10 Strategic Drafting of Applications for U.S. Patents by
Japanese Companies from an Enforcement Perspective
It has become more and more important for Japanese companies to obtain patents in Europe and theUnited States, in order to keep competitive in the world. In the United States in particular, the validity and thescope of the right of a patent is judged by a court, so in order to make use of a patent right, one must not only
register the right with the USPTO, but also be able to fully claim the right in court.
In this report, about 100 U.S. patents owned by Japanese companies were analyzed to study whether or not
the descriptions of their patent claims and specifications would be sufficient for claiming due rights in court,
and the points that should be noted upon filing were indicated.
As a result, various problems came to light, including the fact that the specifications had not been draftedwith consideration given to the recent trend of the Court of Appeals for the Federal Circuit (CAFC) to interpretpatent claims narrowly based on the descriptions of the specification, as well as the lack of effort to make thespecification easy to understand for the jury and judges.
With the aim of remedying such problems, guidelines of the matters that should be described in therespective parts of a U.S. patent specification, and a checklist for drafting an application for a U.S. patent basedon a Japanese original specification were created.

Ⅰ Background of the study

Ⅱ Patent analysis method

Every year, Japanese companies acquireapproximately 30,000 patents in the United States,
accounting for about 20% of the annual number ofU.S. patents registered. Japanese companies
acquire the highest number of patents in the UnitedStates among non-U.S. companies, far exceeding
the 10,000 or so patents acquired by German
companies, which boast the second largest number.
In terms of enforcement, however, concerns havebeen reported as to Japanese companies’ ability tosuccessfully claim rights in U.S. courts based on
their patents. These reports indicate the following
points of concern:(A) Are Japanese companies aware of the recent
trend of the Court of Appeals for the Federal Circuit(CAFC) to make the narrowest possible
interpretation of the scope of right from the mattersstated in the specification, and do they make efforts
to avoid drafting patents in such a way that makes
the invention interpreted more narrowly than theliteral patent claims?
(B) Do Japanese companies make efforts to makethe technical content of the specification easy tounderstand for the jury and judges who would be in
the position to read the specification in litigation?
To clarify the actual situation, approximately
100 U.S. patents owned by Japanese companies
were selected, and empirical analysis was
conducted on the problems of specification drafting
indicated above. In addition, problems in theformality areas of specification drafting wereanalyzed on the basis of findings in the recent trendof case law, and countermeasures were considered.

1

IIP Bulletin 2003

Analyzed samples

A total of 98 patent samples were analyzed. Of
these, 66 were recently issued U.S. patents ofJapanese companies, and 32 were U.S. patents
based on which Japanese companies brought
infringement actions before federal district courts
over the past few years.
With regard to their technical fields, 20 were in
the chemical field, 41 were in the mechanical field,
23 were in the electric field, and 14 were in thesoftware field.
2

Analysis method

The
U.S.
patentspecifications,thecorresponding Japanese specification if necessary,and also the status of the related applications wereanalyzed with respect to various points that should
be noted upon filing a patent application in the
United States.

Ⅲ
1

Resultsofreviewingthespecifications and patent claims

Overall results
The samples were categorized by the technicalfield, the filing route (PCT, the Paris Convention
route, etc.), whether the patent was made subject
to litigation in the United States, and other factors
to study any differences in the results of the review.
However, no characteristics were found bytechnical field, while no differences were foundbetween patents that were made subject to● 76 ●

litigation and those that were not.
Problems that were pointed out for more than
30% of all samples extended to many areas asfollows:a) Improperly Listed Reference (lack of an
appropriate information disclosure statement (IDS))b) Abstract (use of language not contained in thepatent claims; and inclusion of careless limiting
expressions)c) Background of the Invention (unnecessary
inclusion of characteristics of the invention; failure
to give an easy-to-understand explanation of thesubject matter of the invention; lack of use ofdrawings for explaining prior art; and use ofnegative expressions for prior art)d) Summary of Invention (excessively detailed
description of the purpose of invention; and use oflanguage not contained in the patent claims andlanguage that limits the scope of the invention)e) Brief Description of the Drawings (lack of
express indication that the drawings merely show
one working example of the invention)f) Detailed Description (lack of description of thepossibility of other constitutions of the invention)g) Claims (using a single type of claim fordescribing the invention; improper antecedent basis,etc.)
In contrast, problems that were pointed out forless than 10% of all samples were only in two areas:
Jepson claims; and lack of description ofsubstituents, etc. in chemical specifications.
2

Analysis of the actual problematiccases and solutions(1) Improperly Listed Reference(i) Actual problematic cases and the impact on
enforcement
These are cases in which the documents citedas prior art documents in the specification are notlisted at the reference part on the front page of the
Official Patent Gazette. In other words, theapplicant is likely to have considered it sufficient tospecify the published application numbers or the
like of the prior art patents in the specification, andneglected submission of an information disclosurestatement (IDS). However, such an explanation
would be insufficient in many cases.
In the United States, the applicant is obligatedto disclose all information “material topatentability” of the invention in the form of an IDS.
There is a strict, established system to disclose
information on prior art documents. If one neglects
this disclosure obligation under this system, there
would be a risk of not being able to enforce thepatent in later infringement litigation on the groundof violation of the disclosure obligation.
(ｉｉ) Cause of the problem and the solution
The cause of this problem may be themisunderstanding of Japanese companies that theprior art documents cited in the specification do notneed to be submitted as an IDS, but only the priorart documents not cited in the specification must be
submitted as an IDS.
It is important to make sure to submit theprior documents cited in the specification as an
IDS.
(2) Abstract(ｉ) Actual problematic cases and the impact on
enforcement
Observed among the samples were: cases inwhich the description in the Abstract was narrowerin scope than the patent claims; cases in which the
Abstract included the purpose, advantageous
effects, and use of the invention; and cases in which
the Abstract described an invention of a content(category) different from the patent claims.
Although the Code of Federal Regulations(CFR) provides that the Abstract of a patent should
not be used for interpreting the scope of the claims,
the CAFC ruled a few years ago that the Abstract
may serve as the basis for limiting the scope of theclaims under certain conditions (the Hill-Rom
decision).
It is not quite clear whether or not theHill-Rom decision would be sufficient to generalizethat “the description of the Abstract can become
the basis for limiting interpretation of the claims.”
However, as long as there is the “possibility” forthe Abstract to limit the interpretation of the claims,
it would be necessary to avoid describing the
Abstract in the way that has been pointed out in thereview.
(ｉｉ) Cause of the problem and the solution
The major part of the cause would be thatJapanese companies are not attaching sufficientimportance to the Abstract in filing a U.S. patentapplication, and are using a direct translation of theabstract of the Japanese patent application whenfiling a U.S. application.
When drafting a U.S. patent specification, care
must
be
taken
to
avoid
includingmore-than-necessary, detailed information to avert
any risks. The safest measure to this end would be
to simply use the language of an independent claim(either in whole or in part) in 100 to 150 words.
(3) Background of the Invention(i) Actual problematic cases and the impact on
enforcementc Such problems were observed as describing
the characterizing portions of the invention or
explaining the mode of operation or use of theinvention that is not disclosed in the claims in the
Field of the Invention.
The reviewed U.S. patent specifications
included many cases that not only exemplified thefield of technology, but also mentioned the key
points of the “novelty and non-obviousness” of theinvention. Since the Field of the Invention
constitutes a part of the Background of the● 77 ●IIP Bulletin 2003

Invention, the inventor could be regarded as
acknowledging the fact that the characterizing
portions of the invention had been publicly known,
if the characteristic portions disclosed in the claims
were included in the Field of the Invention.
d There were cases in which the description in
the Background of the Invention was either
excessively long and complicated (seven columns)
or extremely simple without indicating any specificprior art.
Such excessively redundant, insufficient, or
irregular description of background art hinders theexaminerfromgaininganappropriate
understanding of the invention in the examination
phase. Furthermore, it may make it difficult
particularly for the jury (who are not technicalexperts) to understand the invention in theenforcement phase.
e In some cases, the problems of the prior art
were overly emphasized or negatively expressed in
the Description of the Related Art; for example,
stating “it is impossible to prevent a shock upon
deceleration” for the conventional control system.
Such an assertive expression may invite anarrower interpretation that a technology would not
fall under the scope of the invention unless it
makes a notable improvement of this point in theprior art. This could be disadvantageous for claim
interpretation in court proceedings.
(ii) Cause of the problem and the solutionc Providing an easy-to-understand explanation of
the prior art (using drawings, etc.)
Background art of an invention should be
described in the specification in a form that is easy
to understand for those who are not skilled in theart.
The
importanceofprovidingan“easy-to-understand” description is obvious whenassuming a situation of having the judges as well as
the jury chosen from the general public, who are
not technical experts, understand the invention at
the time of enforcement.
One of the means of providing an“easy-to-understand” explanation of the prior art ina field in which the structure of the invention canbe illustrated by drawings would be to use drawings
for explaining the prior art. A typical field would be
the machine field. However, among the 41 samples
in the machine field that were reviewed, “a lack ofdrawings for explaining the prior art” was pointed
out for 28 samples, which accounted for the
majority. Thus, more consideration is required inthis respect.
d Problem in negatively expressing the prior art
This check item was selected from theconcern that indication of the problems of the priorart could automatically lead to a narrowerinterpretation of the patent claims. Since the[Problem to be Solved] is usually described in a
Japanese specification, the “problems of the priorart” are often described in the corresponding

IIP Bulletin 2003

English language specification in some form.
In addition, by mentioning multiple problemsof the prior art and asserting that they were
problematic on the whole, it could invite a narrowerinterpretation such that a technology does not fallwithin the scope of the invention unless it makes
improvements of all those problems over the priorart.
As a result of the review, the great majority ofthe patent samples were found to be using some
negative expression for the prior art, such as
frequent use of “impossible to” or “cannot.”Since even the matters mentioned as the
purpose of the invention could become the basis ofa narrower interpretation of the patent claims as
discussed later, it is essential to express nothingelse but the prior art.
(4) Summary of the Invention(ｉ) Actual problematic cases and the impact on
enforcementc As a result of the review, only about 60% of all
samples managed to track the claims in describing
the Summary of the Invention.
Recently, the CAFC is reported to have thetendency of interpreting the claims narrowly basedon the individual descriptions of the specification.
Therefore, if the descriptions of the Summary of
the Invention (particularly the part on theconstitution of the invention that corresponds tothe claims) do not coincide with the language of theclaims, those descriptions may well serve as thebasis of a narrower interpretation of the claims.
d Most of the patent samples contained somedescription of the “purpose” of the invention,
including those that indirectly mentioned the
purpose, in the Summary of the Invention.
Description of the purpose of the invention in theSummary of the Invention is liable to invite anarrower interpretation of the claims by the court.
(ｉｉ) Cause of the problem and the solutionc Problem of describing the purpose of theinvention
In the case of a Japanese patent application,
the story of the overall specification tends to be
written based on the “purpose” (problem to besolved) in order to explain the invention. Thus, it israther natural that such tendency also shows in the
U.S. patent specifications of Japanese companies atpresent.
If the purpose of the invention were notdescribed, the relationship between the prior art
and the invention could become ambiguous in casesof certain technologies, and the specification may
fail to win a sufficient understanding on thetechnical significance of the invention as a result.
However, the tendency of excessively describing
the “purpose” is a problem.
d Since description of the “purpose of theinvention” is not required under the U.S. practice,such options as “not including any description of● 78 ●

the purpose of the invention” or “describing it as
one of the effects of an embodiment of theinvention,” which were proposed by a U.S. patentfirm this time, are very much worth considerationin order to eliminate the concern for a narrowerinterpretation. The specific approaches would be tooriginally exclude the purpose of the invention
when filing the basic Japanese application or to
exclude the relevant parts when translating theJapanese specification into English.
(5) Brief Description of Drawings(ｉ) Actual problematic cases and the impact on
enforcement
Of the 98 samples reviewed, 28 samples were
evaluated as using “expressions that would narrow
the scope of the invention” in the Brief Descriptionof Drawings, which was an unexpectedly large
number.
Case 1: The Brief Description of Drawings
included the expression, “...according to thepresent invention.” This could invite a narrowerinterpretation in that the drawings indicate “theinvention” instead of “an embodiment of theinvention,” and that any mode that is substantiallydifferent from the drawings would be outside thescope of the invention.
Case 2: The content of the Brief Description ofDrawings lacked consistency. Specifically, it
included multiple expressions clearly indicatingthat the explanation was about an embodiment,such as “...according to an (another) embodiment of
the present invention” and multiple expressions
that could be construed as an explanation of theinvention itself, such as “...according to the present
invention.”
Although the attachment of drawings makes it
easier for the reader to understand the content andcharacteristics of the invention in many cases, caremust be taken in writing the Brief Description ofDrawings, because it could become the basis for anarrower interpretation as in the examples above.
In particular, the direct expression “the present
invention...” would very likely be considered as anarrowing factor in claim interpretation.
(ｉｉ) Cause of the problem and the solution
The cause of the problem will be studied forthe individual cases. In Case 1, the expression usedin the corresponding Japanese specification was“hon-hatsumeinikakaru(...zudearu)”(drawings...relating to the present invention), andthe direct translation of this expression was likely
to have been used. In Case 2, the application had
declared multiple priority claims, and whencombining the content of the multiple Japanese
specifications and drafting a Japanese specification
as the basis for filing a U.S. application, theJapanese expressions were assumably inconsistent,
and direct translation of that specification is likely
to have resulted in such lack of consistency in theexpressions.

In order to prevent the claimed invention frombeing limited to the mode expressed by thedrawings, the fact that the drawings only illustrate
one working example of the invention should beclearly indicated. This could usually be achieved byusing the expression “embodiment” in thedescription of each drawing relating to theinvention.
(6) Detailed Description(ｉ) Actual problematic cases and the impact on
enforcementc The description rules for a U.S. specification
were not observed.
-The specification was not described in the U.S.
style, but a direct translation of the specification of
the Japanese application was likely to have beenused for the filing in the United States.
-The headings that are usually used in U.S.
specifications were not described.
In the two cases above, the U.S. specification
was assumably drafted by translating the “Detailed
Explanation of the Invention” in the Japanese
specification as the “Detailed Description.”-“Best Mode for Carrying Out the Invention”
was used as a subtitle in the specification.
This was because the direct translation of the
fixed heading for a PCT application, “Best mode forcarrying out the invention,” was used as it is in the
U.S. specification. However, one must note that the“best mode” under the PCT has a different legal
meaning from the “best mode” in a U.S. application.
d The descriptions failed to broadly support theimportant technical characteristics.
-Essentially only one concrete example isdescribed to support the broad claims.
-The one and only embodiment shown by thedrawings was explained in detail, but no alternative
working examples or possibility of otherconstitutions of the invention were suggested.
e Descriptions presenting alternative working
examples or suggesting the possibility of otherconstitutions of the invention were insufficient in adivisional application. This problem occurs when
dealing with a restriction requirement made on lackof unity of the invention. It was observed in a
relatively large number of samples in the review.
f The invention was not explained based on its
embodiment, but by such an expression as “thepresent invention will be...” Moreover, theinvention was expressed by an expression used in
the claims: “the present invention comprises...” Inother words, the invention was defined in theclaims and the specification by using the same
expressions, and no consideration was being given
to use different terms for the two.
In this case, the scope of the claims would
very likely be interpreted based on the statementsin the Detailed Description, and when such aninterpretation is made, the defense would be quitedifficult.

● 79 ●IIP Bulletin 2003

g Unlike the above, there were cases thatreceived only a few indications from U.S. attorneys
and were highly evaluated.
-The specification of the publication of theunexamined Japanese application was short andconcise, and the Detailed Description in the U.S.
patent specification was about 0.5 pages. The
specification was short, but as a whole, it wasdrafted in such a way that made it easy for thereader to understand the invention.
-When comparing the U.S. patent specificationand the publication of the unexamined Japaneseapplication, one could see that the latter has beendrafted with future filing of a U.S. application inmind and that sufficient considerations have been
made in translation.
(ｉｉ) Cause of the problem and the solutionc Compliance with the description style of a U.S.
specification
In many cases, direct translation of thespecification of the Japanese application was found
to result in descriptions that do not comply with thedescription rules of a U.S. specification. A positiveeffort should be made to satisfy the formality
requirements of the U.S. patent system, such as
appropriately complying with the format of a U.S.
patent specification, when drafting the specificationof the Japanese application or a specification to be
used for translation into English. Furthermore, if a
U.S. patent specification were drafted in Japaneseby paying attention to the content of description, its
direct English translation would sufficiently make a
U.S. specification of the prescribed quality.
d Requirements for supporting the important
technology
It is necessary to either indicate multiple
working examples or, if that cannot be achieved, atleast to suggest the possibility of otherembodiments of the invention. This would be
effective for preventing the invention from being
interpreted narrowly and restricted to the single
working example.
e Strategic use of generic terms and specificterms
Sufficient consideration should be given to thedescription of the claims and the description of theclaimed elements in the specification in order toavoid the registered patent claims from being
interpreted narrowly. To this end, the claims should
be described by using “generic terms,” while thespecification should be described not only by“generic terms,” but also by using “specific terms”
for concrete embodiments.
One example of a specification taking such ameasure was a patent relating to a technology ofbundling signal wires for optical communication
with a reinforcing member. In this patent sample,
three levels of terms were used in expressing theinvention: “reinforcing member” as the higher
concept; “reinforcing rod” as the medium-level

IIP Bulletin 2003

concept; and “steel rod” as the lower concept.
(7) Claims(i) Actual problematic cases and the impact on
enforcementc Content of claim descriptions
There were cases that used inconsistent terms
in the claims, and cases of which Claim 1 wasredundant and extended to about two columns of
the patent specification.
In general, redundant claim expressions are
more liable to become the basis of a narrowerinterpretation since they include extra words.
d Paragraphing of the claims
When a patent is issued after making anamendment in the course of the prosecution, thescope of the amendment generally becomes anissue in respect to the estoppel. If the constituent
elements are described as independent paragraphs
and the elements are organically combined tocompose the claims, the amended elements would
not affect the other elements in the claim
interpretation. This measure has been consideredextremely important ever since the decision in
Festo, but very few of the samples had put it inpractice.
e Claims of multiple categories
It is important to draft claims of multiple
categories and increase the number of claims in asingle application. However, Japanese companies
tend to make insufficient efforts to increase thenumber of claims in filing a U.S. application, as
discussed later.
The difficulty of increasing the number ofclaims has also been pointed out, because diverse
categories often become subject to restriction
requirements under the strict unity requirement in
the United States. Among the samples analyzed,
some were found to include different types ofclaims within a single registered patent while
clearing the unity requirement. Those samples are
introduced below.
-A case in which the substantial characteristics
were in the process invention, and the claims forthe apparatus used for working that process
invention were described together-A case in which the invention wascharacterized by a partial constitution, and theclaims for a larger structure comprising that
constitution were described together-A case in which composition claims wereregistered together with the claims for a process
invention that included the mixing process
f Proper antecedent basis
This is an item that is very difficult to check.
Definite and indefinite articles present a criticalproblem in the claim construction. Since theJapanese language does not have an article
corresponding to “the,” precise use ofdefinite/indefinite articles is a very difficult task forJapanese practitioners. An assumable measure● 80 ●

would be to ask a U.S. patent attorney to check this
aspect of the U.S. application in advance.
(ｉｉ) Comparison of the number of claims
Twenty specifications selected from thesamples were studied in detail with respect to thenumber of independent claims and the total numberof claims. As a result, about 50% were registeredwith approximately the same number of claims as
the corresponding Japanese application, and efforts
to have more than 20 claims patented byproactively using the U.S. claim system wereobserved in only four samples (20%). There were
13 samples of which Japanese application consistedof a single independent claim. Most Japanesecompanies seem to be acquiring U.S. patents byfiling the same number of claims as the Japaneseapplication, which contains a relatively small
number of claims. Therefore, use of a larger
number of claims should be considered within 20
claims, which is the maximum number of claims
that can be filed without an additional fee in the
United States.

Ⅳ

Descriptions in the specificationof a U.S. patent application

The following were found as a result ofreviewing about 100 U.S. patents.
c Many samples were found to be incompliant
with the description rules of a U.S. specification.
The claims of these samples would be prone toreceive a narrower interpretation due to thedescriptions in the specification.
d An English specification of a near-satisfactory
level could be achieved by appropriately preparing a
Japanese specification for the translation andtranslating it correctly.
Accordingly, a guideline was compiled for thedescriptions in the respective items of a U.S.
specification and a checklist was created forchecking the Japanese specification drafted for thetranslation.
1

Invention, Summary of the Invention, Detailed
Description, and Claims, which were found to be
frequently misunderstood.
2

Checklist for
specification

theclaimsandthe

A checklist was created to check whether thedescriptions in the specification do not include any
unnecessary information with particular focus on
the following items that are likely to become thebasis for a narrower interpretation of the invention:
Abstract; prior art in Background of the Invention;
description of Summary of the Invention andmention of the purpose of the invention; Brief
Description of the Drawings; Detailed Descriptionthat can broadly support the important technology;
distinguished use of generic terms and specificterms between Claims and Detailed Description;and paragraphing of the claims.
If one drafts the Japanese version of the U.S.
patent specification in compliance with the format
of a U.S. patent specification by paying attention to
the descriptions based on the proposed guideline,
and confirms the content with the checklist, evenits direct translation into English would be
expected to make a U.S. specification that is able toclear the prescribed level.
（Senior researcher：Shinichi Irie）

Guideline on the descriptions in therespective items of the specification

The descriptions in the specification only
satisfy the requirements for patent by being
described in such full, clear, concise, and exact
terms as to enable any person skilled in the art tomake and use the invention disclosed in the claims(CFR 1.71(a)). However, the descriptions could also
hinder effective enforcement and lead to a narrowerinterpretation of the claims as mentioned above, so
the utmost care must be taken to prevent such asituation.
Thus, a guideline on the descriptions in a
specification was compiled from the above points ofview with particular focus on Background of the● 81 ●IIP Bulletin 2003