1 Desirable fee system anddescription requirement for claims (*)
With the globalization of economy, there has been an increase in the number of cases where an inventor files
patent applications for the same invention in many countries. However, since the description requirement varies
from one country to another, the users are considered to be required to prepare claims in accordance with therequirements of each country. Furthermore, since each country has a different fee system for claims, the numberof claims acceptable to users, cost-wise, could differ from one country to another. Consequently, it is quite likelythat the global patent acquisition procedure has become increasingly complicated and expensive.
This research project was carried out in order to analyze the users' needs for international harmonization of
the description requirement and fee system for claims and to collect information on the systems in othercountries in order to provide a basis for discussions as to how to promote international harmonization. As apart of this research project, we conducted a questionnaire survey and an interview survey on domestic
companies, universities, patent firms, etc. and also an interview survey on foreign IP Offices and foreigncompanies, etc. in other countries. We established a committee for this research and had the committee members
discuss the findings of these surveys.

I

Introduction

1

Background andresearch project

purposeof

thisin other countries in order to provide a basis fordiscussions as to how to promote international
harmonization.
2

With the globalization of economy, there has
been an increase in the number of cases where an
inventor files patent applications for the same
invention in many countries. It would be desirable
for users to be able to easily obtain patents on a
global scale at low costs. However, since thedescription requirement for claims currently
differs from one country to another, users are
expected to prepare different claims inaccordance with the requirements of each country.
Furthermore, since each country has a different
fee system for claims, the number of claims
acceptable to users, cost-wise, could differ fromone country to another. Consequently, it is quite
likely that the global patent acquisition procedure
has become increasingly complicated andexpensive.
Therefore, it would be important andmeaningful to make it simpler and cheaper forusers to file patent applications in foreigncountries and also to discuss how to promoteinternational harmonization of the description
requirement and fee system for claims in order topromote global patent acquisition activities.
In this research project, we analyzed theusers' needs for international harmonization of
the description requirement and the system for
claims and collected information on the systems

Method of this research(1) We established a committee consisting of a
total of six persons, namely, one person withknowledge and experience relevant to thisresearch, four persons from IP departmentsof companies and one patent attorney. The
committee held a meeting four times in order
to discuss related issues by having committee
members examine and analyze the issues andgive advice from the perspective of experts.
(2) We examined, organized and analyzed
literature useful for this research andcollected information on major countries
including Japan by using statistics, books,
academic papers, research papers, Council's
reports, online information, etc.
(3) We conducted a domestic questionnaire
survey in order to collect information about
users' needs for international harmonizationof the description requirement and fee systemfor claims. For this survey, we selected 242
private companies that file a large number offoreign
applications(including
30
small-and-medium-sized businesses (SMBs)).
In addition, we selected 21 universities thatfile a large number of PCT (Patent(*) This is an English summary by Institute of Intellectual Property based on the FY2013 JPO-commissioned researchstudy report on the issues related to the industrial property rights system.
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Cooperation Treaty) applications and 50
patent firms that handle a large number ofapplications in foreign countries. In total, 313
organizations
were
subjecttothisquestionnaire
survey,
of
which
157
organizations responded (Response rate:
50.2%).
(4) We conducted a domestic interview survey
with reference to the results of the domestic
questionnaire survey in order to examine theusers' needs in more detail based on the
results of the domestic questionnaire survey.
The interview survey was conducted on 15
private companies (including two SMBs),
three universities and two patent firms.
(5) We conducted an interview survey on the
USPTO, EPO and KIPO with regard to thehistorical background and current state of theexisting description requirement and fee
system for claims. Also, we conducted aninterview survey similar to the domestic
interview survey on a total of 12
organizations (six organizations in Europe,
three in the U.S., two in China and one inSouth Korea) such as companies and patentfirms that file a large number of applications
and other procedural documents with major
IP Offices.

Ⅱ Description requirement and fee
system for claims of othercountries and institutions
We made a comparison between Japan,
Europe, the U.S., China, South Korea and PCT interms of the current description requirement for
claims as well as the unity of invention.
Regarding the forms of description for claims,
Europe and China recommend the use of thetwo-part form, which describes the "preamble"
part separately from the "features" part. No
restrictions are imposed in Japan and South Korea.
The U.S. does not impose any restrictions either,but uses some customary forms of expressions.
While each country accepts multiple dependentclaims, only Japan and Europe accept
multiple-multiple dependent claims. Regarding
the unity of invention, the related legal provisions
in Japan, Europe, China and South Korea arebasically similar to the related provisions of the
PCT. However, the legal provisions in the U.S.
are slightly different from those of the PCT.
We made a comparison between Japan,

Europe, the U.S., China and South Korea in termsof the patent application fees and found that eachcountry has the following characteristics: Japanand South Korea have a system of charging an
additional fee for every claim in addition to theexamination fee and the patent fee; The U.S. hasa system of charging an additional fee for eachindependent claim after the number of
independent claims surpasses three, a system ofcharging an additional fee for the use of a multiple
dependent claim, and a system of collecting
patent fees in three installments; Europe has asystem of collecting an application maintenancefee and charging an additional fee for each claim
based on the number of excess claims, while thefee is designed to increase in two stages; andChina has a system of calculating patent fees at
the time of application filing.

Ⅲ Foreign applications
1

Results of the domestic questionnaire
surveyThelargestpercentage(69.6%)
ofrespondents said that, in the case of a typicalforeign application, they file an application inthree to five countries. Some pharmaceuticalcompanies said that they file foreign applicationsin 20 countries or more. The U.S. (66.2%) andChina (19.9%) were the two top countries(regions) where the respondents filed the largest
number of applications including the PCT
applications that entered the national phase.
2

Results of the interview survey

In the interview survey on domestic
companies, most of the respondents said thatthey have already increased the number ofapplications filed in foreign countries or that theywould continue to do so. Universities are
selectively filing applications in foreign countries
due to budgetary restraints. All of the three
European companies that were subject to ourinterview survey in foreign countries said they
consider foreign applications very important.

Ⅳ Summary of the responses fromusers
In this research project, we conducted adomestic questionnaire survey, a domestic
interview survey, and an interview survey inforeign countries to collect information on the

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Vol.23following eight items that should be discussedfromtheperspectiveofinternational
harmonization.
"Item 1: Restrictions in terms of form ofdescription of claims," "Item 2: Restrictions interms of form of citation of claims," "Item 3:
Other restrictions in terms of expressions ofclaims," "Item 4: Differences among countries as
to the treatment of unity of invention," "Item 5:
Subject matters eligible for patent protection(Reasons for not granting a patent)," "Item 6:
Differences among countries as to thepatentability requirements other than novelty,
inventive step and disclosure, and description
requirements other than those related to claims
such as the support requirement," "Item 7:
Differences among countries as to fee systems
related to claims," and "Item 8: Other problems
with patent systems."
We asked the respondents to choose up to
three items that they find problematic when filingforeign applications. The item chosen by thelargest number of respondents was Item 2(73.2%), followed by Item 4 (49.0%), Item 6(27.4%), Item 7 (24.2%) and Item 1 (19.1%). An
industry-specific analysis of the ratio of selecting
each item has revealed that most of thepharmaceutical companies chose Item 5, whichshows the great difference between industries interms of the level of awareness.

Ⅴ Restrictions in terms of form ofdescription of claims (Item 1)
1

Domestic questionnaire survey

The number of respondents who said that thetwo-part form is problematic was relatively small(16.6% of all the respondents) in comparison withother items. Many of the respondents who chose"the interpretation of the preamble part as priorart (58.8% of the respondents) said that thetwo-part form could become very problematic
depending on the case and should be regarded asvery problematic in terms of quality. Regarding
the Markush-type claims, a small percentage ofthe respondents found them problematic (13.3%
of all the respondents), while many of them foundsuch claims very problematic in terms of quality.
Many respondents requested international
harmonization of the forms of description ofclaims (53.3% of the respondents) and thenarrowing of the difference among countries(30.0% of the respondents). Many respondents
said that not only the two-part form but also all

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forms of description of claims should be madepermitted (56.7% of the respondents).
2

Results of the interview survey

In the domestic interview survey, many
respondents said that the issue of two-part form
is not so problematic either quantitatively or
qualitatively. However, some respondents pointed
out that it would be difficult to prepare two-partclaims depending on the nature of the invention.
On the other hand, some respondents said that,since the preamble part is sometimes interpreted
as prior art at the time of exercising rights or in
the phase of USPTO examination, it is necessary
to prepare claims with great care. Regarding
Markush-type claims, some respondents said that
embodiments are required in China in some cases.
Five out of the seven respondents who chose
Item 1 said that it would be desirable to abolishthe restrictions on the form of description so as toallow the preparation of uniform claims.
In an interview survey conducted in Europe,some respondents supported the two-part form,by saying that it would facilitate theunderstandingofpatents.
Some
other
respondents opposed the two-part form, by sayingthat the two-part form is not appropriate in somecases.
3

Direction of international harmonization

One of the forms of description of claims, thetwo-part form, tends to be subject to a high riskof inappropriate interpretation of claims such as
the interpretation of the preamble part as priorart. For this reason, the international
harmonization of interpretation of the rights
granted based on two-part claims has beenrequested.
Furthermore,
it
would
be
inappropriate to adopt the practice of requiring arewrite of claims into two-part claims. Also, itwould be desirable to harmonize examination
practices in terms of whether the preamble partshould be regarded as prior art. In the case of
Markush-type claims, which cause such problems
as limited interpretation in connection withembodiments, the harmonization of the disclosure
requirement has been requested.

Ⅵ Form of citation of claims (Item 2)
In this research project, we collected
information
about
(i)
restrictionson
multiple-multiple dependent claims, (ii) China's

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restrictions on the dependence on multiple
independent claims, and (iii) the EPO's
restrictions on the number of independent claims
within the same category1

Domestic questionnaire survey- Restrictions on multiple-multiple dependentclaimsMore than half of the respondents said thatmultiple-multiple dependent claims should be
accepted in countries that currently do not accept
such claims (53.0% of the respondents). However,many respondents said that the acceptance ofsuch claims would be convenient, though notindispensable (39.1%). Less than 20% of the
respondents (16.3%) said that the refusal of
multiple-multiple dependent claims is very
problematic in many cases and requires a drastic
rewrite. Many respondents (59.6%) said that therefusal of multiple-multiple dependent claims
would not be so problematic quality-wise.
- China's restrictions on the dependence on
multiple independent claims
Many
respondents(31.7%
ofthe
respondents) said that such restrictions cause
problems in some cases and become very
problematic quality-wise because it necessitates adrastic rewrite, etc. Also, many respondents
pointed out the risk that such restrictions could
affect the scope of rights (the narrowing of thescope of rights).
- The EPO's restrictions on the number of
independent claims within the same categorySomerespondents(39.1%
ofthe
respondents) requested the abolishment of such
restrictions, by saying that such restrictions areoften problematic because they have to make anamendment, file divisional applications, etc. after
receiving a notice of reasons for refusal. Someother respondents (37.4%) said that, although
they have not received any notice of reasons forrefusal, it would be desirable to abolish such
restrictions. This shows that many respondents
are aware of this issue and find such restrictions
very problematic quality-wise because it
necessitates a drastic rewrite, etc. (46.6%). Also,
many respondents pointed out an increase in thecosts due to the filing of divisional applications.

- International harmonization of forms of citationof claims
Some respondents requested international
unification of forms of citation (73.9% of the
respondents) and the narrowing of the difference
among countries (20.9%). This shows that many
respondents
hope
to
see
international
harmonization. Regarding the future direction ofinternational
harmonization,
respondents
requested the abolishment of the restrictions on
forms of citation (55.7%), the abolishment of
restrictions on multiple-multiple dependentclaims (54.8%), the abolishment of the EPO's
restrictions (42.6%), the abolishment of China's
restrictions and the improvement of treatment inEurope and the U.S (35.7%) (multiple answers).
This shows that the respondents had various
needs.
2

Results of the interview survey- Restrictions on the multiple-multiple dependentclaimsMany respondents said that they use
multiple-multiple dependent claims in countries
that accept such claims. A small number of
respondents said that they do not use such claims.
The
respondents
who
need
to
use
multiple-multiple dependent claims (4 out of 20
respondents) showed their concern that
restrictions on such claims would increase thenumber of claims and would consequently raise
the costs. Among the respondents of thisinterview survey, 2 out of the 4 respondents who
responded that multiple-multiple dependentclaims are indispensable and 7 out of the 8
respondents who responded that the acceptanceof such claims would be convenient but notindispensable said that restrictions would notcause serious problems as long as any problems
related to fees, amendments and international
harmonization are solved.
In an interview survey conducted in Europe,
respondents said that one of the merits of the useof multiple-multiple dependent claims is thecapability to express a wide range of extensive
combinations. All of the respondents said that theuse of such claims makes it easier to understandinventions as a group. On the other hand, a patentfirm in South Korea said that the use of suchclaims makes it difficult to understand the scopeof rights. A patent firm in the U.S. said thatmultiple-multiple dependent claims are not

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particularly necessary under the U.S. system. In
China, respondents said that multiple-multiple
dependent claims are sometimes intentionallyused in order to reduce application costs bydecreasing the number of claims.
- China's restrictions on the dependence on
multiple independent claims
In the domestic interview survey, some
respondents showed their concern that such
restrictions would narrow the scope of rights.
Also, some respondents said that such
restrictions should be abolished because theiroccasional dependence on multiple independentclaims necessitates the filing of divisional
applications in some important cases, which
results in an increase in the costs.
European Company said that the restrictions
would prevent simplification of claims and could
result in the payment of unnecessary costs if thefiling of divisional applications becomes necessary.
A patent firm in South Korea expressed its
concern that such restrictions would narrow thescope of rights.
- EPO's restrictions on the number of
independent claims within the same category
In the domestic interview survey, some
respondents said that such restrictions would be
problematic because it would necessitate thefiling of divisional applications and would
consequently increase the costs. They said thatsuch restrictions should be abolished. On theother hand, many respondents said that such
restrictions have not caused serious problems.
In the interview survey in Europe,
respondents pointed out some merits, by sayingthat such restriction would make it easier tounderstand patents as a group and prevent claims
from becoming too complicated. On the other
hand, respondents pointed out some demerits bysaying that the filing of divisional applications
would be required even if many independentclaims need to be placed in the same category.
3

Direction of international harmonization

use of such claims would bring about such merits
as acquisition of comprehensive rights. However,such merits should be regarded not as enormous
but as merely convenient. From the perspectiveof global patent acquisition, if every country
accepts the same form of citation, the related
costs would decrease as a result. Therefore, it isconsidered that there is a great need forinternational harmonization of the handling ofmultiple-multiple dependent claims. However, in
this research project, the number of respondents
who said that multiple-multiple dependent claims
should be accepted internationally was notnecessarily high. Therefore, as a possible
directionofinternational
harmonization,
restrictions may be imposed on multiple-multiple
dependent claims. When pursuing international
harmonization, it would be necessary to discuss
comprehensive issues such as the possibility ofincreasing the freedom of amendment by relaxing
the amendment requirements.
- China's restrictions on the dependence on
multiple independent claims
In the domestic interview survey, some
respondents said that such restrictions in China
would increase the costs and become greatly
problematic. Also, in the questionnaire survey,
many respondents found such restrictions very
problematic quality-wise. The discussion on the
future direction of international harmonization
should cover this issue of China's restrictions.
- EPO's restrictions on the number of
independent claims within the same category
In the domestic interview survey, some
respondents said that, since this issue related to
the EPO sometimes requires the filing ofdivisional applications, many respondents found itvery problematic cost-wise. Also, in thequestionnaire survey, many respondents said that
this issue is very problematic quality-wise. The
discussion on the future direction of international
harmonization should cover this issue of EPO's
restrictions.

Ⅶ Other restrictions (Item 3)- Restrictions on multiple-multiple dependentclaims1

From the perspective of global patentacquisition, multiple-multiple dependent claims
have not been actively used nowadays. The active

Only a small number of respondents chose
Item 3 (10.8%). More specifically, respondents
said "Claims were refused because they contained

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Domestic questionnaire survey

vague or relative expressions" (64.7% of the
respondents), "Claims were refused because they
contained
indirect
expressions
suchasparameters" (52.9%), and "the failure to describe
in the claims all of the technologicallyindispensable features of an invention was
sometimes found problematic" (41.1%). Many of
the respondents who chose this item found thisissue very problematic, although the actual
number of such respondents was small. In
particular, many respondents pointed out
problems with regard to the examination
practices in China.
2

the issue of utility of invention. Some
respondents pointed out that, if they commit a
violation of the requirement of the unity of
invention, it would result in the narrowing of thescope of rights and an increase in the related
costs as a result of the filing of divisional
applications. Most of the respondents hope to seeinternational harmonization (59.7% of the
respondents) or a less strict treatment (29.9%).
The answer most frequently chosen by
respondents is " compliance with the PCT"
(63.6% of the respondents), followed by "improvement of the treatment in the U.S."(18.2%).

Results of the interview survey
2

In the domestic interview survey, some
respondents said that, since the EPO sometimes
requires a statement of reference numbers of theforms of embodiments, it would be necessary torequest improvement of the operational practicebecause the scope of rights could be limited tothe embodiments when the rights are exercised.
Some other respondents said that, since China,
which very strictly limits claims to embodiments,
would not accept any claims that do not containthe description of embodiments and would limit
the scope of rights, improvement to theoperational practice should be requested.
3

Direction of international harmonization

As far as the restrictions in terms ofexpressions of claims are concerned, since theissue lies not in the difference of laws or
regulations but in the difference of examination
practices between countries, it would bedesirable to pursue harmonization of examination
practices.

Ⅷ Treatment of unity of invention(Item 4)1

Domestic questionnaire survey

Many respondents said that they have suchspecific problems as "In the U.S., due to therestriction requirement, they are forced to filedivisional applications or select claims" (77.9% of
the respondents) and "the significant difference inthe utility judgment criteria between countries"(40.3%). More than half of the respondents whochose either of these two answers consider itvery problematic quality-wise. This indicates thatthe respondents are aware of the importance ofResults of the interview survey

In the domestic interview survey, many
respondents requested improvements to therestriction requirement and election requirement
imposed in the U.S. They requested less strict
treatment in the U.S. and compliance with the
PCT. They said that the filing of divisional
applications would be very problematic because it
would increase the procedural as well asmonetary burdens. Some respondents said that
universities are having difficulty newly filingdivisional applications due to budgetary
constraints. European companys found it
problematic because they often receive
notifications of the restriction requirement andthe election requirement in the U.S. Also, apatent firm in South Korea said they often receive
notifications of the restriction requirement andthe election requirement. A patent law firm in
Europe said that the very strict EPO restrictions
on the number of independent claims within thesame category requires the filing of divisional
applications due to a violation of unity of
invention.
3

Direction of international harmonization

In the domestic questionnaire survey, morethan half of the respondents who find this issue
problematic said "very problematic." Also, in thedomestic interview survey, most of the
respondents said that this issue is problematic interms of the procedural and monetary burdens
caused by the filing of divisional applications.
This indicates that the treatment of unity of
invention is an important issue that should becovered in the discussion about international
harmonization. Regarding the treatment of unity,
many respondents pointed out issues related to

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the PCT.

Ⅹ Other patentability requirements
and description requirements
other than those related toclaims

Ⅸ Subject matters eligible
patent protection (Item 5)

1

1

for

Domestic questionnaire survey

A small number of respondents said that
there are some problems with regard to thesubject matters eligible for patent protection(14.0%). Many respondents said that "they areunable to prepare uniform claims because thesubject matters eligible for patent protection
differ from one country to another" (68.2% of the
respondents). Many pharmaceutical and chemicalcompanies pointed out problems and found thisissue very problematic because it necessitates adrastic rewrite, etc. Many respondents requested
international harmonization.
2

Results of the interview survey

In the domestic interview survey, three
respondents (in the pharmaceutical and chemical
fields) who chose Item 5 pointed out thedifference in the treatment of use claims between
countries. They found it very problematic thateach country treats use claims differently. For
example, in the U.S., a second use claim is not
permitted for any product. In Japan, a second use
claim is not permitted for any medical treatment.
In Europe, a second use claim must be made for
an invention of a product. Respondents said thatthe treatment should be harmonized among PCT
Contracting States to a certain extent.
3

Direction of international harmonization

In both the domestic questionnaire survey
and the domestic interview survey, respondents
found the issue of subject matters eligible forpatent protection very problematic in thepharmaceutical and chemical fields. This issue islikely to have great effects on the registration andexercise of rights. It is necessary to discuss thisissue in order to harmonize the difference intreatment between countries. We hope that more
concrete measures will be taken in the future.

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Domestic questionnaire survey

Regarding this item, many of the respondents
chose "novelty and inventive step" (69.8% of the
respondents) and "support requirement" (65.1%)(multiple answers). A large number of
respondents said that the difference inpatentability requirements is more problematicthan the difference in description requirements
and fees (27.9%). Regarding novelty andinventive step, many respondents said that they
have faced problems in China and the U.S.
Regarding the support requirement, most
respondents found China's practice of limiting
claims to embodiments problematic.
2

Results of the interview survey

In the domestic interview survey, many
respondents considered it problematic that there
is a great difference between Japan and the U.S.
in terms of the judgment criteria for novelty andinventive
step.
Regardingthesupportrequirement, many respondents said that China's
practice of limiting claims to embodiments is toostrict and that it could lead to a narrowinterpretation of the scope of rights when
exercising the rights. Regarding the U.S., some
respondents said that the criteria for thefulfillment of the support requirement are too
relaxed and they are greatly different from theJapanese criteria. A European electric company
said that, regarding the support requirement,
China's strong requests for embodiments could
limit the scope of rights.
3

Direction of international harmonization

In the domestic questionnaire survey and thedomestic interview survey and the foreigninterview survey, many respondents pointed out
the significance of this issue. With theadvancement of globalization, it would increase
the burdens on applicants to take different
measures for each country even if the samedescription and the same claims are filed for thesame invention in a multiple number of countries.
It would be desirable to promote international
harmonization of the judgment criteria andmethod for novelty and inventive step and the

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judgment criteria for the fulfillment of the
support requirement by narrowing the differencein judgment between countries, not at the level oflaws and regulations, but at the level ofoperational practices.

Ⅺ Fee systems related to claims(Item 7)1

Domestic questionnaire survey

Regarding the U.S. patent prosecution
system, the problem most frequently pointed out
by respondents (69 out of 157 respondents) is"additional fees for multiple dependent claims"(about 44% of all of the respondents), which isfollowed by "additional fees for excess
independent claims" (39 out of 157 respondents)(about 25% of all of the respondents). Regarding
the EPO's patent prosecution system, many
respondents
said
that
"the
application
maintenance fee is problematic" (103 out of 157
respondents) (about 66% of all of the
respondents) and "fees are high in general" (87out of 157 respondents) (55% of all of the
respondents). Regarding the U.S. patent fee
system, it would be desirable if fees can be paidon an annual basis and if the basic fee is reduced
from the current level (81 out of 157 respondents)(about 52% of all of the respondents). Regarding
China's patent fee system, many respondents said
that "it would be desirable to calculate patent feesat the time of registration as is the case in othercountries" (58 out of 157 respondents) (about
37% of all of the respondents).
2

Results of the interview survey

In the domestic interview survey, regarding
the fees charged in the course of patent
prosecution, many respondents requested thatJapan should introduce a system of charging afixed rate unless the number of claims passes acertain threshold. Also, many respondents
pointed out such problems as various additional
fees charged in the U.S. and the expensive
application maintenance fee and generally highcosts in Europe. Regarding patent fees, many
respondents requested the U.S.'s permission forannual payment of patent fees and China's
calculation of patent fees not at the time of
application filing but at the time of registration.
In the interview survey in foreign countries,
some respondents said that the establishment of a
uniform system would be desirable, while someother respondents said that they do not pay muchattention to fee systems because the total costs
are more important. Regarding the U.S., some
respondents said that the three-stage payment ofpatent fees is desirable because it reduces
procedural
burdens,
while
some
other
respondents said that the permission of annual
payment would be more desirable. Many
respondents pointed out that the application
maintenance fee in Europe is problematic and thatvarious fees are expensive in Europe.
3

Direction of international harmonization

Various opinions were submitted with regard
to a desirable fee system. It is difficult todetermine which system is the best.
Comprehensive discussions would be necessary
based on the various opinions from the interested
parties in consideration of the possible effects
that the change in the fee system would have on
the number of claims and the number ofapplications, the costs for patent administration
activities such as patent examination, the possible
effects that the description requirements
described in Chapters IV to X would have on thenumber of claims and the number of divisional
applications, and the influence mutually producedby those effects and the fee system on theamount of costs shouldered by the applicants. It
would be desirable to request a reconsideration ofboth the application maintenance fee in Europe
and the additional fees charged for multiple
dependent claims in the U.S.

Ⅻ Overview
ofharmonization
1

international

International harmonization in general

Regardinginternational
harmonization,
domestic users could take either of the following
two approaches: they could seek international
harmonization
even
if
the
description
requirement becomes stricter in Japan, like inother countries, or they could stop seeking
international harmonization to avoid such anegative effect. However, it is difficult todetermine which approach is more reasonable in
the end because the goal of international
harmonization varies depending on whichperspective you take. For example, if the issue ofinternational harmonization is discussed from theperspective of "unity," the latter approach would
be more appropriate since many users hope to

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appropriate if the issue of international
harmonization is discussed from the perspectiveof "multiple-multiple dependent claims" sincedomestic users hope to see harmonization ofsystems even if restrictions become stricter.
Meanwhile, in the domestic interview survey,
most respondents said that international
harmonization is necessary because industrial
globalization will continue. A relatively large
number of respondents were aware of theinevitability of suffering a certain degree ofinconvenience as a result of international
harmonization because stricter restrictions would
be enforced in Japan. Many respondents said that,
if an internationally harmonized system isestablished, it would not be difficult for them tocomply with it and that the use of such a uniform
system would be more desirable than thecontinuous use of the current non-uniform
systems. Some respondents pointed out that, if
only Japan is forced to make compromises, itwould damage its national interests and therefore
that international harmonization should be
pursued with a clear awareness as to whatcompromises Japan would make and whatcompromises Japan would request other countries
to make.
Therefore, it is important to discuss how to
pursueinternational
harmonizationinconsideration of the users' opinions that stricter
restrictions would be inevitable and that Japan's
national interests need to be protected to acertain extent.
2

Necessity for international harmonization

The results of the questionnaire survey haverevealed that priority should be given to theinternational harmonization of "multiple-multiple
dependent claims," which is covered by the item
"Restrictions in terms of form of citation ofclaims," which was chosen by the largest numberof respondents.
In the questionnaire survey, the "treatment ofunity" was the item chosen by the second largest
number of respondents. The percentage of
respondents who found this item very
problematic was larger than the percentage of
respondents who found "multiple-multiple
dependent claims" very problematic. In theinterview survey, many respondents also
requested international harmonization. Therefore,

IIP
Bulletin2014
2014
Vol.23
IIP Bulletin
Vol.23"treatment of unity" should be given the samelevel of priority as that given to "restrictions on
multiple-multiple dependent claims."
In the questionnaire survey, "Differencesamong countries as to the patentability
requirements and description requirements otherthan those related to claims such as the support
requirement" was the item chosen by the thirdlargest number of respondents. The total numberof respondents who chose this item became highbecause this item covers various elements. In theinterview survey, some respondents said thatthey found it difficult to choose this item inconsideration of the purpose of this research.
This suggests that, in order to discuss the issue
of international harmonization from theperspective of this item, it would be necessary to
conduct another research project from aviewpoint different from the one adopted for thisresearch. However, it would be necessary to
conduct further discussions on this item because
respondents showed a certain level of awarenessabout the related issues despite the fact that the
subject matter of this research is "claims."
The item "Restrictions in terms of form ofdescription of claims" was chosen by the fifthlargest number of respondents, which accounts
for one-fifth of the total number. Therefore, thisitem should be given low priority in this research
project because this item is often about matters offormality and is relatively easy to deal with.
Regarding the item "Details on the subject
matters eligible for patent protection," priority
should not be determined because this research
project covers the users as a whole. Since thisresearch project has revealed that pharmaceuticalcompanies and chemical companies find this issue
very problematic, separate discussions would benecessary. Since this research project hasrevealed that respondents support international
harmonization, specific measures should be takenon this issue.
The item "Other restrictions in terms ofexpressions of claims" was chosen by the smallest
number of respondents in this questionnaire
survey and should therefore be regarded as low inpriority.
To achieve the international harmonization ofsystems, no country should be forced to makecompromises unilaterally. It is necessary forevery country to make necessary adjustments toachieve such harmonization.
Regarding the item "Fee systems related toclaims," comprehensive discussions should bemade in consideration of the effects of any change

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to the fee systems on the number of claims andthe number of applications from the perspectiveof the cost of patent administration activities suchas patent examination.
3

Conclusion

There are several approaches to pursuinginternational harmonization. For example, Japanmight choose to bring its systems in line withthose of the U.S. and China, where many
applications are filed from Japan. If a small
number of IP Offices are using unique systems
different from those of the majority of IP Offices,
those minority IP Offices might choose to bring
their systems in line with those of the majority IP
Offices.
When it comes to multiple-multiple
dependent claims, such claims are not accepted in
the U.S. and China, where many applications are
filed from Japan. Some people are concerned thatthe adoption of multiple-multiple dependentclaims would make it difficult to grasp the
combinations of claims in detail and would
increase the burden of examination. Also, many
people have pointed out that the active use ofmultiple-multiple dependent claims would bringabout such merits as the acquisition ofcomprehensive rights, although such merits
should be regarded not as enormous but as
merely convenient. On these grounds, it would bereasonable to choose the former approach and to
introduce restrictions on multiple-multiple
dependent claims in Japan, like in the U.S. andChina, from the perspective of global patentacquisition.
On the other hand, regarding the treatment ofunity, the systems in Japan, Europe, China andSouth Korea emulate the PCT, while the U.S.
system is different from the PCT and is capable of
imposing the restriction requirement and theelection requirement. In this respect, many
respondents pointed out problems in the domestic
questionnaire survey, the domestic interview
survey and the foreign interview survey.
Therefore,
to
carry
out
international
harmonization from the perspective of unity, thelatter approach should be taken. In other words,
the U.S. should bring its system in line with the
PCT, like the systems of Japan, Europe, China andSouth Korea.

Regarding the two-part form, which is one ofthe description forms of claims, it would bedesirable to pursue international harmonizationfrom the perspective of whether the preamble
part can be regarded as prior art or not. Regarding
Markush-type claims, some people are concerned
about such problems as limited interpretation inconnection with embodiments. Therefore,
harmonization of disclosure requirements fordescriptions would be necessary.
Moreover, with regard to China's restrictions
on the dependence on multiple independentclaims and the EPO's restrictions on the numberof independent claims within the same category,
the relaxation of those restrictions would bedesirable.
In the pharmaceutical and chemical fields, inparticular, it is necessary to discuss international
harmonization of the handling of the subject
matters eligible for patent protection. The
necessity for international harmonization was
already pointed out in a past research project. We
hope that specific measures will be taken withregard to this issue.
It would be desirable to promoteinternational harmonization of the judgment
criteria and method for novelty and inventive stepand the judgment criteria for the support
requirement by narrowing the difference injudgment between countries, not at the level oflaws and regulations but at the level ofoperational practices.
(Senior Researcher : Shuichi TAMURA)

Regarding
the
items
other
than
multiple-multiple dependent claims and unity, it
may be summarized as follows.
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