8 Interpretation of Claim in Determining Patentability (*)
In this research study, domestic interview surveys and foreign questionnaire surveys were conducted withforeign intellectual property offices and patent firms as well as with Japanese companies and patent agents for the
purpose of identifying any possible areas of improvement in the Japanese operations, particularly regarding theinterpretation of claims in determining patentability of an invention through comparison with other countries, i.e.,the United States, Europe, China, and South Korea, by mainly focusing on laws and regulations and examination
guidelines.
Surveys were mainly conducted on the following five themes: (i) Consideration of the Definitions of Terms
Used in the Description; (ii) Claims Described by Functions or Characteristics, etc.; (iii) Usage Claims; (iv)
Product-by-Process Claims; and (v) Sub-combination Claims.
The Japanese method of interpreting claims was evaluated and examined through research on the state ofoperation in Japan and comparative reviews on the method of interpreting claims and the underlying concept andbackground of major countries.
This research study was conducted with an aim to prepare basic materials that would contribute toimproving the interpretation of claims in Japan and defining Japan’s position in the discussion on international
harmonization of the system. This shall be accomplished by using survey results to evaluate the method ofinterpretation of claims used in Japan.

I

Introduction

1

Purpose of this Research Study

Interpretation of claims, which serves as thebasis for determining patentability, should beappropriate to performing examinations that suitthe purpose of the Patent Act.
The decision on whether or not claims wereinterpreted in an appropriate manner should, inprinciple, be made based on the Japanese patent
system, the purpose thereof as well as the leadingcases. Yet, in light of recent globalization inpatent filings and lively discussions on theharmonization of international systems, it isnecessary to sufficiently grasp the method ofinterpreting claims used by foreign countries andthe underlying concept thereof, and to further
examine the appropriate way to interpret claims
in Japan with reference to these concepts.
As a result of the recent comparative studies
made on laws and regulations and examination
guidelines by the three patent offices of Japan, theUnited States and Europe, or the five patentoffices of Japan, the United States, Europe, China
and South Korea, it has been clarified that someof these countries have different practices fromJapan under laws and regulations or examination
guidelines with respect to the underlying concept
of consideration of the definition of terms used in
descriptions and the method of interpretingclaims described by functions or characteristics,
etc. or usage claims. With respect to the methodof interpreting claims, there exist issues to be
examined for each specific technical field, i.e.,
claims described by functions or characteristics,
etc. or usage (such as claims with limitation ofuse for medicinal invention), or claims for
IT-related
inventions(generally
calledsub-combination claims).
Therefore, in this research study, theapproaches to the following five themes in thespecific
fieldswere
also
covered:(i)
Consideration of the Definitions of Terms Used in
the Description; (ii) Claims Described by
Functions or Characteristics, etc.; (iii) Usage
Claims; (iv) Product-by-Process Claims; and (v)Sub-combination Claims. Moreover, the past
operations made in Japan were examined and themethod of interpretation of claims made in Japanwas evaluated through comparative reviews on
the method of interpretation of claims and theunderlying concepts and backgrounds of majorcountries. This research study was conductedwith an aim to prepare basic materials that would
contribute to improving the interpretation ofclaims in Japan and defining Japan’s position in
the discussion on international harmonization of
the system. This shall be accomplished by using
survey results to evaluate the method ofinterpretation of claims used in Japan.

(*) This is a summary of a FY2012 JPO-commissioned research report on the issues related to the industrial propertysystems.
●

IIP Bulletin 2013 Vol.22

1 ●Ⅱ Consideration of the Definitionof Terms Used in the Description
1

Operations in Japan

In Japan, statements of claims areinterpreted as they are to identify the claimed
invention, if they are clear themselves. Provided
that if the terms used in the claims are defined or
explained in the description, etc., such definition
or explanation shall be taken into consideration.
When the claimed invention is not specific evenwhen considering the statements in thedescription,etc.
andtechnical
commonknowledge at the time of filing, such claimed
invention shall not be identified.
The claimed invention is not identified by
the statements in the description or drawings
alone without analyzing the claims.
2

Operations in the United States

In the United States, the terms used in theclaims are examined with the broadest
interpretation. Terms should consistently be usedwith their ordinary meaning throughout thedescription, and when the terms are used with a
specific meaning, definitions are required.
When the special meaning assigned to theterm used in the claim is stated in the description
clearly enough for a person skilled in the art tounderstand the difference between the ordinary
meaning and special meaning, such special
meaning shall be taken into consideration wheninterpreting the claim.
3

5

Operations in South Korea

In South Korea, where the statements ofclaims are clear, the invention shall be identified
as stated in the claims, and shall not beinterpreted in a limited manner based on thedetailed explanation of the invention orstatements in the drawings. When the terms
stated in the claim are explicitly defined in aclearly understandable manner, such terms shallbe interpreted as having this special meaning.
Where the meaning of a term stated in theclaim is not clear, it shall be considered whether
or not it is possible to identify the invention bytaking into consideration the description andtechnical common knowledge at the time of filing.
6

Comparison of the Operations of theCountries

Operations in Europe

In Europe, except in specific cases where itis mentioned that a term has a special meaning by
the definition clearly stated in the description, theterm is interpreted as holding the ordinary
meaning and scope in the relevant technical field.
Where the term has this special meaning, claims
shall be required to be amended to make themeaning of the term solely clear from thewording used in the claims to the greatest extent
possible.
4contents and mechanism shall be grasped, andfinally, the ordinary meaning of the term used in
the claim shall be comprehended.
When the ordinary meaning of the term in
the claim is consistent with the statements in thedescription, such term is understood as is; andwhen a special definition is provided in thedescription, the terms shall be understood in
accordance with the definition in the description.
When the meaning of the claim is not clear fromthe claim alone, the claim shall be understood bytaking into consideration the statements provided
in the description and drawings. When themeaning of such claim still cannot be understood,
the use of examination and dictionaries shall beconsidered.

Operations in China

In China, both examinations and trials are
conducted mainly in accordance with the
Examination Guidelines. First, the claim as awhole shall be sufficiently examined, and then the●With regard to the interpretation of theterms stated in a claim, if the statements of theclaim are clear, the meaning of a term stated in
the claims is understood to have its ordinary
meaning and the claimed invention shall beidentified as stated in the claims, in Japan, Europe,
China and South Korea. Meanwhile, in the UnitedStates, a "broadest reasonable interpretationconsistent with the description" shall be made.
In Japan, where the statements in the claims
are not clear per se, there shall be an examination
to determine whether the terms used in a claim
are defined or explained in the description or
drawings, and such terms used in a claim shall beinterpreted by taking into consideration thedefinition or explanation based on the technicalcommon knowledge as of the filing. In South
Korea, where the meaning of the relevant term is
2 ●IIP Bulletin 2013 Vol.22

explicitly defined to hold a meaning different fromits ordinary meaning, which may be recognized in
the relevant technical field, in a manner clearly
understandable for persons ordinarily skilled in
the art, such term shall be interpreted as having
this specific meaning. In Europe and China,
amendments of claims are required to clarify themeaning of the terms from the wording of claims
alone to the greatest extent possible.
Meanwhile, in every office of Japan, theUnited States, Europe, China, and South Korea,
there have been cases in which the terms of theclaim were interpreted broadly at the examination
stage but were then interpreted narrowly basedon the content of the invention at the stage of
exercising rights. Users were of the opinion thatwhile there is no major difference between the
countries with respect to taking into
consideration the description in interpreting theclaims, there are variations due to differences in
examiners or technical fields.

Ⅲ Claims Described by Function
or Characteristic
1

Operations in Japan

In Japan, statements in claims in which
products are defined by function or characteristic
are allowed as one of the claim styles.
In determining novelty, unless it should beinterpreted as having a different meaning orcontent, such statements shall, in principle, beinterpreted as representing all products that havethe functions or characteristics. Yet, some patentapplicants, etc. have stated that while it would beless problematic for claims to be described in
combination with the structure, when claims aredescribed broadly by function or characteristic
alone, the relationship between the wording of
the claim and the working example stated in thedescription should be clarified. Moreover, when
only a small number of working examples isprovided and the wording of the claim isexpressed solely in a generic concept (thefunction), a notice of reasons for refusal may be
given to restrict the claim in accordance with theworking example.
In determining whether or not an
infringement took place, as the technical scope ofprotection of a claim described by function or
characteristic may be restrictively interpreted inaccordance with the working example, patentapplicants have recently tended to avoid
describing claims solely by function or●

IIP Bulletin 2013 Vol.22

characteristic. Instead, they have specificallystated the structures, etc. As a result,problematic cases have not been so heard in thedomestic interview surveys.
2

Operations in the United States

In the United States, pursuant to theprovision of Article 112(f) of the Patent Laws,
separatestatements
are
made
for
means-plus-function claims and other ordinary
functional claims in the Manual of Patent
Examining Procedure (MPEP). While ordinary
functional claims should comply with Article
112(f) of the Patent Laws, means-plus-function
claims are interpreted restrictively based on theworking examples stated in the description andthe equivalents thereof both in determining thevalidity of a patent in the examination and theexistence of any infringement in an infringement
suit. As this approach would also apply tomeans-plus-function claims using non-structural
terms instead of typical wording, "means for…" or"step for…," the boundary between ordinary
functional claims and means–plus-function claims
seems to be fuzzy.
Asmeans–plus-function
claimsarerestrictively interpreted when determining theexistence of any infringement, many patentapplicants seem to prepare claims with due careby combining the limitation on structure in suchclaims. Yet, some applicants have stated thatmeans-plus-function claims are not completely
excluded from the options and are used knowingthat they would be restrictively interpreted inaccordance with Article 112(f) of the Patent Laws.
Moreover, some have said in the interview
surveys that although it is provided for that suchclaims shall be examined in accordance with
Article 112(f) of the Patent Laws in theexamination, in practice, this restrictive
interpretation is not necessarily made and thebroadest reasonable interpretation is given, aswith the case of other claims.
3

Operations in Europe

In the past, it was difficult for the European
Patent Office (EPO) to allow functional claims.
However, in recent practices, the EPO has
allowed computer-implemented inventions whose
claims are often described in functional
expressions, and, for the most part, it has come toallow functional claims for inventions other thancomputer-implemented inventions. Functional
3 ●claims are interpreted to include all the productsthat have the relevant function, as far as a person
skilled in the art could easily provide the means
to perform the function without using inventive
skills.
4

Operations in China

In China, the Examination Guidelines statethat functional claims can only be used when it ismore appropriate to describe claims by functional
characteristics than by structural characteristics,
and should be avoided for product claims. Yet,because the scope of a functional claim shall beinterpreted as covering every working example
that can achieve the relevant function, if therelevant functional claim includes (in addition to
the working examples stated in the description)
any working example that does not achieve therelevant function or solve the technical problem
and provide the technical effect, such functional
claim would not be allowed. In determining
novelty, the structure implied by the functional
claim and the structure of prior arts shall becompared.
However, pursuant to Article 4 of the judicial
interpretation issued by the Supreme People's
Court of the People's Republic of China withrespect to patent infringement cases in 2009,
functional claims are interpreted restrictively
based on the working examples stated in thedescription and the equivalents thereof. Although
this approach is to be applied in determining thevalidity of a patent, because the Examination
Guidelines remain unrevised as above, it seems
that determinations are still made based on both
approaches in actual cases.
5

Operations in South Korea

In South Korea, functional claims are
generally allowed. Unless definitions are
explicitly made in the detailed explanation of theinvention to assign a special meaning, such claim
shall, in principle, be interpreted as representing
all the products that have the relevant functions
or characteristics.
6

Comparison
Countries

ofOperations

of

the

In all five countries mentioned above,statements in claims in which products aredefined by functions or characteristics areallowed as one of the claim styles.
●

In Japan, Europe, China and South Korea,
where a claim contains statements to define
products by function or characteristic, such claim
shall, in principle, be interpreted as meaning all of
the products that have the relevant function or
characteristic.
On the other hand, in the United States,
functional claims described in the style ofmeans-plus-function claims shall be interpreted
restrictively based on the working examples
stated in the description and the equivalents
thereof (Article 112 (f) of the U.S. Patent Laws).
In Japan, where the functions or
characteristics stated in a claim that includes astatement defining products by function or
characteristic are uncommon or not commonlyused in the relevant technical field, the productsof the claimed invention and those of the citedinventions shall not be compared to find exact
corresponding or differing points in determining
novelty. Yet, if the examiner has reasonable doubtthat the two inventions are identical, he/she shallsend a notice of reasons for refusal for lack ofnovelty, unless any difference is found in othersections.
In the United States and China, the relevantclaim shall be compared with prior art by taking
into consideration the structure and composition
impliedbytherelevant
functionsorcharacteristics, etc. If no difference is foundbetween the claim and prior art in terms of thestructure or composition, etc., novelty is denied.
In patent infringement suits in all of the fivecountries mentioned above, the scope of rights ofthe claim shall be interpreted in a restrictive
manner by taking into consideration thestatements in the description, such as theworking examples.
In response to the fact that claims including
statements to define products by function or
characteristic may be restrictively interpreted indetermining the existence of any infringement inevery country, the applicants avoid usage claims
described solely by function or characteristic.
Rather, they specifically state the structure, etc.
in such claims. Accordingly, many applicants havesaid that there have not been very many
problematic cases in practice.

Ⅳ Usage Claims
1

Operations in Japan

A use invention is an invention based on theuse according to the product's attribute, and it
4 ●IIP Bulletin 2013 Vol.22

may be deemed to be an invention of "pureprocess." However, in Japan, such invention isregarded as an "invention of product," including
the fact that it is adapted for use. "Medicinal
inventions" are described by special usage claims.
"Limitation of use" refers to the act ofdefining products by the use thereof. It is
understood that a product with limitation of use,which is specially adapted for the relevant use, isthe product that provides the structures, etc.
defined by the limitation of use
When the structures, etc. defined by thelimitation of use are recognized to be different,
the claimed invention and cited invention are
considered to be different inventions.
Generally, a "use invention" is interpreted to
be an invention based on the discovery of an
unknown attribute of a product and finding of the
product's adaptability of novel use.
When the claimed invention provides alimitation of use in the claims and is considered to
be an invention based on the discovery of an
unknown attribute of a product and finding of the
product's adaptability for novel use derived fromthe attribute, it is appropriate to analyze suchinvention from the additional aspect of thelimitation of use, since the limitation of use may
define the claimed invention. Accordingly, theclaimed invention could be novel as a use
invention even if the product per se is alreadyknown.
2

Operations in the United States

In the United States, where there are any
statements in the claims to define a product by its
use, if such statement simply refers to theobjective of the relevant invention or intended
use rather than providing a clear definition on any
limitation on the claimed invention, the statementof such use shall not be deemed to be a limitationof the invention and shall not be taken into
consideration in interpreting the claim.
On the other hand, the discovery of a newuse of a known product based on the unknown
characteristic thereof may be patentable as amethod of use, and thus a usage claim for an
invention of product may be patentable.
In addition, medicinal usage claims would not
be given special treatments and would beinterpreted in the same manner as other uses.
3

Operations in Europe
In Europe, when there are any statements in●

IIP Bulletin 2013 Vol.22

the claim to define a product by its use, suchproduct is, in principle, understood to be a
product that is actually adapted to such use.
However, it is provided that, in the case of
publicly known products, even if the use thereof
is not stated in the relevant claim, if the productis in fact equipped with a mode adapted for a use
previously stated in other cases, the novelty of
the claimed invention shall be denied.
On the other hand, in the case of medicinal
inventions, even if the product per se is publicly
known, products used for the medicinal use
stated in the claim could be novel.
4

Operations in China

In China, product claims including limitationof use are examined based on the impact thatsuch limitation of use may have on the productitself. Therefore, if the limitation of use has any
impact on the structure of the product itself orcharacteristics inherent in such product, such use
shall be taken into consideration in determining
novelty. On the other hand, if the limitation of use
has no impact on the product itself and is a simple
description of the use or usage of the product,such use shall have no role to play in determining
novelty.
In the case of medicinal inventions, if therelevant use leads to any difference in the
structure of the medicine with respect to priorarts, novelty may be found; but if there is no such
structural difference, novelty shall be denied.
Provided, a second medicinal use invention may
be allowed by using claims that are generally
called Swiss-type claims.
5

Operations in South Korea

In South Korea, where any statements arecontained in the claims to define a product by its
use, such product is understood as solely
referring to one that is specially adapted for suchuse.
Moreover, medicinal inventions may be novel
if the use differs.
6

Comparison
Countries

ofOperations

of

the

In all five countries mentioned above,statements in a claim to define a product by its
use are allowed as one of the claim styles.
(i) With respect to an invention with limitationof use, in every country mentioned above, if
5 ●there are any statements to define a productby its use (limitation of use), the significancethat such limitation of use may have in
defining the structure or composition of the
product shall be considered, and suchproduct shall be understood as a productadapted for such use.
(ii) With respect to use inventions in Japan andSouth Korea, even if the product defined byuse is already known per se, such productmay be found novel as a use invention
because of the limitation of medicinal use.
However, with respect to second use
inventions for food, there is a difference
between Japan and South Korea in how they
are handled. While second use inventions forfood are denied novelty for not providing any
new use in Japan, they can possibly be foundto have novelty in South Korea because theuse of limiting the food shall be taken into
consideration as one of the constituent
features.
In Europe, only medicinal inventions
intended to define products by medicinal use arefound novel as a second medicinal use invention
even if the product per se is already known.
In contrast to these practices, in China, even
if the relevant invention is a medicinal invention,
if no change is found in the structure and/or
composition of the product by the limitation ofuse, the novelty of such invention is denied.
However, inventions on second medicinal use canpossibly be protected by using a claim generally
called the Swiss-type claim ("use of a substancefor the manufacture of a medicament fortreatment of a disease").
Meanwhile, in the United States, when there
are any statements in a claim to define a productby its use, if such statement simply refers to theobjective of the relevant invention or intended
use instead of providing a clear definition on any
limitation of the claimed invention, suchstatement of limitation shall not be deemed to bea limitation of invention and shall not be taken
into consideration in interpreting the claim. Yet, adiscovery of a new use of a known product basedon an unknown characteristic thereof may bepatentable as a method of use, and thus a usage
claim for an invention of a product may be foundpatentable. In addition, in the United States, as
medicinal use is not given special treatment andis interpreted in the same manner as other uses,
claims should be stated by including the process,such as the treatment method.
The interview surveys conducted with●respect to use inventions in Japan, the UnitedStates, and Europe showed that, although theform of claims for a patent may differ, theapplicants felt no special disparity in theexamination practices or exercise of rights.

Ⅴ Product-by-Process Claims
1

Operations in Japan

In the Japanese examination practices,
product-by-process claims are, in principle,
understood to mean definitions that represent
products per se gained as final products, unlessthey should be interpreted as having different
meanings or contents. A theory generally known
as the product identity theory is adopted.
However, in the judgment of the Grand Panelof the Intellectual Property High Court renderedin the case concerning pravastatin sodium on
January 27, 2012, it was held that, in identifying
the technical scope of a product-by-process claim
and the summary of the invention in a request fora trial for patent invalidation, an authentic
product-by-process claim shall be interpreted
based on the product identity theory, while anunauthentic product-by-process claim shall beinterpreted based on the manufacturing process
limitation theory.
2

Operations in the United States

In the United States, product-by-process
claims are not interpreted as being limited to thestated manipulative steps but as being limited
solely by the structure implicitly defined by such
steps, which means that the product identity
theory is adopted. Therefore, the determinationof the patentability of a product-by-process claim
is based on the product per se. Moreover, because
the patentability of a product is not dependent on
the manufacturing process, if the product in the
product-by-process claim is the same as or
obvious from a product of a prior art, the claim is
unpatentable even though the prior product was
manufactured by a different process.
This approach has long been supported in
the leading cases in the Court of Appeals for theFederal Circuit in the United States.
3

Operations in Europe

In Europe, a product-by process claim is
recognized as a definition of the product itself,
which means that the product identity theory is
6 ●IIP Bulletin 2013 Vol.22

also adopted. Specifically, a product is patented
only where the product itself satisfies therequirements of patentability, especially novelty
and inventive steps; and a product would not be
novel by the mere fact that it has been
manufactured by a new process.
4

6

Operations in China

In China, a product-by process claim is also
recognized as a definition of the product itself;
the product identity theory is adopted. In otherwords,
iftheprocess
claimedinaproduct-by-process claim does not provide any
special structure or composition to the product,
and the final product is identical despite thedifference in the process, novelty is denied.
Even where the claim of a product is definedby the characteristics of the process, the subject
matter of the claim remains to be the product.
Thus, the actual definitive effect that thecharacteristics of the process have shall be
determined based on the impact that suchcharacteristics may have on the claimed productper se; and the examiner shall take into
consideration whether or not the characteristicsof the manufacturing process produce both oreither the specific structure and/or composition ofsuch product.
In addition, where the relevant product is
indistinguishable from publicly known products,
the burden of proof regarding novelty, etc. lies
with the applicant.
5

In this case, only the invention defined as a
product by the statements in such claim shall becompared with inventions publicly known prior to
the filing.

In South Korea, in principle, themanufacturing process is not taken into
consideration
wheninterpretingaproduct-by-process claim, but rather thepatentability of the product itself is examined.
This means that claims are interpreted based on
the product identity theory. Unless there are
special circumstances, claims for an invention of a
product are required to be stated in a way that
directly specifies the structure of the product thatis the subject matter of the invention. Thus, even
where the manufacturing process of the relevant
product is stated in the claims for the invention of
the product, unless there are special
circumstances that such product can only be
specified by its manufacturing process, it isunnecessary to take into consideration the
manufacturing process itself in determining thenovelty or inventive steps of the filed invention.
●

IIP Bulletin 2013 Vol.22

ofOperations

of

the

In all five countries mentioned above, aproduct-by-process claim is allowed as one of theclaim styles. Moreover, in the examination, aproduct-by-process claim is interpreted asmeaning the definition representing the final
product per se (product identity theory).
Among the five countries, while claims inpatent infringement suits are interpreted basedon the manufacturing process limitation theory in
the United States and China, such interpretation
is in principle made on the basis of the productidentity theory in Europe. No precedents were
found in the Supreme Court of Korea. Meanwhile,
in Japan, the product identity theory was adopted
in the judgment rendered by the Grand Panel ofthe Intellectual Property High Court in the caseconcerning pravastatin sodium.
In the interview surveys, many respondents
held that there is hardly any operational
difference in the abovementioned five countries
as the examination in such countries are carriedout based on the product identity theory.

Ⅵ Sub-combination Claims
1

Operations in South Korea

Comparison
Countries

Operations in Japan

In Japan, sub-combination claims are widelyused. The Examination Guidelines for ordinary
claims are applied to sub-combination claims in
the examination, and when a claim contains any
function or characteristic as a result of any
statement concerning a sub-combination includedin
another
sub-combination
claim,
theexamination guidelines for functional claims areapplied and the statements concerning the
sub-combination shall be taken into consideration.
However, if the other sub-combination claim itself
is no different from prior art, novelty is denied.
2

Operations in the United States

In the United States, while sub-combination
claims are mentioned in the examining guidelines
in relation to determining the unity of inventions,no special treatments for such claims are
mentioned in the examining guidelines with
7 ●

respect to the description requirements anddetermination of novelty or inventive step; andthus such claims shall be interpreted in the samemanner as ordinary claims.
3

Operations in Europe

While the EPO explicitly allows applicants todescribe inventions by a sub-combination claim in
its Guidelines for Examinations, Part F, 4,14 and
4,15, it is required that such sub-combination
claim is stated in a manner clearly understandable
that the claim covers a sub-combination and not a
combination.
4

Operations in China

In China, sub-combination claims are allowed
as one of the claim styles. In the examination,
examination guidelines for ordinary claims areapplied to such sub-combination claims, andwhere there are any statements concerning a
sub-combination in another sub-combination
claim, examination shall be carried out by taking
into consideration the characteristic of thefirst-mentioned sub-combination. Yet, the subject
matter to be protected is such othersub-combination.
5

general concepts stated in the examination
guidelines in all countries.
Based on the results of the interview
surveys and methods used by the countries tointerpret the preamble parts of the claims, thefollowing
perspective
clarifiedfortheinterpretation of sub-combination claims in the
JPO's publication, "Application of Examination
Guidelines on an Invention of a Product Definedby the Statements Concerning the Main Device inwhich the Product Should Be Installed (Cartridge
Invention)" seems to be generally shared by all of
the countries: "As a cartridge invention is aninventionof'cartridge,'
thestatements
concerning the main device in which the cartridge
should be installed shall be interpreted as mattersto define the relevant invention as an invention of
cartridge in terms of the shape, structure, effect,function, method, use, etc."
Yet, there is a difference between the
countries with respect to the interpretation ofclaims expressed by functions or characteristics
or usage claims, and thus, sub-combination claims
could also be interpreted differently.
(Senior Researcher: Takayuki TONDA)

Operations in South Korea

In South Korea, sub-combination claims arealso allowed as one of the claim styles. In theinterpretation of claims in the examination,
ordinary examination guidelines are applied.
If the relevant claim is defined by functions
or characteristics as a result of any statements
concerning
another
sub-combination,theexamination guidelines for functional claims shallbe applied and the statement of the othersub-combination shall be taken into consideration.
However, if the sub-combination stated in theclaim is in itself no different from prior art,
novelty shall be denied.
6

Comparison
Countries

ofOperations

of

the

In all of the five countries mentioned above,
sub-combination claims are allowed as one of theclaim styles.
Meanwhile, because no country has special
provisions in the examination guidelines for theinterpretation of sub-combination claims, suchinterpretation seems to be made by applying the●

8 ●IIP Bulletin 2013 Vol.22