Trilateral Comparison of Description Requirements in Notices of Reasons for Refusal-Comparison of Tendencies in Reasons for Refusal among the Trilateral Offices-

The Second Subcommittee
The First Patent Committee
Abstract: In fiscal 2007, the First Patent Committee began verifying the rationality of
the criteria for description requirements in Japan by comparing actual applications
filed in Japan and those in foreign countries, and identifying points of note for description requirements at the time of filing applications. Sampled cases yielding different
results among the trilateral families were examined for international differences injudgment (in Japan, US, Europe, China, and Korea) on the basis of Japanese court decisions and appeal/trial decisions in fiscal 2007, US court decisions and examinations
in fiscal 2008, and European appeal/trial decisions in fiscal 2009. When the US was
the base country, there was no bias of one-sided strictness, although some differenceswere found among individual cases. This appeared to conflict with the user’s conception, and was attributed to the fact that the conclusion was reached only for cases inwhich an appeal/trial or lawsuit was made in either Japan, the US, or Europe. Hence,
we explored in detail the reasons for refusal to actual applications filed to the trilateralauthorities, and analyzed the tendencies in the reasons for refusal of description requirements among the Trilateral Patent Offices. The findings are reported below.
Table of Contents
1. Introduction
2. Objective and Background for Fiscal
2012
3. Details of the Survey
4. Overall Tendencies in Notices of
Reasons for Refusal
5. Tendencies by Technical Field
5.1. Pharmaceuticals and Chemicals
5.2. Machinery and Electric Appliances
5.3. Synopsis
6. Case Reviews (Pharmaceuticals andChemicals)1493

6.1. Enablement Requirements
6.2. Support Requirements
6.3. Clarity Requirements
6.4. Synopsis
7. Conclusion

1. Introduction
With regard to description requirements for the statement of the Description, etc., in patent application [description requirements for the Scope ofClaims ( support requirements for inventions,Intellectual Property Management

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ventions) and description requirements
for the Description ( enablement requirements)], any violation alone constitutes a reason for refusal (Patent Act Article 49) or a ground for invalidation(Patent Act Article 123), and can also bea reason for an argument of invalidity.
Description requirements can be deemed
an important requisite not only for disclosing an invention to acquire a patentright, but also for exercising the patentright.
In recent years, the Trilateral Patent
Offices (the Japan Patent Office, theUnited States Patent and Trademark Office, and the European Patent Office)have conducted a series of comparative
studies concerning the actual practice ofpatent examination so as to facilitate thegeneration of application documents ofhigh quality. In December 2007, the results of a comparative study of legal situations and examination standards at the
Trilateral Patent Offices were published.
In June 2008, the results of a case study
on description requirements[1] were published. In these surveys, it was found that
although the legal situations and examination standards of the Trilateral Patent
Offices were similar, the manners of
their application to specific cases differed.
On the other hand, in our mid- tolong-term action scheme for fiscal
2007-2009, we compared the judgmentseral Patent Offices on the basis of actual
court decisions and appeal/trial decisions.
However, the results did not reflect the
judgments made in actual examinations
because those investigations were basedon court decisions and the like.
Hence, we proceeded to compare
judgments concerning description requirements at the Trilateral Patent Offices on the basis of actual cases of examination.
This article was prepared by a taskforce of the Second Subcommittee at theFirst Patent Committee for Fiscal 2012,
consisting of Masaaki INOUE (subcommittee chair, JSR Corporation), Keiko
HAYASHI (subcommittee vice-chair,Sekisui Chemical Co.,Ltd.), Teiji IWAMOTO (DAIICHI SANKYO CO.,LTD.),
Yasuharu UCHIBORI (OSAKA GASCO.,LTD. ), Akihiro OTSUKA (NIHON
MEDI-PHYSICS CO.,LTD), Fusato
KITANO (JFE TECHNO-RESEARCH
CO.,LTD), Tomofumi SAKIYAMA(KANEKA CORPORATION), Tetsuo
SHIMANO(Ube
Industries,Ltd.),
Katsutoshi TSUKAMOTO (HITACHICONSTRUCTION
MACHINERY
CO.,LTD.),
HajimeTSUCHIYA(Mitsubishi Plastics,Inc.), Masahiro
HACHIRO (Asahi Glass Company Ltd.),
Kenji HIRAYAMA (Sumitomo ElectricIndustries,Ltd.), and Hitoshi MITOMO(Fujitsu Techno Research Limited).

of description requirements at the Trilat1494

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2. Objective and Background for
Fiscal 2012
As stated above, between fiscal 2007
and fiscal 2009, the First Patent Committee analyzed sampled cases of lawsuits and appeals/trials for differences injudgments of description requirements
between Japan and foreign countries.
The results revealed no major differencesin the strictness of examination between
Japan and the US or Europe.[2-4] However, because the survey results from the
Trilateral Patent Offices were obtained
exclusively from cases involving lawsuits and the like, they do not always reflect the reality in the majority of casesthat do not reach such processes.
Meanwhile, regarding description
requirements, there have been a numberof suggestions posing the question ofwhether stricter assessment is made inJapanese examinations than in Europeanand US examinations.[1,5,6] In fact, practical affairs seem to be handled withstricter judgments of description requirements in Japan than in the US or
Europe.
Against this background, we compared the judgments on description requirements in the reasons for refusal
shown in examinations at the Trilateral
Patent Offices by comparing actually issued notices of reasons for refusal.

3. Details of the Survey
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A total of 1,013 PCT applications
that were internationally published in thefirst week of August 2006, and transferred to Japan, were sampled, of which
442 applications encountering first actions at all the Trilateral Patent Offices
were examined as the analytical population. The first actions at the Trilateral
Patent Offices were surveyed foroverall tendencies in the number of violations of description requirements andtendencies in the number of such violations by technical field.
Also examined were tendencies in
the judgments concerning description
requirements by checking in detail thefirst actions at the Trilateral Patent Offices.
Here, the first actions included not
only what are called “first notices ofreasons for refusal,” but also judgments
on description requirements shown inEuropean search reports and the like. We
examined first actions to compare matters pointed out because we thought thatall violations of description requirements
arising from the original Description, etc.,
should be pointed out in the first action
stage (at least the first notice of reasons
for refusal). In addition, we investigatedinternational publications as of the firstweek of August 2006 for the reason ofsampling cases about five years after theelapse of entry in the national phase,taking into account the timing of the ini-Intellectual Property Management

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tiation of examination in Europe.
The survey results are described insequence below. Regarding the results of
the aforementioned survey, actualcases are described with a focus on thefield of pharmaceuticals and chemicals,
in which characteristic differences were
found in the judgments of description
requirements among the Trilateral Patent
Offices.

4. Overall Tendencies in Notices
of Reasons for Refusal
The above-described sampled cases
were examined for the frequency of violations of each type of description requirements (support requirements, clarity
requirements, and enablement requirements) pointed out in the first action
stage. The overall tendencies shown in
Table 1 were revealed.
Table 1. Tendencies in violations of description requirements pointed out at the
Trilateral Patent Offices
Number of violations
pointed out(442 sampled cases)
Total

JP

US

EU

Support

120

79

27

34

Clarity

367

239

180

187

Enablement

109

75

49

19

377

259

204

204

Total for all description requirements

1496

In the 442 cases sampled, the numberof violations of description requirements
pointed out in the first action stage was
259 for Japan, 204 for the US, and 204
for Europe.
Comparing the number of violationsof description requirements pointed out
among the Trilateral Patent Offices, thefigure for Japan was found to be about
1.3 to 4 times higher than those for the
US and Europe; statistically, the percentage ratio of violations of description
requirements pointed out was highest inJapan.
A comparison by each type of description requirements revealed an overall tendency for violations of clarity requirements to be pointed out most frequently. Violations of clarity requirements accounted for 92% of all violations of any type of description requirements pointed out in Japan (239/259),
88% (180/204) in the US, and 92%(187/204) in Europe; the tendency was
similar among the Trilateral Patent Offices. As for support requirements andenablement requirements, the percentageof violations was 31% (79/259) and 29%(75/259), respectively, in Japan; 13%(27/204) and 24% (49/204), respectively,in the US; and 17% (34/204) and 9%(19/204), respectively, in Europe. Thus
the percentage of violations of support
requirements tended to be higher in Japan than in the US and Europe. Therefore, it can be estimated that these twoIntellectual Property Management

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types of description requirements havegreater influence on patent examinationin Japan than in the US and Europe.

5. Tendencies by Technical Field
5.1. Pharmaceuticals and Chemicals
Table 2. Tendencies in violations of description requirements pointed out in thefield of pharmaceuticals and chemicals
Number of violations
pointed out (208 sampledcases in the field ofpharmaceuticals andchemicals)
Total

JP

US

EU

Support

91

60

21

28

Clarity

188

127

100

88

Enablement

86

61

43

16

195

142

123

101

Total for all
description
requirements

In the field of pharmaceuticals andchemicals, violations of clarity requirements were the most frequently pointed
out, in line with the overall tendencies;
any violation of clarity requirements waspointed out at at least one of the Trilateral Patent Offices in 90% of the 208
cases sampled (188/208). Of the 188
cases of violations of clarity requirements pointed out at at least one of the
Trilateral Patent Offices, the percentageof violations of clarity requirements was
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68% (127/188) for Japan, 53% (100/188)
for the US, and 47% (88/188) for Europe; thus, the percentage was slightly
higher for Japan.
Any violation of support requirements was pointed out at at least one of
the Trilateral Patent Offices in 44% of
the 208 cases sampled (91/208). Of the
91 cases of any violation of support requirements pointed out at at least one of
the Trilateral Patent Offices, violations ofsupport requirements accounted for 66%(60/91) in Japan, 23% (21/91) in the US,
and 31% (28/91) in Europe; Japan tended
to have a higher percentage of violationsof support requirements pointed out thanthe US and Europe, and no major difference was found between the US and Europe.
On the other hand, any violation of
enablement requirements was pointed
out at at least one of the Trilateral Patent
Offices in 41% of the 208 cases sampled(86/208). Of the 86 cases of any violation of enablement requirements pointed
out at at least one of the Trilateral Patent
Offices, violations of enablement requirements accounted for 71% (61/86) inJapan, 50% (43/86) in the US, and 19%(16/86) in Europe; Japan and the US thus
tended to have a higher percentage of
violations of enablement requirements
pointed out than Europe, and Japan alsotended to have a higher percentage of
violations of enablement requirements
pointed out than the US.

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In addition, Japan exhibited a characteristic tendency in that both violationsof support requirements and those of enablement requirements were often concurrently pointed out (data not shown in
Table 2).
The above-described results revealed
the following tendencies as a whole in
the field of pharmaceuticals and chemicals.
In Japan, violations of support requirements and violations of enablement
requirements were more likely to be
pointed out than in the US and Europe.
In the US, violations of clarity requirements were most likely to be pointed out, followed by violations of enablement requirements; enablement requirements were judged relatively rigorously.
In Europe, violations of clarity requirements and violations of enablement
requirements were less likely to be
pointed out than in Japan and the US,
with the percentage of violations of enablement requirements pointed out being
particularly low.

5.2. Machinery and Electric Appliances
In the field of machinery and electric
appliances, violations of clarity requirements were most frequently pointed out,in line with the overall tendencies.

Table 3. Tendencies in violations of description requirements pointed out in thefield of machinery and electric appliances
Number of violations
pointed out (234 sampledcases in the field of machinery and electric appliances)
Total

JP

US

EP

Support

29

19

6

6

Clarity

179

112

80

99

Enablement

23

15

6

3

182

117

81

103

Total for all
description
requirements

Any violation of clarity requirements
was pointed out at at least one of the Trilateral Patent Offices in 76% of the 234
cases sampled (179/234). The percentageof violations of clarity requirements outof the 179 cases in which any violationof clarity requirements was pointed out
at at least one of the Trilateral Patent Offices was 63% (112/179) for Japan, 45%(80/179) for the US, and 55% (99/179)
for Europe; the percentage was higher
for Japan.
In the field of machinery and electric
appliances, the percentage of violationsof support requirements or violations ofenablement requirements pointed out
among the 234 cases sampled was about
1-10%, which was lower than in the fieldof pharmaceuticals and chemicals. In ad-

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dition, no major difference was found in
the judgment of violations of support
requirements and violations of enablement requirements pointed out among
the Trilateral Patent Offices.
In summary, in the field of machinery and electric appliances, violations ofclarity requirements were frequently
pointed out, but the percentage of violations of other types of description requirements was lower at all the Trilateral
Patent Offices; as a whole, violations ofdescription requirements tended to beunlikely to be pointed out.
The above-described results revealed
the following tendencies as a whole in
the field of machinery and electric appliances.
In Japan, violations were more likely to
be pointed out for all types of description
requirements than in the US and Europe,
although the differences were not solarge. Violations of support requirements
and violations of enablement requirements were pointed out at moderate percentages of about 6-8% of the 234 cases
sampled.
In the US and Europe, violations ofsupport requirements and violations ofenablement requirements were pointed
out at extremely low percentages of lessthan 3% of the 234 cases sampled; violations of clarity requirements accounted
for the majority of violations of description requirements.

5.3. Synopsis
The above-described statistical findings lead to the tendencies shown below.
First, it can be said that Japan has thehighest rates of violations of description
requirements being pointed out among
the Trilateral Offices. This is true forboth technical fields examined, and holds
for all the three types of description requirements; therefore, this tendency is
considered to be universal. It can therefore be concluded that violations of description requirements are most likely to
be pointed out in Japan among the Trilateral Patent Offices.
On the other hand, comparing thetendencies for violations of description
requirements among the Trilateral Patent
Offices by technical field, some biases
are evident. First, for all of the three
types of description requirements, thepercentage of violations pointed out was
higher in the field of pharmaceuticals
and chemicals than in the field of machinery and electric appliances. This is
generally true for the Trilateral Patent
Offices, although there some variation
exists. In terms of the percentage of violations of description requirements
pointed out in Japan and the US, in particular, a considerable difference wasfound between the two technical fields.
Comparing the biases of the violations of each type of description requirements pointed out by technical field,

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still more conspicuous tendencies areevident. A finding of note was that thepercentage of violations of support requirements or violations of enablement
requirements was outstandingly higher inthe field of pharmaceuticals and chemicals than in the field of machinery andelectric appliances. Specifically, the percentage of violations of support requirements pointed out at the Trilateral Patent
Offices as a whole was 44% (91/208) in
the field of pharmaceuticals and chemicals and 12% (29/234) in the field ofmachinery and electric appliances; thepercentages in Japan alone were 29%(60/208) and 8% (19/234), respectively.
The percentage of violations of enablement requirements pointed out at the
Trilateral Patent Offices as a whole was
41% (86/208) in the field of pharmaceuticals and chemicals and 10% (23/234) inthe field of machinery and electric appliances, while the percentages in Japanalone were 29% (61/208) and 6%(15/234), respectively.
In summary, Japan was found to havethe highest percentage of violations ofdescription requirements pointed out
among the Trilateral Patent Offices.
Comparisons by technical field revealed
higher percentages of violations of description requirements pointed out in thefield of pharmaceuticals and chemicals
than in the field of machinery and electric appliances, with remarkably higher

support requirements and enablement
requirements.

percentages of violations pointed out for

DEVICE MATERIAL AND LIGHT

1500

6. Case Reviews (Pharmaceuticals and Chemicals)
As far as the field of pharmaceuticals
and chemicals is concerned, theabove-described statistical analysis revealed characteristic tendencies in the
judgment of violations of description requirements at the Trilateral Patent Offices. This finding is attributable to the possible greater reflection of differences inthe viewpoints on the judgments of violations of description requirements
among the Trilateral Patent Offices thanin other technical fields because the experimental section and logical explanation play a major role in the understanding of the details of the invention.
Hence, we checked details of the violations of description requirements
pointed out in the first action stage in thefield of pharmaceuticals and chemicals at
the Trilateral Patent Offices. Shown below are case narratives based on comparative results.

6.1. Enablement Requirements
Case 1(i) Bibliography
Title of the Invention:
NOVEL ORGANIC LIGHT EMITTINGIntellectual Property Management

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EMITTING DEVICE USING THE
SAME
Japanese patent application number (kohyo publication number):
JP Application 2007-529722(JP-T-2008-511155)
International application number (international publication number):
PCT/KR2005/003169(WO2006/080637)
US application number (US publication
number):US11/66085 (US2007/0292715)
European application number (European
publication number):
EP05856354 (EP1791927)(ii) Summary of the first reason(s) for
refusal in JapanThe Examiner asserted that for thecompound represented by [CHEMICALFORMULA 1], described in claim 1, noembodiment is given in the Description
or elsewhere (only seven structurally
similar compounds described in Examples), and that it remains unknown tothose skilled in the art whether othercompounds are equivalently useful asorganic light emitting devices, pointing
out that the invention described in theclaim in question does not fulfill the enablement requirements.

[CHEMICAL FORMULA 1](iii) Results of examinations concerning
description requirements at the Trilateral
Patent Offices
Japan: Violations of clarity requirements
and enablement requirements.
US: Violation of clarity requirements.
Europe: Violations of support requirements and enablement requirements.
In the Japanese and European examinations, it was judged that enablement
requirements were not fulfilled, with thecompounds disclosed in the Examples as
the starting point.
(iv) Discussion
In this case, an effect of the invention
was verified for all of the seven compounds produced according to the Examples. Considering the fact that a site ofelectron assembly can serve as a key site
for a light-emitting material, the judgment made in the Japanese examinationthat it remained unknown whether theinvention is uniformly effective for allcompounds other than those described in
the Examples appears to be somewhat
rigorous to the Applicant.
In the European examination as well,

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it was pointed out that it remained unknown whether the invention is also applicable as a device to compounds otherthan those described in the Examples.
Although this is also true for the Japanese examination, a more detailed judgment was made in the Japanese examination concerning the applicability of theinvention to “other compounds” having a
different functional group other thanthose in any of the compounds describedin the Examples, taking note of the
choice of functional group in the chemical formula of interest. In contrast, theEuropean examination did not mention
individual functional groups, but made a
judgment on the possibility of enablement of compounds other than those described in the Examples.
Hence, the official approach to judging the fulfillment of enablement requirements in patent examination appears to be somewhat different between
Japan and Europe.
In the US, violations of clarity requirements were pointed out; however,these suggestions did not significantly
limit the scope of the compound described in claim 1.
Case 2(i) Bibliography
Title of the Invention:
METHOD FOR PRODUCING ISOCHROMANE AND DERIVATIVESJapanese patent application number (kohyo publication number):
JP Application 2007-552629(JP-T-2008-528545)
International application number (international publication number):
PCT/EP2006/050401 (WO2006/079622)
US application number (US publication
number):US11/275731 (US2006/0173196)
European application number (European
publication number):
EP06707815 (EP1844033)(ii) Summary of the first reason(s) for
refusal in JapanThe Examiner asserted that for thereaction described in claim 1, the orientation and selectivity in the Friedel-Craft
reaction vary depending on the electrophilicity and binding position of thegroup R4, that the production examples
given in the Examples are no more thanexamples, and that there are also somecases in which desired products are notobtained to a sufficient extent from someof the compounds of Formula 1 with abroad range of substituents by the method according to the invention of the present application (the underline drawn by
the author; the same applies below),pointing out that the claim in question
does not fulfill the enablement requirements.

THEREOF
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(iii) Results of examinations concerning
description requirements at the Trilateral
Patent Offices
Japan: Violations of support requirements, enablement requirements, andclarity requirements.
US: Violation of clarity requirements.
Europe: No indications.
Only in the Japanese examination,
the application was judged not to fulfill
enablement requirements with the only
manufacturing method disclosed in the
Examples as the starting point.
(iv) Discussion
In the Japanese examination of thiscase, the Examiner pointed out a violation of enablement requirements for theclaim in question, showing specificallythe probability that when producing acompound with a substituent other thanthose described in the Examples, a side
reaction can occur in the presence of adifferent substituent.
In any invention of a method for
manufacturing a product in the art, it is
not impossible to estimate reaction results as to whether the position andchoice of substituent influences the reaction (whether the reaction proceeds1503

equivalently) on the basis of Example 1
while taking into account the electronicand steric effects of the substituent on
the reaction site. Therefore, it appears
that it cannot always be concluded thatthe invention is not applicable to any
compound other than the claimed compound merely for the reason that only
Example 1 is available. In this regard,
the judgment in the Japanese examination of this case appears to be somewhat
rigorous.
Case 3(i) Bibliography
Title of the Invention:
PHENYL METHANONE DERIVATIVES AND THEIR USE AS GLYCINE
TRANSPORTER 1 INHIBITORSJapanese patent application number (kohyo publication number):
JP Application 2007-552553(JP-T-2008-528526)
International application number (international publication number):
PCT/EP2006/000361 (WO2006/079467)
US application number (US publication
number):US11/338266 (US2006/0167023)
European application number (European
publication number):
EP06706263 (EP1844045)(ii) Summary of the first reason(s) for
refusal in JapanThe Examiner asserted that because

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the compounds represented by Formulas
IA and IB described in claim 1 are understood to indicate a broad range ofcompounds, “it cannot be estimated thateven compounds differing largely fromthe compounds disclosed in the Examples in terms of ring structure and substituent structure possess similar pharmacological activity, or can be producedin the same manner without requiringexcess trials and errors,” pointing outthat the claim in question does not fulfill
the enablement requirements.

pointed out, with the assertion that the“cyclic amine, non-cyclic amine” (R1)
described in the claim in question is notdescribed in the Description in a mannersuch that it can be understood as a structural feature as meant by the invention ofthis application. On the other hand, inEurope, no more than a violation of clarity requirements was pointed out, withthe assertion that the descriptions of“lower alkyl” and the like are unclear.

(iii) Results of examinations concerning
description requirements at the Trilateral
Patent Offices
Japan: Violation of enablement requirements.
US: Violation of support requirements.
Europe: Violation of clarity requirements.
In the US and European examinations,the application was not rejected for thereason of a violation of enablement requirements, whereas only in the Japaneseexamination, it was judged that enablerequirements were not fulfilled with thecompounds disclosed in the Examples as
the starting point. In contrast, in the US,(iv) Discussion
The invention of this application ischaracterized by its identity as “novelcompounds having a common backbone”
represented by the formulas IA and IB
described in claim 1, and in the art, there
are not a few cases in which the actionand effect (pharmacological efficacy)
vary as some substituents differ, evenwith the same common backbone.
However, it was only in Japan that a
violation of enablement requirements
was pointed out, and in this regard, thejudgment concerning enablement requirements appears to be more rigorous
in Japan than in the US and Europe.
Regarding the method of manufacturing the compounds, because “a specificmanufacturing method” using “a known
or available starting material” was disclosed, and because the manufacturingmethod is nothing more than “a common
chemical reaction,” it is unlikely thata violation of support requirements wasthose skilled in the art would think,

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merely for the reason that no Examples
are available, that excess trials and errors
are unavoidable to manufacture related
compounds other than the compounds
shown in the Examples (falling in the
Scope of Claims).7) In this regard, it appears that the judgment concerning theviolation of enablement requirements inJapan in this case was somewhat rigorous.
Case 4(i) Bibliography
Title of the Invention:
COMPOUNDS AND COMPOSITIONSAS PROTEIN KINASE INHIBITORSJapanese patent application number (kohyo publication number):
JP Application 2007-553154(JP-T-2008-528585)
International application number (international publication number):
PCT/US2006/002266 (WO2006/081172)
US application number (US publication
number):US11/814912 (US2009/0105250)
European application number (European
publication number):
EP06733803 (EP1841431)

shown in the Examples, electron densityand backbone changes, and that evencompounds having such a substituent
cannot be recognized as being usable “inthe same manner (as pharmaceuticalcompounds) as with the compounds specifically disclosed in the Description as
pharmaceutical compounds with thesame pharmacological activity.”(iii) Results of examinations concerning
description requirements at the Trilateral
Patent Offices
Japan: Violations of support requirements and enablement requirements.
US: Violation of enablement requirements.
Europe: No indications.
In the Japanese and US examinations,the application was judged to involve a
violation of enablement requirements.

(ii) Summary of the first reason(s) for
refusal in Japan
Noting the substituent (R15) of thecompound pertaining to claim 1, theExaminer asserted that when the substit-(iv) Discussion
In the Japanese examination of thiscase, in view of the fact that the primary
backbone being an essential feature of
the invention was shared, and that theindication concerned the substituent
moiety (linkage moiety for the com-uent is an atom other than the atoms

pound as a whole), which is not the pri-

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mary backbone being an essential featureof the invention, it appears that the
judgment that compounds not specified
in the Examples were uniformly judged
as not fulfilling enablement requirements
was somewhat rigorous to the Applicant,solely for the reason that there were no
Examples of compounds other than thosewith a carbon atom as a substituent.
In this case, for the sake of protecting
the technical idea pertaining to the invention, we think that enablement requirements should be less rigorously
judged (than in the current situation),taking into account the availability ofmore than one specific example given for
novel pharmacologically active compounds with a common backbone.
The US examination was made fromthe viewpoints of “whether the compound can occur (can be produced)” and“whether it possesses the same pharmacological activity”; this was also true for
the Japanese examination.
However, in the US examination, thefunctional group of the compound described in claim 1 was not questioned,
but a violation of enablement requirements was pointed out for the reason thatit remains unknown whether the compound “forms a hydrate or salvation
product” and whether such a compound
exhibits “the same pharmacological activity.” Hence, the US judgment differedfrom Japan’s in that the US examinationture of the compound, but on the natureof the compound (whether it forms a hydrate or salvation product) and the form
in which the compound exhibits its
pharmacological activity (whether soluble in an aqueous medium and stable).
This is a feature of the US examination,and there are some cases in which violations of enablement requirements arepointed out for the same reason (e.g., International
Application
No.
PCT/IB2006/050285).

6.2. Support Requirements
Case 5(i) Bibliography
Title of the Invention:
METHOD FOR PRODUCING OPTICALLY ACTIVE HYDROXYMETHYLATED COMPOUNDS AND CATALYSTS USED THEREFOR
Japanese patent application number (kohyo publication number):
JP Application 2007-500589 (Domestic
Republication 2006-080425)
International application number (international publication number):
PCT/JP2006/301293 (WO2006/080425)
US application number (US publication
number):US11/795525 (US2008/0139835)
European application number (European
publication number):
EP06712459 (EP1852412)

was made with a focus not on the struc1506

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(ii) Summary of the first reason(s) for
refusal in JapanThe Examiner judged that “chiralbipyridine compounds” are described inclaims 1 and 5, and that while a verybroad range of compounds can be included in “chiral bipyridine compounds”
according to the definitions given therein,
these claims are in violation of support
requirements because only some of suchcompounds are adequately supported in
the Description.
In addition, with regard to claim 5,
the Examiner judged that the claim is inviolation of support requirements because “chiral bipyridine compounds” areapplicable as catalysts only to some reactions, and because a broad range ofother reactions are not adequately supported in the Description.

using the compound as a catalyst. This
examination result agrees with theabove-described statistical data tendency
in the field of pharmaceuticals andchemicals indicating that Japan is themost rigorous in judging violations ofsupport requirements.

(iii) Results of examinations concerning
description requirements at the Trilateral
Patent Offices
Japan: Violations of support requirements and clarity requirements.
US: No indications.
Europe: No indications.
In the US and European examinations, there was no refusal for the reasonof a violation of description requirements,
whereas in the Japanese examination only, the judgment was made to determine
whether support requirements were fulfilled on the basis of the compound dis-(iv) Discussion
The invention of this application
comprises a method for producing optically active hydroxymethylated compounds (manufacturing method invention) as claimed in claim 1, and a catalyst(product invention) as claimed in claim 5.
In the Description for the application,
one specific example of “a chiral pyridine compound” was given, and the useof “a chiral pyridine compound” and theeffect obtained were described to someextent.
In Japan, a violation of support requirements was pointed out not only forthe product invention, but also for the
manufacturing method invention for thereason that this case represents “a type(3) violation (The content disclosed in
the detailed explanation of the invention
can neither be expanded nor generalized
to the scope of the claimed invention
even in light of common generalknowledge as of the filing.).” In contrast,in the US and Europe, no judgment wasmade to the effect that description requirements were not fulfilled. Hence, itclosed in the Examples and the reaction

appears that the judgment of a violation

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of support requirements in the Japaneseexamination of the present case is more
rigorous than in the US and Europe.
Case 6(i) Bibliography
Title of the Invention:
METHOD AND COMPOSITION FOR
TREATING CENTRAL NERVOUS
SYSTEM DISORDERS
Japanese patent application number (kohyo publication number):
JP Application 2007-535160(JP-T-2008-528440)
International application number (international publication number):
PCT/JP2006/301704 (WO2006/080549)
US application number (US publication
number):11/339495 (US2012/0225938)
European application number (European
publication number):
11155203.0 (EP2332545)

because the compounds specified in the
Description constitute no more than apart of the compounds encompassed in
the claims, and because no description is
given about any action on any disease
other than the disease described in the
Examples, the inventions described in
the claims are beyond the scope definedin the Description.

(ii) Summary of the first reason(s) for
refusal in JapanThe reasons for refusal pointed out inthe examination in Japan include not only a novelty violation and an inventive
step violation, but also an enablement
requirement violation, a support requirement violation, and a clarity requirement. Regarding the support requirement violation, pointed out alongwith the enablement requirement, as a(iii) Results of examinations concerning
description requirements at the Trilateral
Patent Offices
Japan: Violations of support requirements, enablement requirements, andclarity requirements.
US: Violations of enablement requirements.
Europe: Violations of clarity requirements.
In Europe, reasons for refusal pertaining to description requirements
pointed out included a violation of clarity
requirements with the statement “theterm ‘11-deoxy-prostaglandin compound’ is unclear.”In the US, reasons for refusal pertaining to description requirements
pointed out included a violation of enablement requirement with the statement“Although the invention is described as
applicable to ischemia, Alzheimer’s disease, and the like, the invention is notdescribed as applicable to the treatmentof all central nervous system diseases.”reason for refusal, it was pointed out thatIn the US and Europe, no reasons for

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(iv) Discussion
In this case, an invention relating to acompound for the treatment of a central
nervous system disorder in mammalian
subjects, including an effective amountof a 11-deoxy-prostaglandin compound
was described in a claim. The structural
formula of the 11-deoxy-prostaglanding
compound was shown in claim 2 andthereafter, and a very large number ofcompounds were encompassed with theuse of the Markush form.
On the other hand, in the Description,
nothing more than the pharmacological
data for up to three compounds andphysical property data for 10 compounds
were described.
In this case, in the Japanese examination, a violation of support requirements
and a violation of enablement requirements were pointed out on the basis ofthere being too wide a range of statements in the claim compared with thosein the Description. This case, as in case 5,
can be said to represent “a type (3) violation (The content disclosed in the detailed explanation of the invention canneither be expanded nor generalized tothe scope of the claimed invention evenin light of common general knowledge asof the filing.).”On the other hand, in the US andEuropean examinations, no violation of1509

description requirements was pointed out
based on too wide a range of the description of the claim, supporting theabove-described statistical finding that
support requirements are judged more
rigorously in Japan than in the US andEurope.
Case 7(i) Bibliography
Title of the Invention: INDOLOPYRIDINE, BENZOFURANOPYRIDINE, AND BENZOTHIENOPYRIDINE
Japanese patent application number (kohyo publication number):
JP Application 2007-552644(JP-T-2008-528551)
International application number (international publication number):
PCT/EP2006/301293 (WO2006/079474)
US application number (US publication
number):US11/795762 (US2008/125452)
European application number (European
publication number):
EP06724828.6 (EP1856117)(ii) Summary of the first reason(s) for
refusal in JapanThe Examiner pointed out violationsof enablement requirements and support
requirements because claims 13 through20, which pertain to pharmaceuticals, are
not described to allow a specific understanding of which compound possesses

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what pharmacological action, and because their action is not obvious. In addition, the Examiner likewise pointed out
violations of support requirements, aswell as enablement requirements, forclaims 14 through 20, which disclosetechniques pertaining to diseases that are
responsive to apoptosis induction, because there is no description to allow a
specific understanding of the fact that thecompound described in claim 1 possesses activity on apoptosis, and becausesuch activity is not obvious.
(iii) Results of examinations concerning
description requirements at the Trilateral
Patent Offices
Japan: Violations of support requirements, enablement requirements, andclarity requirements.
US: Violations of enablement requirements.
Europe: No indications.
In the Japanese notice of reasons forrefusal, for claim 13, which claims apharmaceutical composition, a violationof support requirements, along with aviolation of enablement requirements,
was pointed out. (On the other hand, regarding clarity requirements, it waspointed out that “for example” was included in the claim, and that a tradename appeared in the claim.)
In the US, the Description described
only pharmacological data for somecompounds. It was judged that the ap1510

plication involved a violation of enablement requirements for the reason that
although the claimed structural formula
includes hundreds of compounds, thepharmacological efficacy of each cannot
be predicted.
(iv) Discussion
The indications of violations of enablement requirements were basically thesame between Japan and the US; however, in Japan, a violation of support requirements was also pointed out (this is
the same in case 6 above). Regarding
enablement requirements, the pharmacological effect can differ depending on
the choice of substituent in the pharmaceutical field, and it can be thought reasonable that a violation of enablement
requirements is pointed out for the reason that not all the compounds describedin the claim exhibit similar action.
However, a violation of support requirements was concurrently pointed out
despite the fact that only a violation of
enablement requirements should bepointed out; it appears that, in this regard,
violations of support requirements are
judged more rigorously in Japan than in
the US and Europe.

6.3. Clarity Requirements
Case 8(i) Bibliography
Title of the Invention:

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METHOD FOR COLOURING AN OPTICAL LENS COMPRISING A
PRINTING PRIMER, AND OPTICAL
COLOURED LENS COMPRISINGSUCH A PRINTING PRIMER
Japanese patent application number (kohyo publication number):
JP Application 2007-551711(JP-T-2008-528253)
International application number (international publication number):
PCT/FR2006/000167 (WO2006079715)
US application number (US publication
number):US11/814146 (US2008/0127432)
European application number (European
publication number):
EP06709166.0 (EP1842087)(ii) Summary of the first reason(s) for
refusal in Japan
This case pertains to a method ofcolouring an optical lens comprising aparticular transparent printing primer
capable of being colored by ink jet
printing, and another invention, and theclarity was questioned of the “water-dispersible polymer,” “colloid,” and“absorbent polymer” that constitute the
Scope of Claims.
In the examination in Japan, the reason for refusal was pointed out because“the scope of substances encompassed inthe ‘water-dispersible polymer,’ ‘colloid,’and ‘absorbent polymer’ is unclear.”(iii) Results of examinations concerning
description requirements at the Trilateral
Patent Offices
Japan: Violations of clarity requirements
and support requirements.
US: Claim objections.
Europe: No indications.
(iv) Discussion
In Europe, no reason for refusal due
to an improper description was pointed
out. In the US as well, a reason for refusal due to claim objections was pointed
out, but it concerned nothing more than aformal deficiency concerning the usageof and/or.
In the Japanese examination, a violation of clarity requirements was pointed
out merely for the reason that “the scopeof substances encompassed in ‘water-dispersible polymer,’ ‘colloid,’ and‘absorbent polymer’ was not clear,” rather than the reason pertaining to theclarity of the terms.
Therefore, the assertion of being unclear can be attributed to the inability toclearly identify one invention from thedescription of one claim as a result of theunclearness of the scope of the substances encompassed.
It should be noted, however, that noadequate explanation appears to havebeen made with regard to why the description of the claim was judged as unclear when the scope of each substance isunclear. It is desired that the Examiner

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specify in the notice of reasons for refusal the specific reason why the invention cannot be identified when the scopeof substances encompassed is unclear (atleast an explanation is desired that clarifies the violation type in the examination
standards).
Such practice is expected to elucidate
any discrepancy of recognition between
the Examiner and the Applicant, ensuringthat the Applicant will be afforded an
opportunity to provide a full explanation
through written arguments and the like.
Case 9(i) Bibliography
Title of the Invention:
ANTIBACTERIAL AGENTS
Japanese patent application number (kohyo publication number):
JP Application 2007-553156(JP-T-2008-528586)
International application number (international publication number):
PCT/US2006/002280 (WO2006/081178)
US application number (US publication
number):US11/814612 (US2008/0146551)
European application number (European
publication number):
EP20060719228 (EP1846416)

clarity requirements, but also because of
violations of industrial applicability, enablement requirements, and support requirements. Regarding the violation ofclarity requirements, it was asserted thatwith regard to the substituent R13 inclaim 1, it remains unknown which term
is modified by the statement “contains up
to four substituted or non-substituted
hetero atoms in each ring, and at least
one of rings (a) and (b) are aromaticrings,” and that it is unclear whether R13
optionally contains a double ring or acarbon ring in addition to the heterocyclic ring system (A).
In addition to these reasons, a violation of enablement requirements and a
violation of support requirements werepointed out.
(iii) Results of examinations concerning
description requirements at the Trilateral
Patent Offices
Japan: Violations of clarity requirements,
enablement requirements, and support
requirements.
US: No indications.
Europe: No indications.
In the US and Europe, unlike in Japan, no violations of clarity requirements
were pointed out as reasons for refusal.

(ii) Summary of the first reason(s) for
refusal in JapanThe Examiner asserted reasons for(iv) Discussion
A violation of clarity requirements waspointed out in the Japanese examination,refusal not only because of a violation ofwhereas in the US and Europe, no viola-

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tions of clarity requirements were pointed out for the same reason. Claim 1
might be judged as unclear due to a deficiency in the translation from English to
Japanese.

(1) Enablement requirements
Reviewing the individual cases, somecases were found in which the judgment
appeared to be more rigorous in Japan
than in the US and Europe.
The Japanese examination standards

enablement requirements pointed out,
including “only the specific working
mode is stated in the detailed explanationof the invention in a manner which enables a person skilled in the art to carryout the invention, and therefore, there isa well-founded reason that a person
skilled in the art would be unable to carry out the parts of the claim which are
not stated in the mode for carrying out
the invention even by taking into accountthe statements of the description anddrawings, as well as common generalknowledge as of the filing. (Note thatmethods of experimentation and analysis
may be among common generalknowledge as of the filing.)” (cited fromthe Examination Guidelines for Patentand Utility Model in Japan). Examples ofsuch well-founded reasons are given, including “A rational reasoning can bemade that the strain-correction of theworking example is inappropriate(3.2.2.2(1))” and “A rational reasoning
can be made that such a process is inappropriate […] in view of technical matters such as a very large difference in theorientation (3.2.2.2(2)).”
However, as in case 4, some cases
were found in which the application was
rejected for the reason of a violation of
enablement requirements despite thatfact that the indicated grounds (reasons)
were abstract, such as changes in “electron density distribution” and “com-give examples of cases of a violation ofpound backbone.” It is considered to be

6.4. Synopsis
Comparing the indications pointed
out in the notices of reasons for refusal at
the Trilateral Patent Offices, it appearedthat the judgment is more rigorous in Japan than in the US and Europe with regard to violations of the three types ofdescription requirements (especially violations of enablement requirements andviolations of support requirements).
Among the inventions in the field ofpharmaceuticals and chemicals investigated herein, in particular, some cases
were found in the Japanese examinationin which description requirements were
judged as being fulfilled for only thecompounds described in the Examples
and related compounds.
The results of the case investigations
are described below for each of the three
types of description requirements.

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somewhat rigorous to the Applicant who
has published the essential nature of theinvention (basic backbone, primary
backbone) to make the uniform judgmentthat enablement requirements are notfulfilled for such a reason alone.
In addition, as mentioned in case 3,
not a few cases were found in which it
was judged that even when alternative
substituents are mentioned for a compound described in a claim, enable requirements are not fulfilled for compounds not specified in the Examples.
Other cases investigated included somecases in which a violation of enablement
requirements was pointed out only in theJapanese examination for the reason that
the Examples (particularly pharmacological data demonstrating action andeffect) were only available for particularcompounds (e.g., Japanese Patent Application 2007-551631 “NEW PHARMACEUTICAL COMPOSITION CONTAINING CANDESARTAN CILEXETIL AS LIPOPHILIC CRYSTALLINE
SUBSTANCE”).
There are not a few cases in which
the nature of a pharmaceutical or chemical invention cannot be understoodmerely by knowing its structure; there
are not a few cases in which the nature
can be made to vary widely simply bychanging some functional groups.[8,9] Inthese circumstances, in pharmaceuticaland chemical inventions, a larger number

enablement requirements for a broad
range of invention.[10] However, it isusually impossible to provide Examples
for all possible embodiments. Therefore,
it appears that it can be judged that enablement requirements are fulfilled, provided that both more than one Example
to support the characteristic part of theinvention and a specific and logical explanation for rationalizing the same enablement for compounds other than thosespecified in the Examples are available.

of Examples are often required to fulfill

US or Europe (this is also true for case 7).

1514(2) Support requirements
As stated for the above-described
statistical findings, violations of support
requirements tended to be often judged
more rigorously in Japan than in the US
and Europe.
For example, in case 5, despite an
explanation based on a description in the
Examples as the ground, it was judgedthat support requirements were not fulfilled in the Description except for someembodiments.
In case 6, it was judged that support
requirements were not fulfilled for reasons that the compounds specified in the
Description are nothing more than someof the compounds encompassed in theclaim in question, and that no effect was
described on diseases other than thosedescribed in the Examples.
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In addition to these cases, more than one
case was found in which no violations ofsupport requirements were pointed out inthe US and European examinations,whereas in Japan a violation of support
requirements was pointed out. This finding demonstrates that in the field ofpharmaceuticals, violations of support
requirements were relatively rigorously
judged in Japan.
In cases 6 and 7, both violations ofsupport requirements and violations ofenablement requirements were concurrently pointed out. Including these cases,
many cases were found in which support
requirements and violations of enablement requirements were concurrently
pointed out in the field of pharmaceuticals and chemicals. This is a particularlycommonly observed tendency in Japanese examinations.
Essentially, support requirements andenablement requirements are distinct
from each other because they are evaluated using respective systems with different objectives.[11] Therefore, thesetypes of description requirements should
be separately evaluated and judged. In
the chemistry field, however, there are
not a few cases in which both violationsof support requirements and violations ofenablement requirements are concurrently pointed out without separately
evaluating them in detail.
A recently published article[12] states

port requirements and the judgment on aviolation of enablement requirements
sometimes agree with each other for use
inventions, novel substance/composition
inventions,
and
the
like.
The
above-described tendencies in the chemistry field are considered to reflect thesecircumstances.
It should be noted, however, that in
the context of lawsuits, actions that canbe taken by the Applicant are considered
to differ between violations of support
requirements and violations of enablement requirements[13,14]; in some cases, it
is too rigorous for the Applicant that violations of support requirements are easily pointed out even in cases that should
essentially be judged as violations ofenablement requirements. It is desiredthat more proper judgments be made in
the examination process.

that the judgment on a violation of sup-cal/chemical inventions.

1515(3) Clarity requirements
Regarding clarity requirements in thefield of pharmaceuticals and chemicals,
it appeared overall that their violations
were minor and could be dealt with bymeans of corrections and the like. Essentially, clarity requirements should be
deemed fulfilled, provided that the description in the Scope of Claims isclear.[15] As long as adequate attention is
exercised to this regard, it is considered
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(4) Points of note for preparing descriptions
With the above-described findings in
mind, points of note for writing a good
patent Description are discussed below.
First, the Applicant should endeavor
to provide more than one Example withadequate variation for “any invention forwhich a patent right is most wanted,” andto fully explain the invention describedin the Scope of Claims to an extent thatallows those skilled in the art to solve theproblem, while accurately identifying the
portion that is advantageous over theprior art (characterizing portion of theinvention).
Meanwhile, for “any invention forwhich a patent right is wanted,” the Applicant should endeavor to be able to explain that “the scope of the invention canbe embodied in full” on the basis of the
Examples in specific and logical manners, in addition to the aforementioned
requirement for the Examples.
In addition, while attention should be
exercised to describe the essential portion of the invention clearly and completely in preparing the Description, it isalso necessary that the Applicant be
careful not to deny the inventive step of
his/her own invention due to excessawareness of the aforementioned specificand logical assertion.

We compared official judgments
concerning description requirements at
the Trilateral Patent Offices (Japan, theUS, Europe) on the basis of actual cases,
including notices of reasons for refusal.
As a result, the number of indications
pointed out with regard to description
requirements tended to be higher in Japan than in the US and Europe. Thisagrees with the usual impression of actual practice and opinions given in published reviews.[1, 5, 6] On the other hand, acomparison of the tendencies for violations of each type of description requirements pointed out at the Trilateral
Patent Offices revealed some cases inwhich more rigorous indications werepointed out in the US and Europe than inJapan, although this is not discussed in
the text of this article. This is attributable
to possible differences in the content of
indications due to varied viewpoints ofdescription requirements among the Trilateral Patent Offices. It can be concluded that a key to successful obtainment ofa patent right at the Trilateral Patent Offices is for the Applicant to fully understand the varied regulations and their application among the Trilateral Patent Offices in preparing the Description.
On the other hand, it can be said thatthe presence of differences in legal regulations and their application among the
Trilateral Patent Offices poses not a

7. Conclusion

small burden on the Applicant. Further-

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more, it would be even more troublesome for the Applicant from the viewpoints of patent right utilization and patent management in the event of theemergence of varied scopes of patentright due to the different degrees of rigorousness in the judgments of violationsof description requirements among the
Trilateral Patent Offices.
Therefore, it is hoped that early harmonization be achieved with regard to
the handling of description requirements
so as to lessen the burdens on the Applicant.
Notes
1) Document Published by the Japanese
Patent Office: A comparison of examination practices among the Trilateral
Patent Offices / case study on description requirements (in Japanese) (titleof the original document: Comparative
Study on Hypothetical/Real Cases:
Requirement for Disclosure andClaims), published in June 2008.
(http://www.jpo.go.jp/torikkumi/kokus
ai/kokusai3/pdf/sinsa_jitumu_3kyoku/
kisai_honbun.pdf., accessed on March
22, 2013)
2) The Third Subcommittee in the First
Patent Committee: A discussion ofJapanese, American, European, Chinese, and Korean judgments concerning description requirements for the
Description, etc. (in Japanese). JIPA
Newsletter Vol. 58, No. 8 (2008), pp.
1517

1019-1031.
3) The Second Subcommittee, the First
Patent Committee: Comparison of
judgments concerning description requirements among responding familieson the basis of US court decisions andexaminations (in Japanese). JIPA
Newsletter Vol. 59, No. 12 (2009), pp.
1615-1629.
4) The Second Subcommittee in the First
Patent Committee: Comparison of
judgments concerning description requirements among responding familieson the basis of European appeal/trial
decisions (in Japanese). JIPA Newsletter Vol. 60, No. 10 (2010), pp.
1633-1650.
5) Fiscal 2007 JPO Industrial Property
Issue Research Report: Survey of patent examination practice (description
requirements) An
investigational
study of description requirements inthe field of biotechnology , pp.
173-201.
(http://www.jpo.go.jp/shiryou/toushin/chousa/pdf/zaisanken/1904bio_honpen.pdf., accessed on March 22, 2013)6) European Commission: Summaries ofcontributions to the Public Consultation on: “The future of EU Japan tradeand economic relations,” p.1.
(http://www.jetro.go.jp/world/europe/j
p/pdf/20110223.pdf, accessed on
March 22, 2013)
7) In 2011 “gyo-ke” (high court administrative litigation case, first trial) CaseIntellectual Property Management

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Nos. 10146 and 10147, for example, it
was stated, “For product inventions, a
specific description of the method for
producing the product should be specifically described in the Description;
however, it can be judged that theabove-described enablement requirements are fulfilled, even in the absence of such a description, provided
that those skilled in the art are able toproduce the product on the basis ofcommon general technical knowledge
as of the filing.”
8) The Third Subcommittee in the Second Patent Committee: “A comparisonof judgments concerning description
requirements for the Description, etc.,
by the Japanese Patent Office and law
courts” (in Japanese). JIPA NewsletterVol. 61, No. 8 (2011), pp. 1133-1149.
9) In 1990 “gyo-ke” Case No. 243, forexample, it was stated, “It is commonly recognized by those skilled in
the art that it is generally difficult topredict the utility of a chemical substance invention merely from thechemical structure thereof, which
structure cannot be revealed without
testing, and this is a fact that is prominent to the present court of justice.
Therefore, to know the utility of thechemical substance invention, it isnecessary to demonstrate the utility bymaking an actual test, or for thoseskilled in the art to be able to recog-

test.”
10) A.I.P.P.I., Vol. 58, No. 1 (2013), pp.
6-21.
11) In 2009 “gyo-ke” Case No. 10033,
for example, the Intellectual Property
High Court stated, “The trial decisionin the reason thereof says, ‘in a use
invention for a pharmaceutical, […]for an invention seeking a patent grant
to be recognized as being described in
the detailed explanation of the invention, it is necessary that the utility of
the use be supported by providing
pharmacological data or an equivalent
in the detailed explanation of the invention’ (Written Trial Decision page2, lines 22-29). It cannot be denied
that the same statement applies insome cases in relation to the premisefor judging the fulfillment of requirements in Article 36(4)(i) of the Patent
Act in light of the gist of the term (i).”Even so, the Intellectual Property High
Court also stated, “the portion of thetrial decision that the statement in the
Scope of Claims does not fulfill therequirements specified in Article
36(6)(i) of the Patent Act unless the
Scope of Claims is described in thedetailed explanation of the invention
in a way such that ‘the utility of theuse is supported by providing pharmacological data or an equivalent’ is
not always applicable; and given the
judgment of a violation of Article

nize the utility from results of the36(6)(i) of the Patent Act with this

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portion as the only reason, there
should be a reasoning failure unlesssuch special circumstances exist”
12) Sueyoshi T: Significance of the separate existence of enablement requirements and support requirements(in Japanese). JIPA Newsletter Vol. 63,
No. 3 (2013), pp. 311-322.
13) In the greater consultation justice forwhat is called the polarizing film case[2005 “gyo-ke” Case No. 10042], it
was stated, “It should be said to constitute a violation of the gist of the patent system (a patent is not granted for
an invention unless the invention is tobe 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 Description by submitting experimental data
after filing the application so as tosupplement the content outside the
Description, while no examples aredisclosed in the detailed explanationof the invention to the extent that allows those skilled in the art to recognize the resolvability 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 the claimed
invention even in light of common
general knowledge as of the filing of
the application in this case,” ruling out

requirements by the ex post additionof experimental data.
14) On the other hand, in 2007 “gyo-ke”
Case No. 10131, for example, the applicant’s assertion of fulfillment ofenablement requirements by the submission of a certificate of experimental results was accepted.
15) In 2009 “gyo-ke” Case No. 10434,
for example, it was stated, “In interpreting Article 36(6)(ii) of the Patent
Act, it is unacceptable to require thatany technical significance in relation
to the functions, characteristics, problems to be solved, or action pertaining
to the invention be shown in the Scopeof Claims,” on the concept “While Article 36(6)(ii) of the Patent Act says
with regard to the description of the
Scope of Claims, ‘it is necessary thatthe scope of the claimed invention beclear,’ the gist of term (ii) is essentiallyexpressed in this statement, and it is
not required to describe other matters,such as functions, characteristics,
problems to be solved, or action, pertaining to the invention.”(Manuscript received May 31, 2013.)

the assertion of fulfillment of support
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