Usually the following three steps are followed to determine whether aclaimed invention is obvious as compared with the prior art.
(1) Determining the closest prior art
The closest prior art refers to a technical solution in the prior art that is
the most closely related to the claimed invention, which shall be the basis
for determining whether or not the claimed invention has prominent
substantive features. The closest prior art may, for example, be an
existing technology in the same technical field as the claimed invention,and its technical problem to be solved, technical effects, or intended use
are the closest to the claimed invention, and/or has disclosed the86

greatest number of technical features of the claimed invention; or be an
existing technology which, despite being in a different technical field fromthe claimed invention, is capable of performing the function of theinvention and has disclosed the greatest number of technical features of
the invention. It should be noted that, when determining the closest priorart, account shall be first taken of the prior art in the same or similar
technical fields.
(2) Determining the distinguishing features of the invention and thetechnical problem actually solved by the invention
During examination, the examiner shall objectively analyze anddetermine the technical problem actually solved by the invention. For thispurpose, the examiner shall first determine the distinguishing features of
the claimed invention as compared with the closest prior art and thendetermine the technical problem that is actually solved by the invention
on the basis of the technical effect of the distinguishing features. The
technical problem actually solved by the invention, in this sense, means
the technical task in improving the closest prior art to achieve a better
technical effect.
In the course of examination, because the closest prior art identified by
the examiner may be different from that asserted by the applicant in thedescription, the technical problem actually solved by the invention, whichis redetermined on the basis of the closest prior art, may not be the sameas that described in the description. Under such circumstance, thetechnical problem actually solved by the invention shall be redeterminedon the basis of the closest prior art identified by the examiner.
The redetermined technical problem may depend on the particularsituations of each invention. As a principle, any technical effect of an
invention may be used as the basis to redetermine the technical problem,
as long as the technical effect could be recognized by a person skilled in
the art from the contents set forth in the description.
(3) Determining whether or not the claimed invention is obvious to aperson skilled in the art
At this step, the examiner shall make a judgment, starting from theclosest prior art and the technical problem actually solved by theinvention, as to whether or not the claimed invention is obvious to aperson skilled in the art. In the course of judgment, what is to be
determined is whether or not there exists such a technical motivation in
the prior art as to apply said distinguishing features to the closest prior art
in solving the existing technical problem (that is, the technical problem
actually solved by the invention), where such motivation would prompt a
person skilled in the art, when confronted with the technical problem, toimprove the closest prior art and thus reach the claimed invention. If
there exists such a technical motivation in the prior art, the invention is
obvious and thus fails to have prominent substantive features.
(Guidelines Part II Chapter 4 Section 3.2.1.1)

USPTO
PCT

The ISA/IPEA/US does not apply the “problem-solution approach” ofassessing inventive step set forth in PCT/GL/ISPE, Appendix A13.08.

Legal basis

35 U.S.C. 103: 37 CFR 1.104: Graham v. John Deere Co., 383 U.S. 1(1966); ) KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007)

Category

Categories III and IV87

In practice

The question of nonobviousness must be determined as of the “time theinvention was made.”
The use of hindsight or evaluation in the context of skills developed by
the evaluator or skilled artisan after the date of the invention have noplace and must be ignored in the determination of nonobviousness.
The U.S. Supreme Court in KSR International Co. v. Teleflex Inc.
reaffirmed the framework for determining obviousness as set forth inGraham v. John Deere. The basic factual inquiries of Graham v. John
Deere are: (1) determining the scope and contents of the prior art; (2)ascertaining the differences between the prior art and the claims in issue;and (3) resolving the level of ordinary skill in the art while taking into
account secondary considerations.
The examiner conducts the search of the pertinent art where one canreasonably be expected to look for a solution to the problem which thedevice attempts to solve.
The Supreme Court in KSR noted that the key to supporting any rejection
under 35 U.S.C. 103 is the clear articulation of the reason(s) why theclaimed invention would have been obvious. Exemplary rationales that
may support a conclusion of obviousness include:(1) Combining prior art elements according to known methods to yieldpredictable results;(2) Simple substitution of one known element for another to obtain
predictable results;(3) Use of known technique to improve similar devices (methods, or
products) in the same way;
(4) Applying a known technique to a known device (method, or product)
ready for improvement to yield predictable results;(5) “Obvious to try” – choosing from a finite number of identified,predictable solutions, with a reasonable expectation of success;(6) Known work in one field of endeavor may prompt variations of it for
use in either the same field or a different one based on design incentives
or other market forces if the variations are predictable to one of ordinary
skill in the art;(7) Some teaching, suggestion, or motivation in the prior art that would
have led one of ordinary skill to modify the prior art reference or to
combine prior art reference teachings to arrive at the claimed invention.
See MPEP 2143 for discussions of each rationale along with examples
illustrating how the cited rationales may be used to support a finding ofobviousness. The list of rationales provided is not intended to be an all
inclusive list. Other rationales to support a conclusion of obviousness
may be relied upon by Office personnel.

V.

INVENTIVE STEPC.

Secondary indicia, if any, that may be taken into account for the assessmentof inventive step
Based on the Trilateral Comparative Studies

EPO
88

PCT

N.A.

Legal basis

Art 56 EPC

Category

Category IV

In practicePredictable disadvantage; non-functional modification; arbitrarychoice (GL C-IV, 11.10.1)
If the invention is the result of a foreseeable disadvantageousmodification of the closest prior art, which the skilled person could clearly
predict and correctly assess, and if this predictable disadvantage is notaccompanied by an unexpected technical advantage, then the claimed
invention does not involve an inventive step (see T 119/82, OJ 5/1984,
217, and T 155/85, OJ 3/1988, 87). However, if this worsening isaccompanied by an unexpected technical advantage, an inventive step
might be present.
Similar considerations apply to the case where an invention is merely the
result of an arbitrary non-functional modification of a prior-art device or ofa mere arbitrary choice from a host of possible solutions (see T 72/95,
not published in OJ, and T 939/92, OJ 6/1996, 309).
Unexpected technical effect: "Bonus effect" v. "One-way street"situation (GL C-IV, 11.10.2)
An unexpected technical effect may be regarded as an indication of
inventive step. However, if, having regard to the state of the art, it would
already have been obvious for a skilled person to arrive at something
falling within the terms of a claim, for example due to a lack ofalternatives thereby creating a "one-way street" situation, the unexpected
effect is merely a bonus effect which does not confer inventiveness on
the claimed subject-matter (see T 231/97, not published in OJ and T
192/82, OJ 9/1984, 415).
"Long-felt need" v "Commercial success" (GL C-IV, 11.10.3)
Where the invention solves a technical problem which workers in the art
have been attempting to solve for a long time, or otherwise fulfils a longfelt need, this may be regarded as an indication of inventive step.
Commercial success alone is not to be regarded as indicative of inventive
step, but evidence of immediate commercial success when coupled withevidence of a long-felt want is of relevance provided the examiner issatisfied that the success derives from the technical features of theinvention and not from other influences (e.g. selling techniques oradvertising).

JPO
PCT

N.A.

Legal basis

Guidelines Part II, Chapter 2, 2.8(6)Category

Category I

In practice“A commercial success or other similar facts can be taken into
consideration in order to support to affirmatively infer an inventive step,
insofar as the examiner finds that the fact is established by the featuresof a claimed invention, not by any other factors such as sales promotion
technique and advertisement through an applicant's legitimate assertion
or substantiation.” (Guidelines Part II, Chapter 2, 2.8(6))

KIPO
89

PCT

N.A.

Legal basis

Guidelines Part III, Chapter 3, 8.
Case No. 2002Hu314 (Supreme Court, 27 Dec. 2002)

Category

Category I, Category IV

In practice

Guidelines
8. Other factors in assessing inventive step
In principle, the assessment of the inventive step is to consider
comprehensively the objective, technical constitution, and functional
effect of an invention described in a claim, i.e., to assess the uniquenessof the objective and the remarkableness of the effect as a whole, mainly
based on the difficulty of technical structure. However, there might beother factors in assessing the inventive step. Thus, the examiner should
not readily reach the conclusion that the claimed invention lacks aninventive step when a written opinion submitted by an applicant claims
that the claimed invention is not obvious for the following reasons:(1) If a prior art document teaches not to refer to the prior art thereof, i.e.,
if there is a description in the prior art document that precludes thereasoning that a person skilled in the art would easily arrive at theclaimed invention, the inventive step is not denied by the prior art despite
the similarity between the prior art and the claimed invention. In addition,
the fact that the prior art in a prior art document is described as inferior
cannot be necessarily considered as a factor that precludes the inventive
step.
(2) Commercial success or favourable responses from the industry or thefact that the claimed invention had not been implemented by anybody fora long time before the claimed invention was filed may be regarded asindicative of the inventive step as a secondary evidence. However, thosefacts alone are not to be regarded as indicative of the inventive step. Firstof all, as the inventive step should be assessed based on the contents
disclosed in the specification (i.e., the objective, structure, and effect of
the invention), commercial success is not to be regarded as a reference
for the assessment of the inventive step, provided that such success is
not derived from the technical features of the invention but from otherfactors (e.g., improvement in sales techniques or advertising).
(Reference)
Although a mobile video pop song accompaniment of the claimed
invention made a hit 53 in Japan with a signed two-year export contract
worth $84,000,000, this cannot prove that the success is based only on
the superiority of a technical structure of the claimed invention. In
addition, if the success is assessed as deriving from the sales techniquesof a salesperson, evidence of the commercial success alone is not to be
regarded as a factor in guaranteeing the inventive step. (Case No.
2002Hu314 (Supreme Court, 27 Dec. 2002)(3) The fact that a claimed invention solves a technical problem that aperson skilled in the art has attempted to solve for a long time or fulfils along-felt need may be regarded as an indication of the inventive step. In
addition, such a solution of a technical problem or a need should havebeen recognized by a person skilled in the art for a long time and be
fulfilled by the claimed invention for the first time. To accept this as anindication of inventive step, an objective evidence is required.
(4) If an invention is made by technical means which a person skilled in
the art has abandoned due to technical prejudice interfering with the90research and development of a technical problem in the relevant field of
the art, thereby solving the technical problem, this is regarded as anindicator of the inventive step.
(5) If a claimed invention proposes means for overcoming technicaldifficulties not resolvable by other means or for solving a technicalproblem, this is regarded as an advantageous evidence for an inventive
step.
(6) If a claimed invention falls within the area of a brand-new technology
and has no prior art relevant to the invention, or if the closest prior art to
the invention is far away from the invention, the inventive step is likely tobe acknowledged. (Guidelines Part III, Chapter 3, 8.)

SIPO
PCT

N.A.

Legal basis

Art 22(3), Guidelines Part II Chapter 4 Section 5

Category

Category III

In practice

Other Factors to be Considered in the Examination of Inventive Step
Usually, whether or not an invention involves an inventive step shall be
examined according to the criterion set forth in Section 3.2 of this
Chapter. It should be stressed that where an application falls into one of
the following circumstances, the examiner shall take the corresponding
factors into account and avoid making a rash determination that theinvention does not involve an inventive step. (Guidelines Part II Chapter 4
Section 5)
Solving a Long-Felt but Unsolved Technical Problem
Where the invention has solved a technical problem which was desired tobe solved for a long time but not successfully solved, the invention has
prominent substantive features and represents notable progress, andthus involves an inventive step. (Guidelines Part II Chapter 4 Section 5.1)
Overcoming a Technical PrejudiceTechnical prejudice refers to the understanding of technicians in the art ofa certain technical problem in a technical field during a certain period oftime that departs from the objective facts, leads the technicians to believethat there is no other possibility and hinders the research anddevelopment in that technical field. If an invention is made by overcoming
such technical prejudice and adopting the technical means which wasabandoned by the technicians due to the prejudice, and hereby has
solved a technical problem, then the invention has prominent substantive
features and represents notable progress, and thus involves an inventive
step. (Guidelines Part II Chapter 4 Section 5.2)
Producing Unexpected Technical EffectAn invention produces an unexpected technical effect means that, as
compared with the prior art, the technical effect of the invention
represents a “qualitative” change, that is, new performance; or represents
a “quantitative” change which is unexpected. Such a qualitative or
quantitative change cannot be expected or inferred by the person skilledin the art in advance. If an invention produces an unexpected effect, itmeans the invention represents notable progress on the one hand, and it
also means that the technical solution of the invention is non-obvious andthus has prominent substantive features on the other hand. Therefore theinvention involves an inventive step. (Guidelines Part II Chapter 4 Section
91

5.3)
Achieving Commercial Success
Where an invention achieves commercial success, if the technicalfeatures of the invention directly bring about such success, it means thatthe invention has advantageous effect on the one hand and it is nonobvious on the other hand. Such kind of invention has prominent
substantive features and represents notable progress, and thus involves
an inventive step. However, if the success is brought about by otherfactors, such as an advance in selling techniques or advertising, it shallnot be used as a basis for assessing inventive step. (Guidelines Part II
Chapter 4 Section 5.4)

USPTO
PCT

N.A.

Legal basis

Graham v. John Deere Co., 383 U.S. 1 (1966); ) KSR International Co. v.
Teleflex Inc., 550 U.S. 398 (2007)

Category

Category IV

In practiceSecondary indicia that may be taken into account when assessing theobviousness of a claimed invention include the presence of unexpected
results, evidence of commercial success, long-felt but unsolved needs,
failure of others, copying by others, and skepticism of experts. The
evidence may be included in the specification as filed, accompany theapplication on filing, or be provided in a timely manner at some otherpoint during the prosecution. The weight to be given any objective
evidence is made on a case-by-case basis.

V.

INVENTIVE STEP

D.

Comparative tests, and specific requirements for taking them into accountBased on the Trilateral Comparative Studies

EPO
PCT

N.A.

Legal basis

N.A.

Category

Categories I, IV

In practiceComparative tests filed after the filing date of an application cannot be
included by way of amendment. Such information is, however, kept inthat part of the dossier which is open to public inspection (Art. 128(4)).

JPO
PCT

N.A.

Legal basis

Guidelines Part II, Chapter 2, 2.5(3)Category

Category I

In practice“Where advantageous effects compared to cited inventions aredescribed in a specification, or where advantageous effects are notexplicitly described but can be inferred from the statements in thespecification or the drawings by a person skilled in the art, the effects
asserted or verified (e.g., experimental results) in a written argument, etc.
92

should be considered. However, the effects asserted in the written
argument, which are not described in the specification and that a person
skilled in the art couldn’t deduce from the description of the specificationor the drawings, should not be taken into consideration. (Reference: Hei
9 (Gyo Ke) 198)”(Guidelines Part II, Chapter 2, 2.5(3))

KIPO
PCT

N.A.

Legal basis

Guidelines Part III, Chapter 3, 6.3(3)Guidelines Part III, Chapter 3, 6.4.1

Category

Category I

In practice

Guidelines“In case where the advantageous effect of the claimed invention which issuperior to that of the prior art is either disclosed in the detailed
description or easily recognized by a person skilled in the art from thedetailed description or the drawings even though it is not explicitly
disclosed, the examiner can assess the inventive step based on theinventor’s assertion of the advantageous effect. However, the effectmerely based on the inventor’s assertion should not be taken into
consideration in assessing the inventive step if the advantageous effect isneither disclosed nor inferred from the descriptions or drawings.”(Guidelines Part III, Chapter 3, 6.3(3))“The detailed description of the selection invention should precisely
explain that the invention generates an advantageous effect incomparison with the cited invention, and does not need to provide
experimental materials to confirm the prominence of the effect. If thegrounds for rejection are notified due to the effect, the applicant canassert the effect concretely by submitting materials relating toexperimental comparisons.” (Guidelines Part III, Chapter 3. 6.4.1)

SIPO
PCT

N.A.

Legal basis

Art 22(3), Guidelines Part II Chapter 2 Section 2.2.4

Category

Category III

In practice

Advantageous effects may be described by way of analysis of thestructural features of the invention or utility model in combination withtheoretical explanation, or illustrated with reference to experimental data,rather than by just assertion that the invention or utility model possesses
the advantageous effects.
However, no matter which approach is applied to explain theadvantageous effects, the invention or utility model shall be comparedwith the prior art and the difference between the invention or utility modeland the prior art shall be pointed out.
The advantageous effects of an invention or utility model in the field of
mechanics or electricity may, under certain circumstances, be explainedby analysis of the structural features of the invention or utility model in
conjunction with their operation mode. However, for an invention in thefield of chemistry, under most circumstances, it is appropriate to explain
the advantageous effects with reference to experimental data rather thanin the above way.
93For those matters measurement of which is not available at present andthe judgment of which has to rely on human sensory organs, such as
taste and smell, the advantageous effects may be described by means ofstatistical experimental results.
Where the advantageous effects are explained by citing experimental
data, the necessary experimental conditions and methods shall be
provided. (Guidelines Part II Chapter 2 Section 2.2.4)

USPTO
PCT

N.A.

Legal basis

N.A.

Category

Category IV

In practiceThere is no requirement to submit comparative test results. Comparative
tests are usually submitted as rebuttal evidence to show unexpected
results once the USPTO has established a prima facie case ofobviousness. Evidence pertaining to secondary considerations must be
taken into account whenever present, however any comparative tests
must be between the claimed invention and the closest prior art. MPEP
716.02(a) and 2145 provide guidance regarding the consideration ofcomparative tests submitted to support patentability of claimed subject
matter.

94