4

Patent Examination Practices (Description Requirements)－Desirable Descriptions－

The description requirements for descriptions, etc. have been gaining attention in recent years.
Given the various arguments going on concerning the description requirements, this study was
carried out by a subcommittee on the Study on Description Requirements in the Biotechnology
Field, which conducted examinations dedicated to the biotechnology field, and a subcommittee on
Study on Desirable Descriptions, which conducted examinations without limiting the technical field.
In the Study on Desirable Descriptions, with the aim of supporting preparation of desirable
descriptions that satisfy the description requirements in Japan, the United States and Europe, therelevant subcommittee created examples of desirable descriptions for each technical field andsummarized the points to be noted in preparing such descriptions, from the viewpoint of patentobtainment and enforcement in Japan, the United States and Europe.

I

Introduction

When filing a patent application, it isimportant to prepare the description(including the patent claims and drawings;
the same shall apply hereinafter) by giving
consideration
tosatisfactionofthedescription requirements for acquiring apatent as well as to patent enforcement. Also,
considering the increase in the number offoreign
applications
nowadays,itisimportant to use Japanese wording that issuitable for translation and to prepare adescription that takes into account thesystems and operations in Europe, theUnited States and other foreign countries.
“Intellectual Property Strategic Program2006” and “Intellectual Property Strategic
Program 2007” also mention the following as
one of the measures for promoting theappropriate use of the intellectual propertysystem: “In light of problems arising fromincorrect translations of patent descriptions
preparedforfilingforeign
patentapplications, the government of Japan (GOJ)
will continue to use seminars and instruction
manuals to thoroughly promote the use ofplain and clear terminology and expressions
when writing patent descriptions in order toavoid incorrect translations. More specifically,
the GOJ will recommend that each sentence
be short, the correspondence between the●IIP Bulletin 2008

subject and the predicate be clear, andambiguous and abstract terms be avoided.”
Under such circumstances, it will besignificant for applicants’ prompt obtainmentofpatents
andappropriate
patentenforcement to create examples of desirabledescriptions that satisfy the description
requirements in Japan and foreign countries
and gives consideration to the subsequenttranslation work and enforcement, and tosummarize the points to be noted for
preparing such descriptions.
This study aims at supporting the
preparation of desirable descriptions thatsatisfy the description requirements in Japan,
the United States and Europe, by creating
examples of desirable descriptions for eachtechnical field and summarizing the points tobe noted in preparing such descriptions, fromthe viewpoint of patent obtainment andenforcement in Japan, the United States andEurope.

IIPoints to be Noted in Preparing
Desirable Descriptions

In this study, examinations were madeon points to be noted in preparing desirable
descriptions, specifically, the points to be
noted concerning the overall statements in a
description, those from the viewpoint ofpatent enforcement and those from the26 ●viewpoint of translation.

1

Summary of the points to be noted
concerning the overall statements in a
description

obtaining a patent, it is important to preparea description that allows the applicant toobtain a patent that will be as effective as
possible upon patent enforcement.

3In this study, the general matters to be
noted by patent applicants were examinedbasedontheJapaneseexamination
standards. The matters to be noted
concerning statements in patent claims
include (i) the descriptive form of claims, (ii)the support requirement, and (iii) the clarity
requirement. Meanwhile, the matters to be
noted concerning statements in a description
include (i) the enablement requirement, (ii)the Ministerial Ordinance requirement, and(iii) the requirement for disclosure ofinformation on prior art documents. Thesematters were examined in this study withfocus on the points to be specially noted byapplicants.

2

Summary of the points to be notedfromtheviewpointofpatent
enforcement

In this study, court judgments relating toinfringement lawsuits in Japan wereextracted, and the points to be noted from theviewpoint of patent enforcement wereexamined. The major points to be noted fromthe viewpoint of patent enforcement aresummarized under the following items: (i)whether the claims include any unnecessaryelements; (ii) clarity of the terms used in theclaims; (iii) functional expressions; (iv)statements of numerical ranges; (v) whetherthe claims are difficult to prove; (vi)statements of effects in the detailed
explanation of the invention; and (vii)
whether the working examples are sufficient.
The question of whether or not thedescription requirements are satisfied relates
not only to determination on patent validity,
but also determination on establishment ofinfringement, in other words, recognition of
the technical scope of the patented invention.
Therefore,
ratherthanpreparingadescription merely from the viewpoint of●Summary of the points to be notedfrom the viewpoint of translation

In this study, the points to be noted fromthe viewpoint of translation were examined.
According to the results of examination, theterms that should be noted from theviewpoint of translation are (i) idiomatic
phrases, (ii) terms based on the culture ofeach country, and (iii) coined terms andcompound terms. There are cases where it
wouldbeinappropriate
todirectly
machine-translate these terms, so sufficientconsideration should be made when using
such terms. The points to be noted concerningsentences are (i) clarity of the subject, (ii) useof
demonstrativepronouns,(iii)
correspondence between the subject andpredicate, (iv) sentence length, and (v) use ofparticles. With regard to patent claims, it
became clear that Japanese claims intended
for obtainment of a patent in Japan are notnecessarily
suitablefortranslation.
Therefore, it would be preferable from theviewpoint of translation to prepare Japanese
claims for translation in advance by taking
into account the claims to be used when filing
applications with the United States orEurope. With machine-translating patentclaims, it is necessary to also makecorrections as appropriate after the machinetranslation.

III Examples of Desirable Descriptions
In this study, desirable descriptions wereexamined from the viewpoint of description
requirements, patent enforcement andtranslation for each technical field, andexamples of “desirable descriptions” werecreated. The technical fields examined werethe chemical field, mechanical field, physics
field and electric/electronic field. The patentclaims of each example include more than one
type of claim selected from claims with27 ●IIP Bulletin 2008

numerical limitations, Markush claims,claims with functional expressions (includingmeans-plus-functionclaims)
orclaimsrelating to software inventions. The example
of a “desirable description” in each technicalfield relates to the following invention:
1. Chemical field: invention relating to amethod for producing ester
2. Mechanical field: invention relating toa goods container for vehicles
3. Physics field: invention relating to aradio receiver, etc.
4. Electric/electronic field: invention
relating to a coded data transfer
deviceIn “bad examples, desirable examples
and points to be noted” for each of thetechnical fields above, bad examples werecreated from the viewpoint of the description
requirements or patent enforcement. By
comparing examples of desirable descriptions
with bad examples, it was clear how the badexamples could be corrected so as to create
desirable descriptions. As for the parts
compared, the reasons and basis for theexample to be considered a bad case were
examined, and the points that should be
noted in preparing a description from theviewpoint of the description requirements
and patent enforcement in Japan, the UnitedStates and Europe were summarized. The
points to be noted include Japanese and U.S.
court judgments and EPO Board of Appeal
decisions that serve as reference.
In the “points to be noted from theviewpoint of translation” for each of thetechnical fields above, examples of desirable
descriptions and bad examples weretranslated
into
Englishusing
theJapanese-English
machine-translation
function of the Advanced Industrial Property
Network (AIPN) of the JPO, and by
examining the translation results, the points
to be noted were summarized. Regarding
patent claims, not only the results of machinetranslation, but also English claims forreference are indicated. As a result of theexamination, it became clear that it isdifficulttotranslateadescription,●IIP Bulletin 2008

particularly patent claims, to a levelappropriate for a patent application, by only
using the AIPN machine translation, andthatJapaneseclaims
intendedfor
obtainment of a patent in Japan are notnecessarily suitable for translation. However,
the examination results of this study could beused as materials that contribute toimproving the accuracy of the AIPN machinetranslation. The AIPN machine translation is
hoped to further improve in the future.

IV Questionnaire Survey Results
In this study, a questionnaire survey ofdomestic users was conducted with the aim ofclarifying the points being noted byapplicants when preparing descriptions, etc.
As a result of the questionnaire survey,
many respondents mentioned that they took
note of the following basic matters whenfiling an application or when responding to a
notice of reasons for refusal in order tosatisfy the description requirements inJapan: “use general technical terms in claim
statements,” “use consistent terms in theclaims and the description” and “include
many working examples in the description.”
Also in the survey on matters that are noted
for satisfying the description requirements inEurope and the United States, although somementioned points specific to the UnitedStates, bearing in mind the best mode
requirement, most respondents mentioned
the same matters as those for satisfying thedescription requirements in Japan. These
results are considered to reflect applicants’awareness that, in order to satisfy
description requirements, it is at leastnecessary to comply with the basic mattersfor satisfying the description requirementsby referring to court judgments andexamination guidelines.
As for the points being noted byapplicants for preparing descriptions that areto be translated into a foreign language, inaddition to such basic points as “clarifying
the relationship between the subject and thepredicate,” “making each sentence short” and“clarifying the modification relation between
28 ●terms and phrases,” some respondents were
foundtobegiving
somespecific
considerations to translation by “using atranslator who can understand the technicalbackground” or “sending the Japanese andEnglish descriptions to the local patent
attorney.”（Researcher: Hiroko KAWARAI）●29 ●IIP Bulletin 2008