Trilateral Comparison of Judgments on Written Description Requirements
in Notices of Reasons for Refusal
Comparison of Tendencies in PCT Applications Filed with the JPO as the Receiving Office
The First Patent Committee
Japan Intellectual Property Association
Abstract: In fiscal 2012, the Second Subcommittee examined first actions by the Trilateral Offices—
the Japan Patent Office (JPO), the US Patent and Trademark Office (USPTO) and the European Patent
Office (EPO)—on internationally published PCT applications to research the tendencies in the
judgments made by the respective Trilateral Offices on violations of written description requirements.
The 2012 research found that the JPO judged each type of written description requirements (support
requirements, clarity requirements and enablement requirements) more strictly than the USPTO andthe EPO. This finding agrees with the perceptions of many patent practitioners and the opinions ofreview article authors. Since the 2012 research covered a tremendous volume of internationallypublished applications, however, the research samples had to be limited to applications internationallypublished on one day, arousing concerns about possible bias in the examined applications. In fiscal
2013, therefore, the Subcommittee limited the scope of sampling to PCT applications filed with the
JPO as the receiving office, and extended the period of research by conducting, four times every fourmonths, the same research of tendencies in the judgments of written description requirement violations
in first actions as per the previous fiscal year. As a result, the 2013 research revealed that the JPO
tends to point out more violations of enablement and support requirements than its US and European
counterparts.
Table of Contents
1. Introduction
2. Research Method
3. Overall Tendencies in Notices of Reasonsfor Refusal
4. Tendencies by Technical Field
4.1 Pharmaceuticals and Chemicals
4.2 Machinery and Electric Appliances
4.3 Synopsis
5. Discussion
5.1 Characteristic Tendencies in WDR
Judgments
5.2 Considerations for Filing Applications
with the JPO
5.3 Considerations for Filing Applications
with the USPTO and EPO
6. Conclusion

1. Introduction
In recent years, the Trilateral Offices (JPO,
USPTO and EPO) have conducted a series ofcomparative studies concerning patentexamination practices in order for applicants to
prepare high quality patent applications. In
December 2007, the Trilateral Offices
published the results of a comparative study on
their respective laws, regulations and1360

examination guidelines. In June 2008, theOffices released the results of a case study on
written description requirements (“WDRs”).[1]These case studies confirmed that the Offices’laws, regulations and examination guidelines
are similar but different when they are applied
to specific cases.
On the other hand, the Subcommittee, in
its mid- to long-term action scheme for fiscal
2007–2009, compared and examined the
Trilateral Offices’ judgments on WDRs on thebasis of actual court decisions and appeal/trial
decisions. The results of this comparison andexamination showed little difference in thestrictness of examination.[2]–[4] However, giventhat the JPO may judge WDRs in examinations
more strictly than the EPO and the USPTO,[1],[5]–[7]the results of the comparative study above
differ from what practitioners perceive.[8] Thismay be because the comparative study covered
only disputed cases in court and did not reflect
on the large number of remaining cases notbrought into court.
Against this background, as part of its
activities for fiscal 2012, the Subcommittee
examined the Trilateral Offices’ first actions(“FAs”) on internationally published PCTapplications to research the tendencies in theIntellectual Property Management Vol.64

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WDR judgments in the reasons for refusal
shown in the Offices’ examinations.[9] The
research found that the JPO pointed out thehighest percentage of WDR violations, a resultthat reflected to some extent the patent
practitioners’ perceptions as mentioned above.
However, the research aroused concerns about
possible bias in terms of the applications
examined, including multiple applications filedby the same applicant, because the research,
although not limited in terms of receiving
offices,coveredonly
applications
internationally published on one day to limit
the number of sampled cases for examination.
Infiscal2013,
therefore,theSubcommittee limited the scope of research to
PCT applications filed with the JPO as thereceiving office, and extended the period of
research by conducting, four times every fourmonths (applications internationally publishedin the first weeks of August and December
2006, and April and August 2007), research on
tendencies in the Trilateral Offices’ WDR
judgments in examinations. Limiting thereceiving office to the JPO and extending theperiod of research, as mentioned above,
minimized biases in terms of applicants andother elements, and narrowed down most of
the sampled cases to PCT applications filed by
Japanese
individuals
andbusinesses(collectively “Japanese applicants”). This
made it possible to check how each Officeexamined and judged WDRs in PCTapplications by Japanese applicants, who wereaccustomed to the patent practices in Japan. In
this sense, the Subcommittee believes thisresearch provides results of interest to
Japanese patent practitioners.
This article was prepared by the Second
Subcommittee of the First Patent Committee
for fiscal 2013, consisting of Akihiro Otsuka(subcommittee chair, Nihon Medi-Physics),
Hitoshi Mitomo (subcommittee vice-chair,
Fujitsu Techno Research), Ken Ikuma (SEIKOEPSON), Teiji Iwamoto (Daiichi Sankyo),
Yasuharu Uchibori (Osaka Gas), Toshihiro
Ezoe (Sony), Fusato Kitano (JFE TechnoResearch), Tomofumi Sakiyama (Kaneka),
Tetsuo Shimano (Ube Industries), Masahiko
Tanitame (Sumitomo Dainippon Pharma),
Hajime Tsuchiya (Mitsubishi Plastics),
Takeshi Negishi (Ricoh), Masahiro Hachiro(Asahi Glass), and Katsuhiko Mori (Sekisui
1361

Chemical).

2. Research Method
The Subcommittee sampled and examined
PCT applications that were internationallypublished in the first weeks of August andDecember 2006, and April and August 2007,
and transferred to the Trilateral Offices. The
Subcommittee conducted the research inaccordance with the following steps:(i) Sampling of applications for research
The
Subcommittee
sampledPCT
applications filed with the JPO as the receiving
office (the international application numbers ofwhich contain “JP”). Of these samples, it
selected applications that had been transferred
to all the Trilateral Offices (327 applications).
(ii) Checking for WDR violations
The
Subcommittee
examinedtheTrilateral Offices’ FAs on the applications
selected under step (i) above to check for
WDR violations (support, clarity andenablement requirement violations) pointed
out by the Offices. It used the FAs to compare
such violations because all the WDR violations
arising from the original specifications may
have already been pointed out in the FA stage.
(iii) Checking for identity of claims examinedby the Trilateral Offices
The Subcommittee checked whether
amendments were made, before FA, to the
WDRs pointed out as violations by any of the
Trilateral Offices, shown in step (ii) above. It
also checked whether the claims of eachapplication examined by each Office were
substantially identical. As a result, theSubcommittee excluded from the scope of
research samples applications of which claims
examined by the Offices (claims before FA)
were substantially different in terms of WDR
violations (278 applications). However, it kept
in the research samples applications to which
minor amendments were made including theamendment of formal errors (e.g., amending
dependent claims to independent form)
because such claims can be compared evenafter amendment. Here, the FAs examined
included not only the first notices of reasons
for refusal but also WDR judgments shown inEuropean search reports and the like.
Applications that entered the patent grant

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decision stage without notification of reasons
for refusal were counted as ones for which no
WDR violations had been pointed out.
The following section describes the results of
the research.

3. Overall Tendencies in
Notices of Reasons for
RefusalThe Subcommittee examined the abovedescribed sampled cases for the frequency ofviolations for each type of WDR (support,
clarity and enablement requirements) pointed
out in the FA stage. The overall tendencies
were as shown in Table 1.
In the 278 sampled cases, the number of
WDR violations pointed out in the FA stage
was 117 for the JPO, 119 for the USPTO, and
130 for the EPO. These figures indicate little
difference between the Trilateral Offices,
albeit with the EPO pointing out slightly more.

clarity requirement violations. The result also
shows that even PCT applications filed with
the JPO as the receiving office had statisticallyhigher numbers of support and enablement
requirement violations pointed out by the JPO
than those by the USPTO and the EPO.
Comparison by each type of WDR
revealed an overall tendency for clarity
requirement violations to be pointed out mostfrequently. Clarity requirement violations
accounted for 74% of all WDR violations for
the JPO (87/117), 87% for the USPTO(104/119), and 95% for the EPO (123/130).
This indicates a tendency for clarity
requirement violations to be pointed out mostfrequently by the EPO, followed by the
USPTO and the JPO.

Table 1. Tendencies in WDR Violations
Pointed Out by Trilateral Offices

As for support and enablement requirements, however, the percentage of violations
were, respectively, 44% (51/117) and 27%(32/117) for the JPO, 13% (15/119) and 18%(21/119) for the USPTO, and 15% (19/130)
and 14% (18/130) for the EPO. Thus thepercentage of support and enablement
requirement violations pointed out tended to behigher for the JPO in comparison with the
USPTO and the EPO.

Number of violations pointed out(278 sampled cases)
Total for
Trilateral
JPO
USPTO
EPO
Offices

As described above, the comparison
confirmed the overall tendency for the JPO topoint out support and enablement requirement
violations more frequently than the USPTO
and the EPO.

SupportClarity
Enablement
Total for
all
WDRs

73
210

51
87

15
104

19
123

54

32

21

18

222

117

119

130

On the other hand, comparison of theindividual number of WDR violations pointed
out by the Trilateral Offices revealed that the
USPTO and the EPO pointed out more clarity
requirement violations than the JPO. As forsupport and enablement requirements, the JPO
pointed out about three and two times moreviolations, respectively, than its US andEuropean counterparts. This result shows thatthe more frequent pointing out of violations by
the EPO, as described above, was mainly due
to the EPO pointing out a higher percentage of1362Intellectual Property Management Vol.64

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4. Tendencies by TechnicalField
4.1 Pharmaceuticals and Chemicals
Table 2 shows the numbers of WDR
violations pointed out by the Trilateral Offices
at the FA stage in the field of pharmaceuticals
and chemicals.
In this field, clarity requirement violations
were pointed out most frequently, in line withthe overall tendency. Clarity requirement
violations were pointed out by at least one of
the Trilateral Offices in 76% of the 143
sampled cases (109/143). Of the 109 cases ofclarity requirement violations, the percentage
was 42% (46/109) for the JPO, 56% (61/109)
for the USPTO, and 58% (63/109) for the EPO.
This result indicates that the USPTO and the
EPO pointed out clarity requirement violations
more frequently than the JPO; this tendency
agrees with the overall tendency mentioned in
the preceding section.
Table 2. Tendencies in WDR Violationsin the Field of Pharmaceuticals andChemicals
Number of violations pointed out(143 sampled cases in the field ofpharmaceuticals and chemicals)
Total for
Trilateral
JPO
USPTO
EPO
Offices
SupportClarity
Enablement
Total for
all
WDRs

52
109

37
46

12
61

13
63

36

21

19

13

115

63

74

66

Enablement requirement violations werepointed out by at least one of the Trilateral
Offices in 25% of the 143 sampled cases(36/143). The JPO and the USPTO pointed out
a higher percentage of enablement requirement
violations than the EPO. Of the 36 cases ofenablement requirement violations, thepercentage of enablement requirement
violations accounted for 58% (21/36) for the
JPO, 53% (19/36) for the USPTO, and 36%(13/36) for the EPO; the JPO and the USPTO
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thus tended to point out a higher percentage ofenablement requirement violations than the
EPO. This confirmed that the JPO and the
USPTO more frequently point out enablement
requirement violations.
On the other hand, support requirement
violations were pointed out by at least one of
the Trilateral Offices in 36% of the 143
sampled cases (52/143). Of the 52 cases of
support requirement violations, support
requirement violations accounted for 71%(37/52) for the JPO, 23% (12/52) for the
USPTO, and 25% (13/52) for the EPO; theJPO tended to point out support requirements
violations more frequently than the USPTO
and the EPO. The JPO had by far the highest
percentage among the Trilateral Offices, while
no major difference was found between the
USPTO and the EPO.
In addition, the JPO exhibited a uniquetendency where both support and enablement
requirement violations were often concurrently
pointed out (data not shown in Table 2).
The above-described results revealed thefollowing tendencies as a whole in the field ofpharmaceuticals and chemicals:
The JPO pointed out support requirement
violations more frequently than the USPTO
and the EPO.
The JPO and the USPTO pointed out
enablement requirement violations more
frequently than the EPO.
The JPO pointed out slightly fewer clarity
requirement violations than the USPTO andthe EPO.

4.2 Machinery and ElectricAppliances
Table 3 shows the numbers of WDR
violations pointed out by the Trilateral Offices
at the FA stage in the field of machinery andelectric appliances.
In the field of machinery and electric
appliances, clarity requirement violations werealso pointed out most frequently, in line withthe overall tendencies. Clarity requirement
violations were pointed out by at least one of
the Trilateral Offices in 75% of the 135
sampled cases (101/135). Of the 101 cases ofclarity requirement violations the percentage

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was 41% (41/101) for the JPO, 42% (43/101)
for the USPTO, and 60% (61/101) for the EPO.
This result indicates that the USPTO and the
EPO pointed out clarity requirement violations
more frequently than the JPO, similar to thefield of pharmaceuticals and chemicals.
Table 3. Tendencies in WDR Violationsin the Field of Machinery and ElectricAppliances
Number of violations pointed out(135 sampled cases in the field ofmachinery and electric appliances)
Total for
Trilateral
JPO
USPTO
EPO
Offices
SupportClarity
Enablement
Total for
all
WDRs

21
101

14
41

3
43

6
61

18

11

2

5

107

54

45

64

In the field of machinery and electric
appliances, the percentages of support andenablement requirement violations pointed out
among the 135 sampled cases were about 1.5–
4.5% for the USPTO and the EPO, and about
10% and 8%, respectively, for the JPO. Thismeans that the JPO issued notices of reasons
for refusal two to five times more frequently
than its US and European counterparts.
Against support and enablement requirement
violations pointed out by at least one of the
Trilateral Offices (21 and 18, respectively), thepercentages were 67% (14/21) and 61%(11/18), respectively, for the JPO, indicatingthat the JPO pointed out more than half of thetotal WDR violations of each type. Thus, in thefield of machinery and electric appliances, the
JPO also tended to point out support andenablement requirement violations more
frequently, albeit fewer than those inpharmaceutical and chemicals.
In summary, in the field of machinery andelectric appliances, clarity requirement
violations were pointed out frequently, but thepercentages of the other types of WDR
violations were lower for all the Trilateral
Offices. As a whole, WDR violations tended tobe less frequently pointed out. In addition,
1364

support and enablement requirement violations
tended to be more frequently pointed out by
the JPO than its US and European counterparts.
The above-described results revealed thefollowing tendencies as a whole in the field ofmachinery and electric appliances:
The JPO pointed out support and enablement
requirement violations more frequently thanthe USPTO and the EPO. The violations,although fewer in number than those inpharmaceutical and chemicals, were pointed
out at moderate percentages of about 8–10%of the 135 sampled cases.
The USPTO and the EPO pointed out
support and enablement requirement
violations at extremely low percentages ofless than 5% of the 135 sampled cases;
clarity requirement violations accounted forthe majority of WDR violations.

4.3 Synopsis
The above-described statistical findings
lead to the tendencies described below.
First, as for the percentages of WDR
violations pointed out in the examinations by
the Trilateral Offices, the percentage of clarity
requirement violations was higher for the
USPTO and the EPO while those of supportand enablement requirement violations werehigher for the JPO. Specifically, the JPO
pointed out double the number of support
requirement violations and 1.5 times thenumber of enablement requirement violations
than those pointed out by the USPTO and the
EPO. This tendency was similar to thatrevealed by the research that the Subcommittee
conducted in 2012 without specifying thereceiving office.[9] The 2013 research was
limited to PCT applications filed with the JPO
as the receiving office, with almost all of theapplications being by Japanese applicants.
Most of the applicants were thus presumably
accustomed to patent practices in Japan (atleast it may be true that most Japanese PCT
applicants were familiar with Japanese patent
practices). These results suggest that the JPO
judged support and enablement requirements
more strictly than the USPTO and the EPO.
On the other hand, the research found that
the USPTO and the EPO pointed out moreclarity requirement violations than the JPO, aIntellectual Property Management Vol.64

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tendency different from that shown by the
Subcommittee’s 2012 research results,[9] whichindicated that the JPO pointed out more clarity
requirement violations than its US andEuropean counterparts. This may be partly
because the 2013 research was limited to PCTapplications filed with the JPO as the receiving
office, and some applications filed by foreign
applicants with clarity requirement violations
may have been excluded due to mistranslationsin the Japanese versions.
Comparison of the tendencies for WDR
violations among the Trilateral Offices bytechnical field show that support requirement
violations in particular tended to be pointed out
far more often in the field of pharmaceuticals
and chemicals than in machinery and electric
appliances. This tendency is common—butwith subtle differences—among the Trilateral
Offices. Specifically, the percentage of support
requirement violations pointed out by the
Trilateral Offices as a whole was 36% (52/143)
in pharmaceuticals and chemicals and 16%(21/135) in machinery and electric appliances.
In addition, the percentage of enablement
requirement violations pointed out by the
Trilateral Offices as a whole—25% (36/143) inpharmaceuticals and chemicals and 13%(18/135)
inmachineryandelectric
appliances—shows a similar tendency, where
violations were pointed out more inpharmaceuticals and chemicals albeit with asmaller difference than in the case of support
requirement
violations.
However,thepercentage of clarity requirement violations
pointed out by the Trilateral Offices as a wholeshows little difference between the field ofpharmaceuticals and chemicals and the field ofmachinery and electric appliances: 76%(109/143) and 75% (101/135), respectively.
In summary, the JPO was found to pointout higher percentages of support andenablement requirement violations than the
USPTO and the EPO. Comparisons bytechnical field revealed higher percentages in
the field of pharmaceuticals and chemicals
than in the field of machinery and electric
appliances,withremarkably
higherpercentages of violations pointed out for
support and enablement requirements.

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5. Discussion
The research found that the JPO also
made stricter judgments on support andenablement requirements than its US andEuropean counterparts in examining PCTapplications filed with the JPO as the receiving
office. Under these circumstances, what points
should applicants keep in mind in their efforts
to obtain patents in Japan, the US and Europe?
The following subsections provide an
overview of characteristic tendencies in the
Trilateral Offices’ WDR judgments based on
examination of the research cases. The
subsections also include considerations forfiling applications.

5.1 Characteristic Tendencies in
WDR Judgments
The research indicates that the JPO
judged support and enablement requirements
more strictly than its Europe and America
counterparts. This tendency is common for all
fields, but more markedly in the field ofpharmaceuticals and chemicals. Certainly,
there are not a few cases where inventions,
including compounds and constituents, in thefield of pharmaceuticals and chemicals vary
remarkably in terms of properties by a slightchange in some of their constituent features.[10]It is understandable that the predictable scopeof the person skilled in the art achieving theoperation and effect of the claimed invention
based on the disclosure thereof may benarrower than that for inventions in the field ofmachinery and electric appliances. In somecases, however, the JPO required more specificexamples to be disclosed in the specification
than did the USPTO and the EPO. In an
instance of an invented compound, the JPO
pointed out support or enablement requirement
violations based only on specific descriptionsin the examples, while the USPTO and the
EPO, in some cases, did not give a notice of
reason for refusal. For claims defined byparameters in particular, the research reveals
some cases where the JPO pointed out support
requirement violations because only part of theparameter range was described in the examples
without disclosure of the entire parameter
range. It is a considerable burden for theIntellectual Property Management Vol.64

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applicant to prepare examples for the entire
parameter range. From this standpoint, flexible
judgments should be made by acknowledging
that support requirements will be fulfilled
regardless of the description of the example if
the specification contains a rational andsufficient explanation of the parameter range.
(However, it is also true that there are somecases where the JPO’s strict judgments are
deemed more appropriate than those made by
the USPTO and the EPO. Therefore,
judgments that are too strict should be more
flexible as described above, but this does notmean that WDRs in all patent applications
should be judged in a tolerant manner. Keep inmind that flexible judgments as describedabove should be made only when thespecification contains ‘rational and sufficient’
explanation.)
In addition, particularly if support
requirement violations are notified as reason
for refusal, experimental data submission
should, in principle, be unacceptable and, inmany cases, the claims need to be restricted
and amended.[11] [12] In fact, the 2013 researchreviewed the claims of all nine applications in
the patent decision process in which the JPO
had pointed out support requirement violations
and which were then registered forestablishment by the Trilateral Offices. In all
applications, the elements pointed out assupport requirement violations were reduced
and amended. On the other hand, looking at
the nine applications examined by the USPTO
and the EPO, in only about half of them were
the same elements restricted and amended(five applications by the USPTO and four
applications by the EPO). The result is thatdifferences in the extent of claims arose
between the JPO and its counterparts from avariance in judgments on support requirements.
Such inconvenience may occur only in cases of
WDR violations due to differences in WDR
examination
practices,
unlikenoveltyviolations or other cases where reduction andamendment should be made in comparison toother relevant prior art. This may sometimes
notcompelapplicants.
Therefore,
improvements should be made as early as
possible through the harmonization of
examination system application.

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5.2 Considerations for Filing
Applications with the JPO
As described above, the JPO judges
support and enablement requirement violations
more strictly than the USPTO and the EPO. In
an effort to obtain patents extensively in Japan,
therefore, the applicant should endeavor toprovide more than one example with adequate
variation for “any invention for which a patentright is most wanted,” and to fully explain theinvention described in the scope of claims toan extent that allows a person skilled in the art
to solve the problem, while accurately
identifying the portion that is advantageousover the prior art (characterizing portion of theinvention). In particular, as described above,
the JPO tends to judge WDRs based on thedescription of the examples, and thedescription of examples may be especially
important in Japan in comparison with the US
and Europe. The JPO also seems to take thestance that the applicant should bear theburden of proof that support and enablement
requirements are fulfilled[7] [13] [14]. In this sense,
it is necessary for the applicant to keep in mind
that they should try to disclose information in
the specification sufficiently and logically.
In addition, the applicant needs to pay
attention to describing the essential portion of
the invention clearly and completely in
preparing a specification, and to explaining
specifically and logically that the entire scopeof claims is supported by the specification.
However, the applicant also needs to be careful
not to deny the inventive step of his/her own
invention due to excess awareness of theaforementioned
specific
andlogicalassertion.[15]-[18] In this sense, it may bedesirable to assert based on the examples to theextent possible. Even if it is impossible toassert based on the examples, however, theapplicant should try to avoid novelty violations
being pointed out in exchange for WDR
fulfillment by, for example, explaining clearly
that the logical constitution itself is a novel
original invention by the applicant.
As described above, descriptions in theexamples are more important for the JPO thanfor the USPTO and the EPO. In addition, it
may also be useful when fulfilling support
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certain tendency of “results provided in theexamples” and “operation and effect,” or todescribe the mechanism and cause-and-effectrelationship. For example, the applicant may
logically explain that descriptions in thespecification support the scope of the patent tobe granted, by comparing the examples in thespecification with each other and thendescribing that they can be expanded or
generalized; specifically, that “those with thesame functions and properties can be moregeneric.”
Furthermore, it should also be noted thatwhether to determine an enablement or support
requirement violation depends on the level ofordinary skill in the art.[19] For example, someof the cases researched by the Subcommittee
were judged as enablement requirement
violations as a result of determining the levelof ordinary skill in the art as low. The
applicant should examine prior art literatureand other objective evidence to accurately
identify the level of ordinary skill in the art in
the technical field of the claimed invention. It
is probably valuable to consider what has been
mentioned above in response to notice of
reason for refusal.

5.3 Considerations for Filing
Applications with the USPTO
and EPOof it in particular.
According to the research, the USPTO
and the EPO tended to point out support andenablement requirement violations lessfrequently than the JPO. In many cases, if
application documents are prepared in amanner that satisfies support and enablement
requirements in Japan, these WDRs in the
documents may be judged by the USPTO andthe EPO to be fulfilled.
However, even if the application has been
filed in accordance with Japan’s examination
practices, WDR violations may, in some cases,
be pointed out by the USPTO and the EPO. In
the 2013 research, there were a small numberof cases where no (or only minor) WDR
violations were pointed out by the JPO, but
WDR violations were, in fact, pointed out by
the USPTO or the EPO.
For example, the EPO sometimes judges
and points out WDR violations from thestandpoint of “whether the characterizing
portion of the invention is described.”
Examples include applications in compoundrelated inventions which the EPO has judged
as improper WDRs (violation of EPC Article84) because the extracted technical features
necessary to obtain the effect based on thedescriptions of the examples (comparative
examples) did not reflect the claims. If
embodiments that cannot obtain the effect are
exemplified in comparative examples, theapplicant should appropriately identify
technical matters that contribute to the failure
to obtain the effect, and be careful not to
contain such embodiments in the claims. To
obtain patent rights in Europe, applicantsshould be mindful of clearly identifying thecharacteristic part of the invention before
describing the claims.

The 2013 research reveals that the
USPTO and the EPO tended to point out
clarity requirement violations more frequently
than the JPO. For example, F-IV, 4.10 of the
EPO’s Guidelines for Examination states that,as a general rule, claims which attempt todefine the invention by a result to be achieved
should not be allowed except in special cases.
Under this provision, a clarity requirement
In chemical compound inventions forviolation may be pointed out if the claims
medicinal
uses, the USPTO judges that
contain the advantageous effect of theenablement
requirements for solvates are notinvention. The 2013 research also identifies
fulfilledifthespecification does not containcases where only the EPO pointed out clarity
examplesofsolvates.
Furthermore, in electric
requirement violations under the guidelines
circuitinventions,the
USPTO judges thatabove (in the field of machinery and electric
enablement requirements are not fulfilled if theappliances). To avoid clarity requirement
specification does not contain specific circuit
violations being pointed out by the EPO, thediagrams. These judgments seem to be applied
claims should contain the minimum
relatively rigidly. To obtain patent rights in theadvantageous effect of the invention even if it
US to a chemical compound invention to theis difficult to identify the advantageous effectextent of including solvates, therefore, theof the invention only with specified elements
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application should describe examples of thesolvates in the specification. Similarly, toobtain patent rights in the US to an electric
circuit invention, the applicant should describe
specific circuit diagrams in the specification.
Countries and regions thus currently examine
under their own respective standards. It goes
without saying that the key to successful
obtainment of patent rights in each country or
region is for applicants to thoroughly consider
examination practices at the Trilateral Offices.

2)

6. Conclusion
Continuing from 2012, the researchcompared and examined the Trilateral Patent
Offices’ WDR judgments in notices of reason
for refusal in examinations. This year thescope of comparison was limited to PCTapplications filed with the JPO as the receiving
office. As a result, the JPO tended to point out,
in particular, more support and enablement
requirements than the EPO and the USPTO.
This agrees with the usual impression of actual
practice and opinions given in publishedreviews.[1] [5] [6] However, given that most of
the applications were filed by Japaneseapplicants, the number of WDR violations
pointed out by the JPO may be regarded as
unexpectedly large.
As described above, the differences in
WDR judgments may contribute to the varying
scope of patents, depending on the country. If
the scope varies from country to country, theprocedures will become more complicated forthe applicant from the viewpoint of patent rightuse and patent management. At the very least,
the presence of differences in legal regulations
and their application among the Trilateral
Offices may pose not a small burden on theapplicant. Therefore, it is hoped that early
harmonization can be achieved with regard to
the handling of WDRs so as to lessen theburden on applicants.

3)

4)

5)

6)

7)

Notes
1)

Document published by the Japan Patent
Office: A comparison of examination
practices among the Trilateral Offices / A
case study on written description

1368

8)

requirements (in Japanese) (title of theoriginal document: Comparative Study on
Hypothetical/Real Cases: Requirement forDisclosure and Claims), published June2008.
(http://www.jpo.go.jp/torikumi/kokusai/kok
usai3/pdf/sinsa_jitumu_3kyoku/kisai_honbu
n.pdf, accessed March 22, 2013)
The Third Subcommittee, the First PatentCommittee: A discussion of Japanese,
American, European, Chinese, and Korean
judgments concerning written description
requirements for the specification, etc. (inJapanese).
Intellectual
Property
Management Vol. 58, No. 8 (2008), pp.
1019–1031.
The Second Subcommittee, the First PatentCommittee: Comparison of judgments
concerning written description requirements
among responding families on the basis of
US court decisions and examinations (inJapanese).
Intellectual
Property
Management Vol. 59, No. 12 (2009), pp.
1615–1629.
The Second Subcommittee, the First PatentCommittee: Comparison of judgments
concerning written description requirements
among responding families on the basis ofEuropeanappeal/trial
decisions(inJapanese).
Intellectual
Property
Management Vol. 60, No. 10 (2010), pp.
1633–1650.
Fiscal 2007 JPO Industrial Property Issue
Research Report: Survey of patentexamination
practice(description
requirements): An investigational study ofdescription requirements in the field ofbiotechnology, pp. 173–201.
(http://www.jpo.go.jp/shiryou/toushin/chousa/pdf/zaisanken/1904bio_honpen.pdf,
accessed March 22, 2013)
European Commission: Summaries ofcontributions to the Public Consultation on:“The future of EU Japan trade and economic
relations,” p.1.
(http://www.jetro.go.jp/world/europe/ip/pdf/
20110223.pdf, accessed March 22, 2013)
Naosuke Miyamae: Practical study of
judgments by the Intellectual Property High
Court dealing with written description
requirements for inventions defined bynumerical ranges (further report). Patent,Vol. 65, No. 7 (2012), pp.60–69
Yukihiro Tsuda: Are improper support
requirements deficient enough to invalidate
patents? A comparative study of judgments

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at home and abroad, and recent trends injudgments in the machinery field. Bessatsu
Patent, No. 9, (2013), pp.122–133
9) The Second Subcommittee of the First
PatentCommittee,
JIPA:
TrilateralComparisonofwrittendescription
requirements in Notices of Reasons for
Refusal—Comparison of Tendencies in
Reasons for Refusal among the Trilateral
Offices—,Intellectual
Property
Management, Vol. 63, No. 9 (2013),
pp.1493–1508
10) In the 1990 “Gyo-Ke” Case No. 243, forexample, it was stated that “It is commonly
recognized by those skilled in the art that it
is generally difficult to predict the utility ofa chemical substance invention merely fromthe chemical structure thereof, which
structure cannot be revealed without testing,and this is a fact that is prominent to thepresent court of justice. Therefore, to know
the utility of the chemical substanceinvention, it is necessary to demonstrate theutility by making an actual test, or for thoseskilled in the art to be able to recognize theutility from results of the test.”11) In the Grand Panel decision in what is called
the polarizing film case [2005 “Gyo-Ke”
Case No. 10042], it was stated that “Itshould be said to constitute a violation of thespirit of the patent system (a patent is notgranted for an invention unless the invention
is to be published, and is unacceptable) to
expand or generalize the content disclosed
in the detailed explanation of the invention
in an attempt to fulfill support requirements
for the specification by submitting
experimental data after filing the application
so as to supplement the content outside thespecification, while no examples aredisclosed in the detailed explanation of theinvention to the extent that allows thoseskilled in the art to recognize theresolvability of the problem of the invention,
so the content disclosed in the detailed
explanation of the invention can neither be
expanded nor generalized to the scope of theclaimed invention even in light of common
general knowledge as of the filing of theapplication in this case,” ruling out theassertion of fulfillment of support
requirements by the ex post addition ofexperimental data.
On the other hand, in the 2007 “Gyo-Ke”
Case No. 10131, for example, theapplicant’s assertion of fulfillment of1369

enablement requirements by the submissionof a certificate of experimental results was
accepted.
12) Makoto Morioka: Recent Court Cases on
Support Requirements. Patent, Vol. 60, No.
7 (2007) pp.70–79.
13) For example, in the Grand Panel decision inwhat is called the polarizing film case [2005“Gyo-Ke” Case No. 10042], the court took
the view that the applicant should bear theburden of proof for the sufficiency of
support requirements, stating that “And
whether the description of claims conforms
to the support requirements of thespecification should be judged bycomparing the description of the claims andthe detailed description of the invention, andexamining whether the invention in theclaims is identical to the invention in thedetailed description of the invention,
whether the detailed description of theinvention provides information enough for a
person skilled in the art to perceive that the
problem to be solved by the invention
concerned can be solved, and whether aperson skilled in the art can perceive—even
without detailed description or suggestion
but with common general technicalknowledge as of the time of application—that the invention could solve the problem.
It is proper to construe that the patentapplicant (the plaintiff of the suit against thetrial decision dismissing the demand forappeal against the examiner’s decision ofrefusal) or the patentee (the plaintiff of thesuit against the trial decision revocating thepatent under Article 2.9 of the
Supplementary Provisions of the Act No. 47
of 2003 or of the suit against the trial
decision approving the demand for a patent
invalidation trial, or the defendant of the suitagainst the trial decision dismissing thedemand for a patent invalidation trial)
should bear the burden of proof for the
existence of support requirements in thespecification.” In the 2009 (“Gyo-Ke”) Case
No. 10296, the court also took the sameview, stating that “And whether thedescription of claims conforms to the
support requirements of the specification
should be judged by comparing thedescription of the claims and the detailed
description of the invention, and examining
whether the invention in the claims is
identical to the invention in the detailed
description of the invention, whether theIntellectual Property Management Vol.64

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detailed description of the invention
provides information enough for a person
skilled in the art to perceive that the problem
to be solved by the invention concerned canbe solved, and whether a person skilled in
the art can perceive—even without detailed
description or suggestion but with common
general technical knowledge as of the timeof application—that the invention could
solve the problem. It is proper to construethat the patent applicant or the patentee
should bear the burden of proof for the
existence of support requirements.”
14) On the other hand, in the 2005 “Gyo-Ke”
Case No. 10205, the court took the view thatthe applicant should bear the burden of
proof for the sufficiency of enablement
requirements, stating that “since it is evident
that the applicant should prove in filing thepatent applicant that the application satisfies
enablement requirements, it is proper toconstrue that the applicant or the patent
owner should bear the burden of pleadingand proof even in an appeal against theexaminer’s decision of refusal, trial forinvalidation, or suit against the decision ofthis appeal or trial. (In addition, the decision
was made in the 2008 “Gyo-Ke” Case No.
10483 that the applicant should bear theburden of proof for the sufficiency of
support and enablement requirements. The
decision was made in the 2008 “Gyo-Ke”
Case No. 10423 that the applicant shouldbear the burden of proof for the sufficiencyof enablement requirements.)
15) The 3rd Subcommittee, Patent 2nd
Committee: A Study of Tendencies of Court
Judgmentson
WrittenDescription
Requirements—A Review of Suits against
Appeal/Trial Decision and Infringement
Suits—Intellectual Property Management,
Vol. 61, No. 8 (2011) pp.1133–1149.
16) A.I.P.P.I., Vol. 58, No. 1 (2013), pp. 6–21
17) Hisao Shiomi: The role of disclosure
requirements (enablement and support
requirements) under the Patent Act.
Intellectual Property Law and Policy Journal,
Vol.16 (2007), pp.131–166

137018) For example, in the 2001 “Gyo-Ke” Case
No.140, it was stated that “It is construed
that the invention in claim 1 is patented
because constituent feature A is a novelcomponent that is not in ordinary tatami
sewing machines and because no person
skilled in the art could easily arrive at theclaimed invention. Since, as describedabove, constituent feature A is essential inbasing the novelty of the invention in claim
1, no person skilled in the art could exploit
constituent feature A unless the detailed
description of the invention in thespecification
concerned
containsadescription that makes it possible to exploit
it. Conversely, the novelty of the invention
in claim 1 must be denied if, even without
such description, a person skilled in the art
could easily exploit constituent feature A
only taking common general technicalknowledge into account.”
19) For example, in the 2000 “Gyo-Ke” Case
No. 484, the court found that the written
description requirements are fulfilled withthe technical field narrowed and the level ofordinary skill in the art raised, stating thatsince the specifications concerned clearlyspecify that the technical field of theinvention in question is the field of motor
technology, it is proper to construe that, in
this case, the ‘persons ordinarily skilled in
the art’ set forth in Article 36.4 should referto experts in the field of motor technology.
It is hard, therefore, to find any rational
reason why the scope of the term should be
expanded to include experts in the field ofgeneral electric appliances. Other cases ofraising the level of ordinary skill in the art
include the 2001 “Gyo-Ke” Case No. 586,
the 2005 “Gyo-Ke” Case No. 10080, the2007 “Gyo-Ke” Case No. 10147, and the2008 “Gyo-Ke” Case No. 10084.

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