Comparison between IP5 Members of Judgments
on Requirements for Disclosure and Claims in Notification of
Reason for Refusal
The Second Subcommittee of the First Patent Committee*
Japan Intellectual Property Association
Abstract
Since fiscal 2013, the Second Subcommittee of the First Patent Committee (the “Subcommittee”)
has been surveying trends in judgments in first actions of non-compliance with the requirements fordisclosure and claims. In fiscal 2013, we conducted a survey on PCT filings whose receiving office is
the Japan Patent Office to compare judgements made by the Japanese, US and EU intellectual property
offices (“IP3”). The results obtained from the survey on IP3 showed that the Japan Patent Office foundthe greatest numbers of families to be non-compliant with the support requirement and the enablement
requirement, respectively, while it found the least number to be non-compliant with the clarity
requirement. In fiscal 2014, we extended the scope of the survey from fiscal 2013 to target theJapanese, US, EU, Chinese and Korean intellectual property offices (“IP5”) in examining trends injudgments in first actions of non-compliance with the requirements for disclosure and claims. A seriesof survey sessions revealed that, in a comparison between IP5 as well, the Japan Patent Office foundrelatively large numbers of families to be non-compliant with the support requirement and theenablement requirement, respectively, but a relatively small number to be non-compliant with theclarity requirement.
Table of Contents
1. Introduction
2. Survey Method
3. Overall Trends in Notification of Reasons for
Refusal
4. Trends by Technical Field
4.1 Pharmaceutical and Chemical Field
4.2 Mechanical and Electrical Field
4.3 Summary
5. Summary of Trends in Judgments by IP5
Offices
5.1 Japan
5.2. US
5.3. EU
5.4. China
5.5 Korea
6. Conclusion

criteria were similar between IP3, there weredifferences in the ways of applying these to
specific cases.1) In addition, more than one
literature source pointed out that judgments
regarding the requirements for disclosure andclaims made by Japanese examiners appeared tobe more stringent than EU and US
examiners.2)-5)
Meanwhile, the Joint Experts Group of
Patent Examination (JEGPE) formed by JPO,SIPO and KIPO released their “Comparative
Study Report on Requirements for Disclosure
and Claims” in November 2013 and“Comparative Case Study on Disclosure andClaims” in April 2015, which documented theresults of examination of specific cases by theseoffices, and revealed that there were differencesamong the three offices in judgments regarding
the requirements for disclosure and claims.6), 7)

1. Introduction* The Second Subcommittee of the First PatentCommittee for fiscal 2014

The “Comparative Study on Hypothetical/
Real Cases: Requirements for Disclosure andClaims,” publicized by IP3 in June, 2008
revealed that although the laws and examination
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Intellectual Property Management Vol.65 No.9 2015

The five IP members, which form theconference body of IP5, have been promoting acontinuous series of studies on how toharmonize the patent systems.8) Under thecircumstances described above, demands for theinternational harmonization of patent systems
have become increasingly pressing in recent
years. In response to this momentum, in 2013
IP5 established a conference body called PHEP
(Patent Harmonization Expert Panel) to promote
the harmonization of patent systems. Many
agendas were set up for PHEP designed toharmonize the patent systems between IP5
offices. Among these, the agenda for therequirements for disclosure and claims waschosen as one of the three priority agendas forstudy in 2014. It has been determined that theJapan Patent Office will play the role of lead
office and take the initiative in studying how toharmonize the requirements for disclosure andclaims between patent systems. Expectations aremounting that the PHEP study will accelerateharmonization of the requirements for disclosureand claims.
Against this background, since fiscal 2012,
the Subcommittee has been addressing acomparative study of PCT filings to compare
judgments in first actions (“FAs”) on therequirements for disclosure and claims by thepatent offices of different countries after
enteringthenational
phase.9)-10)The
Subcommittee has also launched a three-year
project from fiscal 2013 to sequentially study
PCT filings whose receiving office is the Japan
Patent Office, the US Patent and Trademark
Office and the European Patent Office. The
results obtained will be used to determine trends
in judgments on requirements for disclosure andclaims and to compare PCT filings between
different receiving offices. As the first phase of
the project, in fiscal 2013 the Subcommitteestudied PCT filings whose receiving office is theJapan Patent Office (hereinafter, “JP-PCT
filings”) to compare judgments on therequirements for disclosure and claims made by
the IP3 offices.10)
In examining trends in judgments on therequirements for disclosure and claims, in fiscal
2014 we extended the scope of the survey on
JP-PCT filings from fiscal 2013 to target the IP5
offices. This document reports certain findings
obtained through our survey concerning trends
in judgments on non-compliance with therequirements for disclosure and claims by IP5
offices.

This document was prepared by themembers of the Second Subcommittee of theFirst Patent Committee for fiscal 2014,
comprising:AkihiroOtsuka(NihonMedi-Physics, serving as Chairperson) Tetsuro
Shimano (Ube Industries, serving as Deputy
Chairperson), Masashi Mitomo (Subcommittee
Deputy Chairman, Fujitsu Techno Research),
Ken Ikuma (Seiko Epson), Toshihiro Ezoe
(Sony), Fusato Kitano (JFE Techno-Research),
Hiroyuki Kogure (Tsukishima Kikai), Hodaka
Jitsukawa (Fuji Seal International), Akihiko
Tanitame (Sumitomo Dainippon Pharma),Takeshi Negishi (Ricoh), Yukie Hagiwara (IIHI),
Akiko Honda (Daio Paper) and Katsuhiko Mori
(Sekisui Chemical).

2. Survey Method
As subjects of our survey, we extracted
those JP-PCT filings that were subject tointernational publication in the first weeks ofAugust 2006, December 2006, April 2007 andAugust 2007 respectively, and that weretransferred to IP5. The survey was conductedfollowing the procedure described below.
(1) Extracting subjects for the survey
As described above, for the study in fiscal
2013, we extracted JP-PCT filings (withinternational application numbers containing“JP”) that were transferred to all three countries(i.e. Japan, the US and the EU) and conducted
the survey based on the FAs of each country(which totaled 278 applications). For the study
in fiscal 2014, we extracted filings transferred to
Korea and those transferred to and registered in
China, in addition to those extracted for the
fiscal 2013 study. We narrowed the target of
extraction from filings transferred to China tothose registered in the country, because patent
files for relatively old filings targeted by thesurvey (i.e. with international publication dates
falling between 2006 and 2007) were notavailable if they were not registered in the
country, and thus it was impossible to obtain thecontents of their FAs.12) In this document, filings
based on the same PCT filing that weretransferred to different countries are collectively
referred to as a “family.”Intellectual Property Management Vol.65 No.9 20151169

(2) Confirmation of any findings of
non-compliance with the requirements fordisclosure and claims
We surveyed the contents of FAs issued in
China and Korea, in addition to the subject
filings extracted by the method described in (1),and confirmed any findings of non-compliancewith the requirements for disclosure and claims(i.e. non-compliance with the support
requirement, the clarity requirement and/or the
enablement requirement).
Since FAs in China and Korea are written in
the respective local languages, judgment onwhether or not an application filed in China or
Korea is non-compliant with the requirements
for disclosure and which of the threerequirements the non-compliance relates to werebasically made based on article numbers. In thecase of China, Article 26 (4) of the Patent Law
as amended in 2009 covers non-compliance with
two of the three requirements, i.e. the support
requirement and the clarity requirement, making
it impossible to distinguish which of suchrequirements a non-compliance relates to bymeans of the article number only, Therefore,
where Article 26 (4) of the Patent Law wasindicated, which of the requirements fordisclosure and claims a non-compliance relates
to was determined by using keywords, that is,
the Chinese characters indicating the nature of
the non-compliance (e.g. “不清楚” and “不支持”).
In the case of China, in addition to Article
26 (4) of the Patent Law, we confirmed any
findings of non-compliance with any of therequirements for disclosure and claims based on
the Implementing Regulations of the Patent Law.
We then recorded each of the cases of
non-compliance thus found, together with therequirement to which the non-compliance relates
to, as determined based on the content of thefinding (which was primarily determinedthrough the keyword used).13) This is because,
regardless of which of Article 26 of the Patent
Law and Article 20 of the Implementing
Regulations of the Patent Law an application
fails to satisfy, the failure will all the same
constitute a reason for refusal on the grounds of
non-compliance with any of the requirements fordisclosure and claims.

the requirements for disclosure and claims byeither China or Korea in step (2) above had been
amended by any of the IP5 offices prior to theirFAs. We also confirmed whether or not theclaims examined by the IP5 offices were
substantially the same with one another. If afiling was judged to be not viable forcomparison between IP5 offices, because,through amendment by some of the offices
before the FA, substantial changes had been
made to the element which constituted thereason for judgment of non-compliance with anyof the requirements for disclosure and claims,
that filing was excluded from the survey and therest of the filings (consisting of 81 families intotal) were used to form a population. However,some filings to which minor amendments weremade were not excluded from the population if
the amendment was for formality’s sake or forother immaterial reasons, because their claims
after amendment can be deemed to be viable forcomparison. FAs, as referred to herein, include
first notifications of the reasons for refusal, as
well as extended search reports, etc. issued in
the EU if they contain judgments regarding therequirements for disclosure and claims. Filings
for which the decision to grant a patent wasmade without any notification of reasons forrefusal being issued were counted as being
without any finding of non-compliance with therequirements for disclosure and claims. We used
FAs for comparison of the contents of
non-compliance findings because we consideredthat all findings of non-compliance with therequirements for disclosure and claims arisingfrom the initial specifications, etc. should havebeen indicated in FAs.
The sections below explain the survey
results, first showing the overall trends across alltechnical fields and then with the focus on
specific technical fields one by one.

3. Overall Trends in Notification of
Reasons for Refusal
Based on the population formed as
described above, we counted the number offamilies receiving indications in FAs of findingsof non-compliance with the requirements fordisclosure and claims (the support requirement,
the clarity requirement and the enablement
requirement) issued by IP5. The overall trends
identified are shown in Table 1. It should be
noted that the results shown below are based on
the population of 81 families and thus theirstatistical reliability may not necessarily be(3) Confirmation of any amendment
We confirmed whether or not the filings
that were found to be non-compliant with any of1170Intellectual Property Management Vol.65 No.9 2015

sufficient. The figures shown in the “All IP5”
column of the table indicate the numbers offamilies found to be non-compliant. Thoseshown in the “All requirements for disclosureand claims” row indicate the numbers of filings
found to be non-compliant by the IP5 offices,
respectively, not the total number of findings of
non-compliance by each office.
As shown in Table 1, 78 out of the 81
families comprising the population resulted in
one or more findings by at least one IP5 office of
non-compliance with the requirements fordisclosure and claims. In other words, the ratioof families that were not found by any of the IP5
offices to be non-compliant with any of therequirements for disclosure and claims was lessthan 4%. This may imply that it is practicallydifficult to prepare application documents thatcan satisfy all the requirements for disclosureand claims for all IP5 offices.

the requirements in terms of their percentage ofthe population, 54% of the population was foundto be non-compliant with the support
requirement, 94% with the clarity requirementand 27% with the enablement requirement.
Next, the number of filings (or families)
resulting in findings of non-compliance wascompared within IP5 offices for each of therequirements for disclosure and claims.
A comparison of the findings of
non-compliance showed larger numbers for the
support requirement for China and Japan andsmaller numbers for the US and the EU. When
comparing between China, which showed thegreatest number of filings resulting in findings(24), and the US, which showed the least
number of such findings (5), the difference wasby a factor of ca. 5, which is rather significant
when considering that the difference relates tothe results of examinations of the same claims
for the same invention. These results are
Table 1 Trends among IP5 offices in Findings
considered to support what has been pointed outof Non-compliance with Requirements forregarding the support requirement; that is,
Disclosure and Claims
examination of the support requirement is more
Number of filings (or families) resulting in a finding of arigorous in China and Japan.1), 7), 9)-11), 14)
non-compliance with requirements for disclosure and
The support requirement is a requirement
claims(Population: 81 families)
imposed on claims, and a judgment of
All IP5Japan
US
EU
China Korea
compliance or non-compliance with thismembers
requirement directly affects the extent of the
Support
44
19
5
7
24
11
scope of rights pertaining to an invention. The
Clarity
76
30
27
47
44
47
results above, showing large differences between
Enablement
22
13
7
4
1
6
All requirements
IP5 offices in the number of non-compliant
for disclosure and
78
42
31
48
53
49
filings found in terms of the support requirement,
claims
imply the probability of that being the cause ofdifferences in the scope of rights granted and
A comparison of the number of filings
consequent practical hindrances to applicants.
within the population of 81 families was thenIn the case of the enablement requirement,
made, resulting in an indication in the FA of awhile
no IP5 offices found many non-compliant
finding of a non-compliance with any of thefilings,
Japan showed by far the largest number
requirements for disclosure and claims. Theof such filings. In fact, other offices generally
results were 42 for Japan, 31 for the US, 48 forshowed less than half the number for Japan.
the EU, 53 for China and 49 for Korea, with
China showed a characteristic trend in which the
China showing the greatest number, followed bynumber of filings found to be non-compliant
Korea, the EU and Japan, and the US showing
with the support requirement was the largest but
the least number. When comparing China, which
the number of findings of non-compliance withshowed the greatest number of filings resulting
the enablement requirement was the least.
in findings, with the US, which showed the least
In Japan, there were a few cases where anumber of such filings, the difference was by afiling
was found to be non-compliant with thefactor of ca. 1.7.
supportrequirement and the enablement
From the comparison for each of the threerequirement
at the same time, on grounds that
requirements between the population of 81
aresubstantiallyalmost the same. Few suchfamilies, the numbers of filings (or families)
cases were observed at other offices.
resulting in findings of non-compliance in FAs
This fact may partly explain why Japan foundwere 44 for the support requirement, 76 for the
many filings to be non-compliant with theclarity requirement and 22 for the enablement
support requirement and the enablement
requirement. Expressing the results for each of
1171
Intellectual Property Management Vol.65 No.9 2015

requirement.
Finally, a comparison of the clarity
requirement between IP5 offices showed that theEU, Korea and China found more families to be
non-compliant with this requirement, while the
US and Japan found less. Some characteristics
were observed in the findings for the EU and
Korea for non-compliance with the clarity
requirement, which will be explained in moredetail later.

4. Trends by Technical Field
4.1 Pharmaceutical and chemical field
The numbers of filings (or families) thatwere found by IP5 to be non-compliant with therequirements for disclosure and claims in thepharmaceutical and chemical field are shown in
Table 2.
Among the above-described population (of81families), 50 families were classified as being
in the pharmaceutical and chemical field. As
shown in Table 2, all 50 families resulted in afinding by at least one IP5 office of
non-compliance with any of the requirements fordisclosure and claims. In other words, in thistechnical category, there were no families inwhich zero non-compliance was found by any
IP5 office.
Table 2 Trend in Findings of Non-compliancewith Requirements for Disclosure and Claims in
the Pharmaceutical and Chemical Field
Number of filings (or families) resulting in a finding of anon-compliance with requirements for disclosure andclaims(Population: 50 families)
All IP5

Japan

US

EU

China

Support

37

16

5

7

19

KR
11

Clarity

49

20

21

30

27

31

Enablement

18

10

7

3

1

6

All requirements
for disclosure andclaims

50

28

25

31

34

33

The numbers of filings resulting in
non-compliance with at least one of therequirements for disclosure and claims in thisfield were 28 for Japan, 25 for the US, 31 for theEU, 34 for China and 33 for Korea 33, ranking
China with the highest, followed by Korea, theEU and Japan, and placing the US with thelowest. When comparing between China, whichshowed the greatest number of filings found to
be non-compliant, and the US, which showed
the least number of such filings, the difference1172

was by a factor of ca. 1.4. This confirms that the
ranking of the number of findings by IP5 in thisfield coincides with the overall results describedabove, but that the differences between IP5
offices were smaller for this field than in theoverall results.
According to a comparison of each of thethree requirements among the population of 50
families classified as being in this field, thenumbers of families resulting in findings of
non-compliance in FAs were 37 for the support
requirement, 49 for the clarity requirement and18 for the enablement requirement. Expressing
the results for each of the requirements as apercentage of the population, 74% of the
population was found to be non-compliant withthe support requirement, 98% with the clarity
requirement and 36% with the enablement
requirement. The fact that the percentages offindings in the pharmaceutical and chemical
field were higher than the overall trends implies
that filings in this field are relatively susceptible
to finding of non-compliance with therequirements for disclosure and claims. In
particular, the percentages of findings of
non-compliance with the support requirement
and the enablement requirement were around 1.5
times those in the overall trend, and thesefindings are evidence for the fact that filings inthis field were particularly susceptible.
Next, the number of findings of
non-compliant filings for each of the threerequirements was compared between IP5 offices.
China and Japan found more filings to be
non-compliant with the support requirement andthe US and the EU found less, similar to theoverall trend. All the findings for the support
requirement made in the US, the EU and Korea
related to the pharmaceutical and chemical field,
in contrast to the mechanical and electrical field
to be detailed later.
Japan found the largest number of filings
that were non-compliant with the enablement
requirement while the number of non-compliant
filings found by other offices remained low,
similar to the overall trend. In contrast to themechanical and electrical field to be detailed
later, most of the findings for the enablement
requirement made in the US, China, the EU and
Korea related to the pharmaceutical andchemical field.
In the pharmaceutical and chemical field,
we observed that an abundance of embodiments
can be the grounds for being judged to satisfy
the support requirement and the enablement

Intellectual Property Management Vol.65 No.9 2015

requirement, and the details of this observation
will be given later.
A comparison of the clarity requirement
between IP5 offices showed that the EU, Korea
and China found more filings to be
non-compliant with this requirement, while the
US and Japan found less, similar to the overall
trend.
4.2 Mechanical and Electrical Field
The numbers of filings found by IP5 offices
to be non-compliant with the requirements fordisclosure and claims in the mechanical andelectrical field are shown in Table 3.
Table 3 Numbers of Findings ofNon-compliance with the Requirements forDisclosure and Claim in the Mechanical andElectrical Field
Number of filings (or families) resulting in a finding of anon-compliance with requirements for disclosure andclaims (Population: 31 families)
All IP5

Japan

US

EU

China

Support

7

3

0

0

5

Korea
0

Clarity

27

10

6

17

17

16

Enablement

4

3

0

1

0

0

All requirements
for disclosure andclaims

28

14

6

17

19

16

In the above-described population (of81families), 31 families were classified as being
in the mechanical and electrical field. As shownin Table 3, 28 out of the 31 families resulted in
one or more findings by at least one of the IP5
offices of non-compliance with the requirements
for disclosure and claims. The ratio of families
that were not found by any of IP5 to be
non-compliant with any of the requirements fordisclosure and claims was around 10%.
The numbers of filings resulting in
non-compliance with any of the requirements fordisclosure and claims in this field were 14 forJapan, 6 for the US, 17 for the EU, 19 for China
and 16 for Korea, ranking China with the highest,
followed by the EU, Korea and Japan, andplacing the US with the lowest. When
comparing China, which showed the greatest
number of filings resulting in findings, with theUS, which showed the least number of such
filings, the difference was by a factor of ca. 3.2.
It was thus confirmed that the rankings in thenumber of findings by IP5 offices in this fieldalmost coincide with the overall results
described above, but that the differences
between IP5 offices are larger for this field thanin the overall results.
A comparison of each of the threerequirements between the 31 families classified
in this field in the population showed thenumbers of families with findings of
non-compliance in FAs were 7 for the support
requirement, 27 for the clarity requirement and 4
for the enablement requirement. Expressing theresults for each of the requirements as apercentage of the population, 23% of the
population was found to be non-compliant withthe support requirement, 87% with the clarity
requirement and 13% with the enablement
requirement. The lower percentages for thefindings in the mechanical and electrical field
than in the overall trend imply that filings in thisfield are relatively insusceptible to findings of
non-compliance with the requirements fordisclosure and claims. In particular, thepercentages of non-compliance with the support
requirement and the enablement requirement
were both around half of those in overall trend,
and these findings are evidence for the fact thatfilings in this field were particularly
unsusceptible.
Next, the number of filings that were foundto be non-compliant with each of the threerequirements was compared between IP5 offices.
China and Japan found a few filings to be
non-compliant with the support requirement, but
the other IP5 offices found none. While thenumber of filings found to be non-compliant
with the support requirement across IP5 offices
was rather small, China and Japan accounted for
relatively high ratios in the total. This trend is inline with the overall trend described above.
Japan found 3 filings to be non-compliant
with the enablement requirement, while the restof the offices found none except for the EU,
which found one filing to be non-compliant.
Within the small number of filings found to be
non-compliant with the enablement requirement
across IP5 offices, Japan found the largest
number, which is in line with the overall trend
described above.
The results for the clarity requirement werealso in line with the overall trend describedabove; that is, the EU, Korea and China foundmore filings to be non-compliant with thisrequirement, while Japan found less and the US
found even less than Japan. As described above,
the US, the EU and Korea found few filings to
be non-compliant with the support requirement
and the enablement requirement. Most of theIntellectual Property Management Vol.65 No.9 2015

1173

filings found by these offices related to theclarity requirement.
4.3. Summary
The following trends can be identified fromthe statistical results described above.
Within the overall trend, certain differenceswere observed between IP5 offices in their
judgment of the requirements for disclosure andclaims. Japan found a relatively small number offilings that were non-compliant with the clarity
requirement, but in contrast to this, the numbersof filings it found to be non-compliant with thesupport requirement and the enablement
requirement were relatively large. In particular,
the number of filings found to be non-compliant
with the enablement requirement wassignificantly large when compared with the other
IP5 offices. The number of filings found to be
non-compliant with the support requirement was
the second largest following China, and was by
far larger than the other three IP5 offices. On theother hand, the US was notable for having foundfewer filings that were non-compliant with therequirements for disclosure and claims among
IP5 offices. While China found more filings to
be non-compliant with the requirements fordisclosure and claims among IP5 offices, thenumber of filings found to be non-compliant
with the enablement requirement was rather
small. The EU and Korea found relatively large
numbers of filings non-compliant with theclarity requirement, but not many in for the otherrequirements.
A comparison between IP5 offices of thetrends by technical field in the number of filings
found to be non-compliant with the requirements
for disclosure and claims showed that filings in
the pharmaceutical and chemical field weremore susceptible than those in the mechanicaland electrical field to being non-compliant withthe support requirement and the enablement
requirement. On the other hand, according to acomparison between IP5 offices of the ratios offilings found to be non-compliant with therequirements for disclosure and claims, IP5
offices showed greater differences in theirjudgement of non-compliance in the mechanicaland electrical field than in the pharmaceuticaland chemical field.

5. Summary of Trend in Judgments by
IP5 Members
1174This section summarizes the trend injudgments by IP5 offices of the requirements fordisclosure and claims, extracted from thestatistical results described above and based on
the results of the characteristic cases observedwith each IP5 office. This summary contains
part of the survey report prepared by the
Subcommittee on the comparative study of IP3
offices10) in order to facilitate an understandingof the comparative study of IP5 offices.
5.1 Japan
Japan found more filings to be
non-compliant with the support requirement andthe enablement requirement than other offices,and this trend was more prominent in thepharmaceutical and chemical field. For example,
applications for inventions of chemicalcompounds with more than one substituent
described in a Markush claim and those forinventions of compositions stipulated byparameters were more susceptible to findings of
non-compliancewiththeenablement
requirement on the grounds of the contents ofembodiments disclosed.
On the other hand, in the mechanical andelectrical field, some filings that involved claims
stated using functional expressions were foundto be non-compliant.
We then studied in detail the filings in thepharmaceutical and chemical field that were
found to be non-compliant with the support
requirement or the enablement requirement. As aresult, seven out of ten filings that were found to
be non-compliant with the enablement
requirement were also found to be
non-compliant with the support requirement.
We further studied the content of thefindings stated in FAs for these sevenapplications. In only one of the sevenapplications was the finding of non-compliancewith the support requirement accompanied by areason or grounds that were different from theones given for the enablement requirement. For
the other six applications, a reason or grounds
for non-compliance were given for the
enablement requirement only, and the support
requirement was accompanied by a merestatement that the finding of non-compliance
was for the same reason as for non-compliancewith the enablement requirement.
There is indeed a view that a
non-compliance with the support requirement
and non-compliance with the enablement

Intellectual Property Management Vol.65 No.9 2015

requirement are like the opposite sides of thesame coin.15) On the other hand, in the ruling forthe case of polarizing film (the expanded court
system), the view was stated that the support
requirement obviously deviates from the purposeof establishing the article.16)
An observation of responses of applicants
to notification of reasons for refusal revealed
that situations where an applicant is forced toamend his/her claim tend to occur in cases
where the statement in the detailed descriptionof the invention is not sufficient. If the applicant
chooses to respond without amending the claim,
the applicant needs to assert in a written opinion
that the invention in accordance with the claim
is the same as what is stated in the detailed
description of the invention.
With regard to the findings of
non-compliancewiththeenablement
requirement, however, there seems to be
sufficient room for counterargument without
amending the claim. More specifically, an
example of an approach to a counterargumentthat the applicant may take is to demonstrate thatthe invention in accordance with the claim isdescribed in the specification in a way that canbe sufficiently carried out by a third person
skilled in the art, by using the detailed
description of the invention as a basis for theargument or by submitting additional literature
or a certificate of experimental results.
The approach that the applicant should takewould thus vary depending on which of therequirements the finding of a non-compliancerelatesto.
Therefore,
whenfinding
non-compliance with two different requirements
at the same time, it is desirable that the examiner
indicates distinctive and different reasons or
grounds for the two findings in the notificationof reasons for refusal.
With regard to the clarity requirement,
some applications were found to be
non-compliant merely based on formality, on the
grounds that certain expressions, such as“approximately” and “substantially” were used.
These expressions may possibly make the scopeof claims ambiguous. Even so, it should be taken
into consideration that there exist certain artsthat would not be able to be protectedsufficiently unless such expressions were used.
In the mechanical and electrical field inparticular, there is often a range ofconfigurations that allows the functions to be
exhibited. For example, when an invention issuch that some of its parts suffice to have anear-circular shape, the shape of these parts isoften described as being formed roughly in acircular shape. Such an invention may be foundto be non-compliant with the clarity requirement
for formality’s sake, merely on the grounds ofthe use of the word “roughly.” In this case, theapplicant has no choice but to amend the term byremoving “roughly.” Such amendment would
cause certain disadvantages; for example, therights granted may be restricted to where theparts are in a true circular shape. We consider,therefore, that this kind of expression may wellbe acceptable as long as the meanings of such
expressions can be clearly understood byreferring to the statement in the specification or
the common general knowledge.
Examination should desirably be addressed
flexibly according to the content of each art.
5.2. USThe US found a relatively small number offilings to be non-compliant with therequirements for disclosure and claims, andshowed no distinctive statistical trends injudgments on these requirements whencompared with the other IP5 offices.
However, through a study of individual
cases, rigidity was observed in some of thejudgments of non-compliance with theenablement requirement. For example, substancepatent applications in the pharmaceutical field
were, almost without exception, found to be
non-compliant with the enablement requirementon the grounds of multiple court precedents ifthey state the solvates of a compound of
invention in the claims, but do not include any
embodiment (synthetic example) of such
solvates in the specification.
In the mechanical and electrical field, an
invention of an electric circuit was found to be
non-compliant with the enablement requirementon the grounds that the claims of the circuit were
not supported by any concrete circuit diagramsin the drawings.
5.3 EUThe EU is notable in that many cases of
non-compliance with the clarity requirement
were found across all technical fields.
In particular, in the case of claimed
inventions that include parameters, even thougha method for calculating the parameters wasstated in the detailed description of the invention,
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there were observed some cases where findingsof non-compliance with the clarity requirement
were made in such a manner as to force
applicants to amend the claims by making
additions. Although such findings may not cause
disadvantages leading to a decrease in the scopeof patent inventions, they are somewhat harsh on
applicants because they will increase the numberof occasions requiring responses on the part ofapplicants.
It was also confirmed that applications inwhich the invention was described (identified)by the result to be achieved were apt to receive
findings of non-compliance with the clarity
requirement in accordance with Guideline F-IV,
4.10.
In the case of the enablement requirement,
some cases were observed where, if a filing in
the pharmaceutical and chemical field did not
specify a range of the quantity of carbon atoms
in the compound, a finding was made to prompt
the applicant to add a claim stating a limitationon (or a range of) the quantity. In this respect, it
seems that the EU is applying the requirement ina more rigid manner than the other IP5 offices.
However, when viewed by third parties, thisattitude might not necessarily be excessively
stringent from the perspective of clarifying theouter limit of the invention.
There were some cases among the findings
made by the EU where filings that would befound by Japan to be non-compliant with thesupport requirement were handled as
non-compliance with the clarity requirement.
Judgmentof
which
requirementanon-compliance relates to is up to IP5 offices
and should be made in accordance with theirown examination criteria. With this fact in mind,
it is necessary to clearly recognize theabove-described characteristics of the EU in its
judgments regarding the requirements fordisclosure and claims, and be careful in practice
not to confuse the characteristics of the EU withthe attitudes of the other IP5 offices in dealing
with non-compliance with the clarity
requirement.

clarity requirement,
Many may have had a feeling during thecourse of actual filings in China that China tends
to find a significant number of cases of
non-compliance with the support requirement.
Our survey showed results that support thisimpression.
More specifically, in the pharmaceuticaland chemical field, some cases were observed
where non-compliance with the support
requirement was found based on theembodiments. We checked the contents of filings
where non-compliance with the support
requirement was found, and had the impressionthat in many of these applications, China forced
applicants to limit their claims to the scope ofembodiments.
China made a relatively large number offindings of non-compliance with the support
requirement in the mechanical and electricalfield, similar to the trend in the pharmaceuticaland chemical field, although the absolute
number of findings was not as large as in thepharmaceutical and chemical field.
These results show that in China, as well as
to Japan, applicants are required to endeavor to
prepare application documents that will satisfy
the support requirement of each of these offices.
On the other hand, cases where Japan
would find non-compliance with the enablement
requirement were mostly handled by China as
non-compliance with the support requirement.
Perhaps due to this way of handling, the numberof findings by China of non-compliance with theenablement requirement was far lower than in
the other IP offices. This trend differs
significantly from the trend in Japan, where
non-compliance with the support requirement
and with the enablement requirement are often
found at the same time.
We also had the impression that China,
similar to Japan, tended to make judgments on
non-compliance with the clarity requirement
based on formality only, on the grounds of theuse of ambiguous expressions.
5.5 Korea

5.4 China
In Korea, in the pharmaceutical andChina found the largest number of filings
chemical field, the trend showed that the numberthat were non-compliant with the requirementsof findings of non-compliance with the support
for disclosure and claims among IP5 offices. The
requirement was slightly smaller than in China
number of findings of non-compliance with theand Japan but larger than in the US and the EU.
support requirement was significantly the largest,
More specifically, we had the feeling that,
followed by findings of non-compliance with thein the case of compound inventions in the1176Intellectual Property Management Vol.65 No.9 2015

pharmaceutical field, Korea tended to find
non-compliance with the support requirement if
pharmacological data was not sufficient.
However, since the number of families subject tothe present survey was not necessarily large,
there remains room to study the characteristics
of filings that are more susceptible to being
found by Korea to be non-compliant with thesupport requirement.
We also had the feeling that Korea
generally tended to more finely judge the clarityof the words stated in claims. Similar to the EU,
Korea often judged filings to be non-compliant
with the clarity requirement if inventions inaccordance with their claims were described(identified) by the result to be achieved.
6. Conclusion
We conducted a survey on PCT filings forwhich the receiving office is the Japan Patent
Office to compare judgements made on therequirements for disclosure and claims by theIP5 offices. The present survey was designed byextending the scope of the previous survey forcomparison of IP3 offices to include China andKorea. The present survey demonstrates that IP5
offices make their own individual judgments oneach of the requirements for disclosure andclaims.
For example, from the statistical results,
significant differences were observed between
the extent (number) of findings of
non-compliance made by the IP5 offices. In
other cases, multiple offices showed similar
trends in judgment. For examples, Japan, China
and Korea showed a similar tendency in their
judgments regarding the support requirement in
the pharmaceutical field, and the EU and Korea
in their judgments regarding the clarity
requirement. We also learned that there wereslight differences in trends from one technicalfield to another.
A study of the contents of typical cases inwhich differences between judgements occurred
showed that there were considerable differencesfrom one office to another. For example, in
judgments of the support requirement, one officetended to make stringent findings of
non-compliance that demand applicants to put
limitations even at the level of embodiments.
Another office often made findings of
non-compliance in such a manner that the
non-compliance could be resolved with simple
amendments so that no substantial disadvantages

would be caused on the part of applicants.
Even in cases of non-compliance with therequirements for disclosure and claims that are
similar to each other in nature, judgment of
which one of the requirements (i.e. support,
enablement or clarity) a non-compliance relates
to differed between one IP5 office and another.
We consider that simple comparison of thesejudgments is difficult, because they are
dependent on the examination criteria of theindividual offices.
What applicants should first focus on is the
preparation of application documents to file witheach office. In other words, when filing anapplication with the IP5 offices, it is desirable tostate in advance claims that can be limited as
dependent claims so as to avoid receiving thefindings described above, and to improve theirclaim through voluntary amendment prior to
examination so as not to unnecessarily receive
findings
ofnon-compliancewiththerequirements for disclosure and claims. One
more piece of advice, which may have been
mentioned too frequently, is to provide a
sufficient number of embodiments, in particularin cases of filings in the pharmaceutical andchemical field.
In the procedural aspect, in the case offilings with IP5 offices via the Paris route, it isdesirable to make necessary amendments at thetime of filing (however, it will be acceptable to
make voluntary amendments after filing). In thecase of PCT filings, it would suffice to makevoluntary amendment after entering thedomestic phase. However, these discrepancies
among IP5 offices give rise to concern thatapplicants must determine which approach totake or make other strategic decisions, leading toincreased procedural complexities on the part ofapplicants.
Applicants may be able to eliminate theinfluences of these practical discrepancies tosome extent through their efforts prior to
examination, but not all. Thus, the early
achievement of international harmonization
between patent systems is still awaited.
Notes:
1) Material published by the Patent Office:“Comparative Study on Hypothetical/Real
Cases: Requirement for Disclosure andClaims” (published in June 2008)(http://www.trilateral.net/projects/worksharin
g/study/cases.pdf, accessed and confirmed on
May 18, 2015)

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2)

3)

4)

5)

6)

7)

8)

平成 19 年度特許庁産業財産権制度問題調査 研 究 報 告 書 (FY2007 JPO Research
Reports on Problems with the Industrial
Property System), “特許の審査実務（記載要件）に関する調査研究報告書－バイオテ
クノロジー分野の記載要件に関する調査
研 究(Research Report on Patent
Examination Practices (Requirements forDisclosure and Claims) ---Research Report on
Requirements for Disclosure and Claims in
the Bio Technology Field),” pp.173-201(http://www.jpo.go.jp/shiryou/toushin/chousa/
pdf/zaisanken/1904bio_honpen.pdf, accessedand confirmed on May 18, 2015)
The European Commission invited opinions
and published the results as “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/2
0110223.pdf, accessed and confirmed on May
18, 2015)“Practical study as to judgments ofIntellectual Property High Court dealing withwrittendescription
requirementsforinventions defined by numerical ranges(further report),” Naosuke Miyamae, Patent,Vol. 65, No. 7 (2012) pp. 60-69“サポート要件不備は特許無効にする程に悪い瑕疵か? 機械分野における判断の
海外との比較考察と最近の判決動向 (IsViolation of the Support Requirement a
Serious Defect That Justifies Invalidation of a
Patent? Comparative Study of Judgments in
the Machinery Fields in Japan and Overseas
and Recent Trends in Court Rulings)” by
Yukihiro Tsuda, 別 冊 パ テ ン ト (Separate
Volume of Patent), No.9, (2013), pp.122-133
Material published by the Patent Office:“COMPARATIVE STUDY REPORT ON
REQUIREMENTS FOR DISCLOSURE
AND CLAIMS” (published in November
2013)(https://www.jpo.go.jp/torikumi/kokusai/
kokusai3/pdf/nicyukan_hikakuken/jegpe_com
parative_study_on_disclosure_jp.pdf,
accessed and confirmed on May 18, 2015)
Material published by the Patent Office:“Comparative Case Study on Disclosure andClaims” (published in April, 2015)(http://english.sipo.gov.cn/examination/refere
ncematerialssy/201512/P02015123135088671
8585.pdf#search=%27Comparative+Case+St
udy+on+Disclosure+and+Claims+May+18%
27, accessed and confirmed on May 19, 2015)“five IP offices” website

1178(http://www.fiveipoffices.org/activities/harmo
nisation.html, accessed and confirmed on
May 18, 2015)9) The Second Subcommittee, The First PatentCommittee “ Comparison of Trilateral
Description Requirements Through Office
Actions During Examination － Trilateral
tendencies in examination－” 知財管理 (IPManagement), Vol. 63, No. 9, (2013), pp.
1493-1508
10) The Second Subcommittee, The First PatentCommittee “ Comparison of Trilateral
Description
Requirements
DuringExamination－Study of trends in examinationof PCT applications filed with the JPO －”知財管理 (IP Management), Vol. 64、No. 9,(2014), pp. 1360-1370
11) The Second Subcommittee, The First PatentCommittee “ Trilateral Comparison of
Description
Requirements
throughExamination － Compative study of trends
in examination of PCT applications filed at
USPTO－”知財管理 (IP Management), Vol.
65, No. 7, (2015), pp. 888-897
12) Although patent files for applications filed in
China on and after February 10, 2010 wereavailable, we decided not to include them inthe population. This is because these files
were issued relatively recently and it would
have been impossible for us to obtain FAs
issued by IP5 offices during the same period.
13) Before the amendment in 2009, the article
prescribing non-compliance with the clarity
requirement was Article 20 (1) of the
Implementing Regulations of the Patent Law.
In China, the requirement to state technicalcharacteristics that are necessary for solving
technical problems is stipulated in an article
separate from the article for the support
requirement. This article corresponds to
Article 21 (2) of the Implementing
Regulations of the Patent Law before
amendment and Article 20 (2) of the
Implementing Regulations of the Patent Law
after amendment.
14) Tadashige ITOH, etc. “Drafting Universal
Claims for Japan, U.S., Europe, and China(No.1) ”知財管理 (IP Management, Vol. 64,
No. 2, (2014), pp. 191-208
15) In the “Body Weight Modulator” case(Intellectual Property High Court Ruling 2005
(Gyo Ke) No. 10013 (October 19, 2005), it
was held that the argument concerning theenablement requirement and the argument
concerning the support requirement may well
be two sides of the same coin.

Intellectual Property Management Vol.65 No.9 201516) The “Polarizing Film” case (Intellectual
Property High Court Ruling 2005 (Gyo Ke)
No. 10042 (November 11, 2005)(Manuscript received on June 1, 2015)

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