Writing Patent Specifications Japan Patent Office Asia-Pacific Industrial Property Center, JIII 1999 Collaborator : Takeshi TAKATSUKI, Patent Attorney T. Takatsuki & Associates Akira AGATA Patent Attorney, Agata Patent Office
Contents PART 1 MACHINERY AND ELECTRICITY Page Chapter 1 Significance of Specification 1 1. What is Specification Needed for? 1 2. How to Write Specification? 2 Chapter 2 Significance of Claim 17 1. What is [Claim] Needed for? 17 2. What is Technical Scope of Patented Invention? 17 3. How Should [Claim] be Written, then? 18 Chapter 3 How Should Specification be Prepared? 21 1. Preliminary Analysis 21 2. Concrete Analysis 23 3. A Technique for Preparing Specification 25 Chapter 4 Sample of Preparation of Specification 33 Chapter 5 Examples for Reference 37 - i -
PART 2 CHEMISTRY Page Chapter 1 Preliminary Knowledge Necessary for Patent Application 63 1. Significance of Patent System 63 2. Public Technological Assets and Patent Right 63 3. Scope of Patentable Invention 65 4. Substance of Invention 66 5. Requirements for Patentability 68 6. Functions of Patent 76 7. Significance of Invention 80 Chapter 2 Necessary Knowledge concerning Specifications 90 1. Significance of Specification 90 2. Purpose of Application and Specification 91 3. Matters Necessary for Specifying Invention 97 4. Contents of Specification 98 5. Invention to be Described in Specification 98 6. Invention as Technical Creation 101 7. Necessity for Description of Effects 102 Chapter 3 Character of Claims 104 1. Significance of Scope of Claims 104 2. Specifying Invention for Which a Patent is Sought 104 3. Broad Right versus Narrow Right 106 - ii -
4. How to Write Claims 110 5. Utilization of Multiple-claim System 117 Chapter 4 Preparation of Specifications 118 1. Forms for Description of Specification 118 Chapter 5 Practical Preparation of Specifications 139 1. Pigeonholing Data 139 2. Examination of Relation with Publicly Known Technology 141 3. Defining Scope of Claims 142 4. Preparation of Detailed Explanation of the Invention 142 5. Completed Specification 145 6. Abstract 153 - iii -
PART 1 MACHINERY AND ELECTRICITY Chapter 1 Significance of Specification 1. What is Specification Needed for? Purposes of the Patent Law (System) To protect inventions To use inventions To encourage inventive activities To contribute to the development of industry Section 1, the Patent Law What is the specification needed for? To know the answer of this question, you should first understand what the Patent System fundamentally intends. As shown in the above chart, the purposes of the Patent Law (System) are to encourage inventive activities through the promotion of protection and utilization of inventions, thereby to contribute to the development of industry. The Patent Law (System) has adopted a system of disclosing the details of an invention as the subject of its protection and utilization by means of its specification; in such context, it might be clear how a crucial document the specification is, so as to be closely related with the foundation of the Patent Law (System). What are the roles of the specification expected from the viewpoint of - 1 -
accomplishing such purposes of the Patent Law (System), then? Let us make a further analysis, while utilizing the chart below. First of all, to protect inventions means to grant an exclusive right to a patent applicat, called patent right, in the concrete; it might be clear, in that sense, that the specification works as a document of title defining the scope of each patent right. While, to promote the utilization of inventions means to make open the technical details (the contents of each invention) to the real world; accordingly, it might be understood that the specification has another role working as a technical document making open the technical details to the public, as well. Thus, it is obvious that a specification expected to play these two important roles must be written in such a manner as to fulfill the both purposes. 2. How to Write Specification? (1) Requirements under the Patent Law The request shall be accompanied by the specification, any drawings necessary and the abstract. Section 36(2), the Patent Law The specification and abstract are essential in the procedure of patent - 2 -
application, while drawings are required to be attached according to the necessity. Although both specification and abstract function as a document to describe the contents of an invention, their roles expected are completely different. The specification, as described above, is a document to disclose the contents of an invention, not only specifying the contents of the invention to be protected by the Patent Law but also showing the contents of invention to be utilized through making them open to the public; on the other hand, the abstract is a document used for facilitating the study or analysis on patent information, and is therefore desired to be written in a manner allowing its readers to promptly and accurately grasp the outline of the invention. The drawing is, however, a non-obligatory document to be prepared according to the necessity; inventions in such fields as chemistry and biotechnology may sometimes need no drawings at all, while drawings will be of great help in such fields as machinery, equipment, device, structure, circuit and control system, so as to make it possible to explain the invention more in detail and more understandably than when the technical details are disclosed only through the specification. Thus, it may be clear that the expected role of the drawing is, in supplementing and being coupled with the specification, to specify the contents of an invention. Then, what shall be disclosed in the specification? The contents of an invention are diversified: all kinds of arts can be a subject of invention, ranging from physical entities including daily goods, metal working, organic/inorganic chemistry, polymer chemistry, metallurgy, textile, construction, machinery, instrumentation, optics and data processing, to electric/electronic entities including electric parts and elements and semiconductors. If it were free how to - 3 -
write a specification, the description in the specification would differ from one another depending on the technical fields or the likings of inventors or applicants; such chaotic circumstances would critically hinder not only the examination, which is a precondition for granting a patent right, but also the easy access to the specification for utilizing it as a technical document. That is the reason why the specification has a definite form in writing: specifications shall be consistent in spite of the diversity of subjects dealt with. Namely, - 4 -
The specification under the preceding subsection shall state the following: (i) (ii) the title of the invention; a brief explanation of the drawings; (iii) a detailed explanation of the invention; and (iv) patent claim(s). Section 36(3), the Patent Law A specification to be attached to a request shall be prepared in accordance with Form 29. Section 24, Regulations under the Patent Law Form 29 [Designation of Document] Specification [Title of the Invention] [Claim(s)] [Claim 1] [Detailed Explanation of the Invention] [Brief Explanation of the Drawings] [Fig. 1] General rules for the specification are stated in the Notes on Form 29 more concretely, ranging from its formal requirements such as the sheet size of blank form, to its substantive requirements such as how to write the Detailed Explanation of the Invention ; the patent application in Japan requires the full - 5 -
knowledge on these rules, and especially any person who prepares a specification is expected at least to fully understand these Notes. (2) Enablement Requirement To what extent and how concretely should each invention be disclosed? This is one of the points to be cared for in giving in the specification the Detailed Explanation of the Invention provided for by the above Form 29; the Patent Law has stipulated as follows: The detailed explanation of the invention shall state, as provided for in an ordinance of the Ministry of International Trade and Industry, in a manner sufficiently clear and complete for the invention to be carried out by a person having ordinary skill in the art to which the invention pertains. Section 36(4), the Patent Law The description which is to be in accordance with an ordinance of the Ministry of International Trade and Industry, pursuant to Section 36(4) of the Patent Law, shall state: problem to be solved by the invention; means to solve the problem; and other matters necessary for a person having ordinary skill in the art to which the invention pertains to understand the meaning of the invention from the technical viewpoint. Section 24 bis, Regulations under the Patent Law - 6 -
(3) Changes in the Contents of Specification The Patent Law in Japan has been amended several times, so that the form of specification meeting the demand of each age has been directed. On the occasion of the recent amendment, the contents of specification have been considerably altered, by which the new form of specification has become effective on July 1, 1995; accordingly, both types of specification, namely ones made according to the former form and ones according to the present form, are being handled by the Japan Patent Office at present. In order to enhance the understanding on the differences between them, the contents of both forms are compared below: - 7 -
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The items shown above with asterisk (*), namely [Prior Art], [Example] and [Effect of the Invention], have become non-obligatory; yet, it is free for any inventor or applicant to fill out in its discretion these items in explaining the contents of the invention. (4) Concrete Explanation of the Form 29 Now, let us study examples of the present form of specification more concretely. 1 How to write [Designation of Document] There is no choice other than Specification ; other designations, such as Explanation of Technique and Technical Specifications for cannot be accepted. 2 How to write [Title of the Invention] See Note 13 Relation with the category of invention Section 2 (3), the Patent Law defines: an invention of a product; an invention of a process; and an invention of a process of manufacturing a product. The title of an invention comes about of itself if the invention is categorized by its nature into any of a product, a process or a process of manufacturing a product, though influenced by the inventor s or applicant s understanding of the invention: for example, s plating solution, additive, device, -control circuit, structure, etc. in the case of the invention of a product, method of - 9 -
controlling, method of using, etc. in the case of the invention of a process, and method of manufacturing, method of processing, etc. in the case of the invention of a process of manufacturing a product. 3 How to write [Claim] See Note 14 What is [Claim]? (Details will be mentioned later in this paper.) 4 How to write [Detailed Explanation of the Invention] 4-1 Introduction of Description in Itemized Form (Effective on and after April 1, 1984) Since April 1, 1984, the contents of [Detailed Explanation of the Invention] are to be written item by item as shown below. See Note 15 for further details. Description in Itemized Form [Detailed Explanation of the Invention] [Technical Field to Which the Invention Pertains] ([Prior Art]) [Problem to be Solved by the Invention]: Purpose of the Invention [Means to Solve the Problem] (Operation) [Mode for Carrying Out the Invention] ([Example]) ([Effect of the Invention]): Constitution of the Invention Effect of the Invention - 10 -
4-2 How to write [Technical Field to Which the Invention Belongs] Here, the technical field to which the invention belongs in view of the classification and of the extent of its applied technology shall be written, such as This invention relates to a method of waste water disposal, especially to the method suitable for the drainage from meat processing plants. 4-3 How to write ([Prior Art]) This item has been filled out in such a way as Examples of the prior art devices for include one which was laid open to the public in the Published Unexamined Patent Application (hereinafter referred to as Kokai ) No. / 19..., or An example of the prior art devices for, is one shown in Fig., which... (See the U.S. Patent Specification No..). Since the [Prior Art] is no longer an obligatory item in the present form as mentioned above, it is omissible; yet, under the present Patent System any inventor or patent applicant seeking an exclusive right known as a patent right shall obey the procedure of submitting the specification which discloses the contents of the invention to the Japan Patent Office for examination, and acquires the patent when the examiner finds no reason to reject it; accordingly, it is vital for each specification preparer to try to write the specification in a manner easily understandable by the examiner. Under such circumstances, it is recommended to specify a prior art very clearly on the part of an examinee; nevertheless, it is possible for some inventions, depending on their contents, to be done only with the abstract disclosure of prior arts, instead of the concrete citation of document numbers. Here, [Prior Art] refers to all sorts of technical information that was - 11 -
already open to the public before the date of any patent application in question, including not only the Kokai publications but also all other technical documents and related materials. It means that the technical information which is known within the firm to which the inventor belongs but not open to the outside of the firm is not public information and, therefore, can be excluded from the prior art. Further, in case where some invention whose contents relate to the invention which is to be now applied for another patent has been already applied for a patent, the former can be also excluded from the prior art, because it is not a publicly known data, so long as it is not publicized yet. In case where the same invention will be applied also in the U.S.A. in the future, one must write the specification for the Japanese patent application while paying attention to the definition of prior art in the U.S. Patent System. In addition, the applicant shall also take the Product Liability Law into due consideration; an expression defaming any technology specified as a prior art in the specification may cause a useless trouble, as long as such technology is still on the market as embodied in a product. 4-4 How to write [Problem to be Solved by the Invention] This item shall be written as follows: A conventional device works only for... or A conventional device works only for..., and there is no known solution for such and such problems as yet as far as the inventor knows. The invention described in Claim 1 is, thus aiming at providing a device enabling... The invention described in Claim 3 is, in addition to the purposes of the inventions described in Claim 1 or 2, intended to provide a device enabling... - 12 -
It is preferable to clarify the relation between the problems and the inventions described in the Claim, and to describe each invention s purpose concisely. 4-5 How to write [Means to Solve the Problem] It is also required here to clarify the relation with the contents of the Claim: the inventions stated in independent Claims must be substantiated at least. It shall be written as follows: For the accomplishment of the above purposes, the invention described in Claim 1 does... so that... Furthermore, the invention described in Claim 3 enables...by combining...with the constitution of the invention described in Claim 1. The most important point here is to explain each claim and the scope of meaning of the terms used in a manner substantiating them; in case where the invention is specified in a claim by operation, function, nature, characteristic, method, usage, purpose of use, etc., it shall be explained here, as (e.g. operation, function, nature or characteristic.) refers to..., which is accomplished by... in the concrete., in order to intensify the understanding on the terms used. 4-6 How to write [Mode for Carrying Out the Invention] and ([Example]) In the item of [Mode for Carrying Out the Invention], more concrete explanation than that in the Claim, which specifies the invention, shall be made; in case where you have used a term elastic body in a claim, for example, you are to explain here that the term elastic body refers to both a metal-coil spring and a leaf spring made of synthetic resin or rubber; if you have already explained it in the above [Means to Solve the Problems], - 13 -
however, there is no need to repeat the same here. [Example] shall be initiated with the introduction saying Now Example 1 of the invention will be described by referring to Figs. and. In the statement, however, it is preferable to describe a preferable example (the best mode) first, then add its variations, while the relation between the examples and the statement of its corresponding claim must be clarified in detail. In case where the invention is specified in a claim by operation, function, nature, characteristic, etc., its extent which has been broadly defined by such terms must be substantiated and clarified here by describing a number of concrete examples, so that the examiner can distinguish it in the concrete. In other words, if the explanation cannot substantiate the scope of the contents here, any claim which has been stated broadly, profoundly or hierarchically may be narrowly interpreted in accordance with the scope of the explanation made in the Example, in case of a lawsuit or any other claim dispute. 4-7 How to write [Effect of the Invention] The [Effect of the Invention] is no longer an obligatory item in the present form and is omissible. However, it is important to demonstrate the comparison between the effects of the invention and those of prior arts, since it clarifies the points that the inventor or applicant recognizes as the effects of the invention; the statement of [Effect of the Invention] will be of great help for the examiner at least, since the differences between the invention in question and its prior arts (publicly known arts) become clear through it, thus facilitating his determination on the patentability (novelty and inventive step) of the invention to that extent. As a matter of course, this item is omissible, in case where the effects of - 14 -
the invention are hard to describe, as well as in case where the effects of the invention are already written in any item other than the item of [Effect of the Invention]. In case where the inventor or applicant intends to state the effects of the invention in this item, it is possible to describe each effect in a manner referring to its corresponding claim which is stated in the independent claims: for example, it is possible to write as As above mentioned, the invention stated in Claim 1 has the effect of..., while the invention in Claim 3 has the further effect of... ; in such a case, there is no need to describe the effects of the examples as to each of them. While, it is also possible to state the comprehensive effects of the generic concept corresponding to Claim 1, instead of stating the effects of each independent claim, in such a way as Since the device covered by this invention is an entity as mentioned above, it has the effects of... 5 How to write [Brief Explanation of the Drawing] Whenever drawings are to be attached to the specification, the outline of each drawing must be stated here: for example, it shall be written as Fig.1 is a perspective view to show the whole body of device. The drawings for the conventional examples are omissible; in case where they are prepared, it is recommended to use higher numbers for their figures, as Fig. 9 shows a cross section of a conventional device. (5) Relation to Restriction on Amendment The Patent Law (System) in Japan has adopted the first-to-file system; accordingly, every inventor or applicant desires to make a specification as soon - 15 -
as possible in order to apply for the patent first. However, one should note that once the specification is filed for patent application, it cannot be freely amended; namely, the specification shall be made after its preparer s thorough review of its contents. The amendment of specification is permitted as long as the part to be amended is not a new matter; the term new matter is here defined as follows: A new matter refers to matters other than those described in the specification or drawings originally attached to the request, and those from which a person skilled in the art can derive directly and unambiguously from the above. It is to be noted that the Patent Law (System) in Japan does not admit to add new matters at all, unlike the U.S. patent law, which has a continuation-in-part application system. - 16 -
Chapter 2 Significance of Claim 1. What is [Claim] Needed for? Among all items contained in the specification, the statement in [Claim] is most important; it is not too much to say that the grant of an exclusive right, called patent right, is determined by the contents of [Claim], which specify the scope of the invention to be protected by patent right. 2. What is Technical Scope of Patented Invention? Section 70 of the Patent Law provides the scope of an exclusive right, called patent right. (1) Section 70, the Patent Law, provides as follows: The technical scope of a patented invention shall be determined on the basis of the statement of the patent claim(s) in the specification attached to the request. Section 70(1), the Patent Law (2) The term on the basis of caused an argument over its interpretation: namely, whether an invention should be interpreted only from what is stated in the claim or whether the statement of the claim should be interpreted as only a criterion for interpreting the invention. As a result, it has been amended as follows. (3) Addition to Section 70(2), the Patent Law (effective on July 1, 1995) - 17 -
In the case of the preceding subsection, the meaning of a term or terms of the patent claim(s) shall be interpreted in the light of the specification excluding the patent claim(s) and the drawings. Section 70(2), the Patent Law (4) A Concept under the Doctrine of Equivalents There is a method, called the doctrine of equivalents, for interpreting the invention which is specified by [Claim]. In patent disputes, some patentees insist to introduce the doctrine of equivalents, since the scope of the exclusive right for the patented invention is one of the issues of dispute. The attitude towards the doctrine of equivalents differs case to case, but there is generally speaking a possibility that the doctrine may be considered in the following conditions: Being equivalent refers to Presence of possibility of substitution + easiness of substitution (identity of operation and effect) 3. How Should [Claim] be Written, then? (1) Requirements for Statement of Claim The requirements for statement of claim(s) are provided for as follows by the amended Patent Law: - 18 -
At present in the patent claim, there shall be set forth, by statements separated on a claim by claim basis, all matters which an applicant for a patent considers necessary in defining an invention for which a patent is sought. (Note: There is a discretionary provision to the effect that this provision shall not be regarded as a ground of rejection.) Section 36(5), the Patent Law statements setting forth the invention(s) for which a patent is sought shall be clear. Section 36(6)(ii), the Patent Law statements setting forth the claim(s) shall be concise. Section 36(6)(iii), the Patent Law (Note: Contravening any of these provisions shall be a ground for rejection.) (2) How to write [Claim] to satisfy the requirements under Section 36(6) 1 The requirements for writing Claim have been significantly relaxed, but more substantiative explanation is required than ever in the item of Detailed Explanation of the Invention, instead. 2 Thanks to the elimination of the requirement of indispensable constituent features of the invention (Section 36(5)(ii), the former Patent Law), the definition of the technical features of the invention by operation, function, nature or characteristics is also permissible, other than the description concerning constitution. 3 The requirement of statements setting forth the invention for which a - 19 -
patent is sought shall be clear. (Section 36(6)(ii)) shall be satisfied; therefore, the following cases cannot be accepted: 3-1 the case where the invention for which a patent is sought is unclear resulting from the statement of the claim itself being unclear; 3-2 the case where the invention is defined in a technically incorrect way as a result of a technical defect existing in matters to define the invention; 3-3 the case where the extent of the invention for which a patent is sought is unclear; 3-4 the case where the category of the invention for which a patent is sought is unclear; and 3-5 the case where matters to define the invention are expressed in alternatives but the alternatives have no similar nature or function with one another. 4 The requirement of statements setting for the claim(s) shall be concise. (Section 36(6)(iii), the Patent Law) shall be satisfied; therefore, the following cases cannot be accepted: 4-1 the case where a claim includes statements of the same contents in a duplicated manner; and 4-2 the case where a claim is expressed in alternatives and the number of alternatives are so large that the conciseness of the claim is extremely damaged. - 20 -
Chapter 3 How Should Specification be Prepared? 1. Preliminary Analysis (1) Sufficient understanding of the invention is essential. Consideration of the Extent: Generic Concept Alternative Concept Invention Equivalent Concept Specific Concept (2) An inventor is apt to insist on the concrete contents of his invention; In such a case the inventor should reconsider by regarding such concrete contents as specific concepts on the level of examples. Furthermore, care should be taken as an inventor does not always invent while being conscious of any particular prior art for his invention, and as such sometimes he does not fully review his own invention in comparison it with the prior art. 1 Hierarchical claims should be searched in view of the extent: namely, generic, specific, alternative and equivalent concepts. 2 An appropriate scope in which protection could be obtained in the present - 21 -
case should be studied based on the prior art. 3 The extent, concept and specificity of the terms used should be fully reviewed. 4 Statement should be easy to read and understand. Should be written in a sentence structure not liable to be read in more than one meaning. 5 In the item of Detailed Explanation of the Invention, sufficient substantiating explanation and definition should be made. Especially, in case where abstract terms and expressions are inevitably used in claim(s), they should be sufficiently and concretely explained in the Detailed Explanation of the Invention. (3) How to prepare drawings should be studied. 1 Such drawings that highlight the features of the invention should be prepared. 2 Such drawings that make the contents of claim(s) fully readable should be prepared. 3 Such drawings that make the contents of Detailed Explanation of the Invention fully readable should be prepared. 4 Such drawings that make the modes for carrying out the invention fully readable should be prepared. (4) How to describe the contents of Detailed Explanation of the Invention should be studied with regard to claim(s). 1 What is a powerful patent? - 22 -
2 Which should be prepared first? It is recommended to make the claim(s) first, then explain it in the Detailed Explanation of the Invention in a manner substantiating it. 2. Concrete Analysis (1) Rough extent of the invention will be determined through the investigation of its purposes (aims) and prior art (publicly known techniques). Then, the title of the invention should be decided. (2) The purposes of the invention (aims) should be listed in the order of priority. The aims must be: 1 contained without fail in the purposes and the effects (closely related with each other); 2 3 directly or indirectly readable from the statement of [Claim]; described in detail by the constitution in [Mode for Carrying Out the Invention] and [Example] (should be highlighted); 4 substantiated by the operation in the items of [Mode for Carrying Out the Invention] and [Example]; and 5 shown on the drawings. (3) The prior art should be specified. The analysis on its inconveniences and defects serves as the first step to solve the problems. 1 The prior art should be specified by means of document numbers (e.g. Kokai number) and titles. - 23 -
2 Document of prior art includes: 2-1 official gazettes; 2-2 publications in general; and 2-3 leaflets, catalogs, etc. 3 What should one do, if any prior art cannot be specified? (4) The contents of [Mode for Carrying Out the Invention] (Example) should be analyzed in reference to the drawings. 1 Classifying into groups by elements should be tried: Ordination into large, medium and small concepts should be made. 2 How to select terms (reference designations in the drawings): Terms expressing shape and structure... becoming concrete should be balanced. Terms expressing function and operation... becoming abstract 3 Correspondence between terms expressing generic concepts and those expressing specific concepts should be determined. Terms must be consistent throughout a specification; however, it is recommended that the terms used in [Claim] be, as far as possible, ones expressing more generic and broad concepts. - 24 -
3. A Technique for Preparing Specification (1) Analysis and preparation of a specification should be carried out rhythmically, quickly and concentratedly by repeating the following U-shaped reviewing cycle: - 25 -
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(2) Look at forests Concrete analysis 1 1-1 Analyze by first looking at a mountain and then looking at forests. Larger medium smaller (classify the extent of the elements into larger, medium and smaller ones) More generic more specific Fixed parts movable parts Main parts peripheral parts 1-2 For those moving (those subject to the passage of time) Classify them in the moving order. If any element relates to more than one sequence, put them in any one of them. Determine under which concept of the extent (rank) each element is to be arranged. (3) Look at trees Look at branches Concrete analysis 2 2-1 Choose suitable terms paying attention to terms used for analysis. e.g. (noun) freely able (adjective + noun) that causes for (noun + adjectival clause) 2-2 Choose terms usable anywhere in the specification. - 27 -
2-3 Distinguish technical terms from general terms. Do not use jargons. 2-4 Confirm the meaning of terms in Katakana characters (romanized foreign language). Pay attention to the abbreviated expressions in Katakana characters. 2-5 For indicating identical or similar parts, distinguish them from each other by using, for example, - first, second - main body of... - section... part. 2-6 Do not use abstract terms 2-7 Do not use terms indicating direction or orientation in [Claim] wherever possible. In case such terms are indispensable, however, mention the definition of the direction or orientation in [Mode for Carrying Out the Invention] referring to the drawings. e.g. front and behind; up and down; right and left; forward; front side 2-8 Do not use terms indicating the extent or degree in [Claim] wherever possible. In case such terms have to be used intentionally, however, specify the standard and mention the definition thereof in [Mode for Carrying out the Invention] before using them. e.g. high speed treatment soft elasticity - 28 -
2-9 Do not use trademarks wherever possible but rather use technical terms corresponding thereto. e.g. Teflon polytetrafluoroethylene 2-10 Do not change the terms once determined (if any such term has to be changed, change it throughout the specification). 2-11 Wherever possible, use the same terms as those in the prior art (in order to facilitate the understanding). Concrete analysis 3 3-1 Pay attention to the consistency between terms used in the analysis and drawings. Are the parts corresponding to the terms used in the analysis shown in the drawings? Concrete analysis 4 4-1 Analyze the following matters concerning the contents of the proposal by the inventor for examining the extent of the invention: Is it a relation between one side and the other? Is the reverse also true? Are any variations possible? If there are a number of functions, what should be the order of importance thereof? Are the materials and characteristics sufficient for specification? What is the standard of size? How are the shape and structure formed? Where is the place for forming, what is the direction for forming and - 29 -
what is the means (method or steps) for forming? (4) Look at a mountain, forests, and trees... and then prepare claim(s). 1 Determine the type of expression for the claim(s) 1-1 Type of (noun), (noun)... and (noun) e.g. comprising A, B, C, and D. Note: Arrange phrases so as to be readily understandable. To make the claim(s) easy to read, use the postpositions clearly, and do not repeat them in the vicinity. Make A to D related to each other. 1-2 Type of (verb), (verb)... and (verb) - 30 -
e.g. doing A, doing B, doing C, and doing D. Note: Do not make the expression functional. 1-3 Type of characterizing clause e.g. device for characterized in that said is..., and is... Note: in the preamble is a concept common to the prior art and the present invention. The characterizing clause is unique to the present invention. 2 Pay attention to the concept of time (where a system, process, etc. are in question). - 31 -
3 Omit unnecessary elements. Note: Such omission is most difficult for beginners. - 32 -
Chapter 4 Sample of Preparation of Specification [Designation of Document] Specification [Title of the Invention] device [Claim] [Claim 1] device comprising A, B, C, and D. [Claim 2] device according to Claim 1 wherein A is. [Claim 3] device according to Claim 1 or 2, which is further provided with E. Prepare hierarchical claims including generic, specific, alternative and equivalent concepts. [Detailed Explanation of the Invention] [Technical Field to Which the Invention Belongs] This invention relates to device.... This invention relates to device, in particular to device.... - 33 -
Describe the technical field taking into consideration its extent to which the invention is to be applied. [Prior Art] Examples of conventional devices include one described, in the Published Unexamined Patent Application (Kokai) No. -. Examples of conventional devices include one shown in Fig.. Namely,...,..., or... (refer to Kokai No. - ). [Problems to be Solved by the Invention] However, in the conventional devices,.... However, in the conventional devices,..., and no prior art that succeeded in solving this problem is known yet as far as the inventor of the present invention knows. Devise how to explain the inconveniences of the prior art. Pay attention to the relation with the Product Liability Law if the prior art is applicant s own precedent technologies. Thus, the purpose of the invention according to Claim 1 of the present invention is to provide a device enabling.... The invention according to Claim 3 is, in addition to the purposes of the invention as described in Claim 1 or 2, to provide a device enabling... Describe the purpose to the point. - 34 -
[Means to Solve the Problem] In order to achieve the above-mentioned purposes, the invention as described in Claim 1 is....... Further, the invention as described in Claim 3 is... by adding... to the constitution of the invention according to Claim 1. Describe the constitution of the invention. Give a supporting explanation corresponding to the contents of the claim(s) and the extent of the terms, etc. If the invention is specified in the claim(s) by the operation, function, nature or characteristic, for example:... (operation, function, nature or characteristics) means..., and more concretely, it is achieved by.... [Mode for Carrying Out the Invention] [Example] The first example of the present invention will be explained below by referring to Fig. to Fig.. - 35 -
It is better to explain a preferable example (the best mode) first and then examples of its variations. Describe the correspondence to the description of the claim(s) in detail. When the invention is specified in the claim(s) by the operation, function, nature or characteristic, give a supporting explanation sufficiently in the description of this example so as to clarify the extent of the contents as widely specified by the operation, function, nature or characteristic. Namely, describe many concrete examples of the operation, function, nature or characteristic. [Effects of the Invention] device according to the present invention, consisting of the contents as explained above, provides the effects of.... As explained above, the invention as described in Claim 1 of the present invention provides the effect of..., and the invention as described in Claim 3 provides a further effect of.... [Brief Explanation of the Drawings] [Fig. 1] Fig. 1 is a plan view of device of the first example. Fig. 1 is a block diagram to explain the control circuit for device of the first example. [Explanation of Reference Signs] 1... Main body of the device 3... Locating sensor - 36 -
Chapter 5 Examples for Reference (Commentary: Practices under 1994-Revised Patent Law in Japan, edited by the Examination Standards Office of the Japan Patent Office, published by the Japan Institute of Invention and Innovation) - 37 -
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[Document s Name] Abstract [Abstract] [Problem] To prevent the rocking motion of an extractor basket and enable smooth starting even when wet clothes placed in the basket are in somewhat unbalanced condition. [Means to Solve the Problem] A balancing ring is installed around the entire periphery at the top of an extractor basket 11 to prevent the rocking motion by the inertial moment of rotating around the vertical axis. [Selected Figure] Fig. 1-57 -
Form 29 (Section 24, Regulations under the Patent Law) [Designation of Document] Specification [Title of the Invention] [Claim] [Claim 1] [Detailed Explanation of the Invention] [Brief Explanation of the Drawings] ([Fig. 1]) Notes on Form 29 1. The sheet shall be of A4 size (21 cm 29.7 cm) and shall not be such as to permit ink to blot or characters to be visible therethrough. The sheet shall be used with the long edges at the sides. The sheet shall not contain unnecessary characters, symbols, frames, lines, etc. 2. There shall be a minimum margin of 2 cm on all four sides of the sheet and the margin shall not exceed 2.3 cm on both of the right and left sides, in principle. 3. Writing shall be in horizontal lines, from left to right, with 36 characters to a line, at least 4 mm spacing between lines, 29 lines or less to a page, and each page being assigned a page number at the right end of the margin on the upper side thereof. 4. Characters shall be 10 to 12 point, and shall be type-printed in such a way that they are in black and clear and not easily erasable, with use of Hiragana (in the case of words of foreign origin, Katakana), Chinese characters for daily use and Arabic numerals. Further,,, and shall not be used (except for and used before and after the column names). - 58 -
5. In principle, it is not permissible to carry out deletion, correction, overwriting and insertion between lines in each sheet. 6. The writing shall be in a colloquial style and the whole of the invention shall be described in a technically accurate and concise manner in the specification as originally filed. It is not permissible to incorporate by reference other literature as a substitute for a description in the specification. 7. Technical terms shall be in accordance with scientific terms. 8. Terms shall be used both in their ordinary sense and consistently throughout the specification. However, this shall not apply where a term is used for a particular meaning which is so defined. 9. A registered trademark may be used only when a certain product cannot be identified without such trademark and, if used, such trademark shall be indicated as being a registered trademark. 10. With respect to microorganisms, substances with foreign names, technical terms the meaning of which is difficult to be fully expressed in Japanese, scientific literature in a foreign language, etc., the name thereof in Japanese shall be followed by words in the original language in parentheses. 11. The accession number assigned to the deposited microorganisms shall be indicated next to the name of the microorganisms. 12. With respect to the description of a chemical substance, where it is difficult to understand at once the chemical structure thereof merely by means of the name of such substance, the chemical formula thereof enabling the understanding of the chemical structure shall be described, if possible, in addition to the name of the substance. 13. The [Title of the Invention] shall be such as to indicate concisely the invention - 59 -
concerned. 14. In the [Claim], statements shall be made in the following manner in accordance with the provisions of Section 24 ter of the Regulations and Section 36(5) and (6) of the Patent Law: a. The statement of [Claim] and the content of [Detailed Explanation of the Invention shall not be contradictory and words and phrases to be used shall be consistent. b. When necessary for the understanding of the content of the [Claim], the reference signs used in the drawings attached to the request of the application may be indicated in parentheses. c. When a claim refers back to another claim, the claim shall, as a rule, immediately follow the other claim to which it refers. d. When a claim refers back to more than one other claim, the claim shall, as a rule, refer to such claims in the alternative and shall include the same technical limitations contained in such claims. e. The number of a claim shall be described as, for example, [Claim 1] or [Claim 2]. Where, however, a claim refers back to another claim, the other claim to which it refers shall be described as, for example, Claim 1 or Claim 2. 15. In the [Detailed Explanation of the Invention], a description shall be made in the following manner in accordance with the provisions of Section 24 bis of the Regulations and Section 36 (4) of the Patent Law: a. As matters considered necessary for the understanding of the technical meaning of an invention, a description shall be made, in principle, on the technical field to which an invention for which a patent is sought belongs, the problem to be solved by the invention and the manner in which the invention - 60 -
has solved the problem. In this case, the respective descriptions shall be provided with the headings [Technical Field to Which the Invention Belongs], [Problem to be Solved by the Invention] and [Means to Solve the Problem]. b. Where there is a prior art related to an invention for which a patent is sought, it shall be described if possible, and where there is a document related to that prior art, also the name of the document shall be described if possible. In this case, such description shall precede, in principle, the description of the problem to be solved by the invention and shall be provided with the heading [Prior Art]. c. A mode for carrying out the invention shall be described in order for a person having an ordinary knowledge in the technical field to which the invention for which a patent is sought belongs to be able to work the invention, and if necessary a description shall be made on concrete examples. A description shall be made on the mode for carrying out the invention which an applicant for the patent considers the best. In this case, the respective descriptions shall be provided with the headings [Mode for Carrying Out the Invention] and [Example]. d. Where an invention for which a patent is sought has an advantageous effect in comparison with a prior art, the effect shall be described if possible and such description shall be provided with the heading [Effect of the Invention]. e. When describing a base sequence or an amino acid sequence, there shall be set forth a sequence listing prepared according to the Guidline for the Preparation of a Specification, etc. containing a Base Sequence or an Amino Acid Sequence (as notified November 26, 1990, by the Patent Office). In the [Detailed Explanation of the Invention], there shall be given - 61 -
consecutive paragraph numbers, such as [0001] and [0002], before respective paragraphs. More than one heading shall not be described in the paragraph to which only one paragraph number has been given. 16. In the [Brief Explanation of the Drawings], there shall be a description of an explanation of each drawing, such as [Fig. 1] Plan view, [Fig. 2] Elevational view and [Fig. 3] Sectional view, and there shall be an explanation of the reference numerals and signs representing the essential parts of the drawings, the explanation being provided with the heading [Explanation of Reference Numerals and Signs]. 17. Chemical formulas, etc. appearing in a specification shall be described in separate sheets following the specification while giving, to the spot in the specification where such chemical formulas, etc. are to be described, consecutive numbers such as [Chemical formula 1] and [Chemical formula 2] in the case of chemical formulas, [Mathematical formula 1] and [Mathematical formula 2] in the case of mathematical formulas, [Table 1] and [Table 2] in the case of tables, and [Non-JIS character 1] and [Non-JIS character 2] in the case of characters other than those stipulated by the Japanese Industrial Standards X0208. In these cases, each description shall be provided with the corresponding designation such as [Chemical formula 1], [Mathematical formula 1], [Table 1], or [Non-JIS character 1]. The size of the chemical formula, etc. shall not exceed 150 mm 245 mm and any chemical formula, etc. to which only one number has been given shall not be described separately in more than one page. (As amended by Ordinance No. 101 of 1970, Ordinance No. 82 of 1975, Ordinance No. 21 of 1984, Ordinance No. 45 of 1985, Ordinance No. 74 of 1985, Ordinance No. 73 of 1987, Ordinance No. 41 of 1990, Ordinance No. 75 of 1993, and Ordinance No. 57 of 1995). - 62 -
PART 2 CHEMISTRY Chapter 1 Preliminary Knowledge Necessary for Patent Application 1. Significance of Patent System The patent system is a system whereby a person who has provided a novel and useful technology called an invention, which has never existed in the world to date, for the society while increasing technological assets of the human society with more enrichment of life is given an exclusive right to commercially work the invention with given restrictions such as a term restriction 1) and a substantive restriction 2) in return for disclosure of the technical content of the invention for giving opportunities of utilizing it to other persons, whereby inventions are encouraged to contribute to the development of industry. 2. Public Technological Assets and Patent Right Since the patent right thus has a significance of remuneration in return for providing the society with a novel technological asset that has hitherto been nonexistent, the substance of the right must be restricted within the technical scope Note 1) 20 years from the filing date of application in Japan, U.S.A., U.K., and France 20 years from the day next to the filing date of application in Germany Note 2) For example, the effects of the right shall not extend to the working of it for the purposes of experiment and research and the acts of compounding a medicine. - 63 -
which has been disclosed by the inventor and has become utilizable by the public, while the merit of enrichment of the technological knowledge gained by the public must be properly balanced with the technological demerit of restrictions placed upon the public through establishment of the right by the inventor. Accordingly, it is desired from an idealistic point of view to establish a patent right having entirely the same scope as the technical content provided as an additional public technological asset by the inventor for the society. This enables the inventor to acquire a right well corresponding to the technical content provided for oneself for the society, and also enables the public to acquire the technological knowledge well offsetting the inconveniences arising from restriction on free utilization of it, whereby the merits of both sides can be balanced with each other. More specifically, if a technical scope provided by the inventor for the society to thereby become utilizable for the first time by the public (range surrounded by the broken line) is perfectly in agreement with the technical scope of the patent right (range surrounded by the solid line) as shown in Fig. 1 (a), the right of the inventor is well secured, while the public are restricted only in their use within the technical scope of the patent right, outside which scope the public never infringe on that right. Fig. 1 If the patent right is established in a broader technical scope than the technical - 64 -
scope provided by the inventor for the society as shown in Fig. 1 (b), however, the public are not provided with utilizable technologies in the range outside the range surrounded by the broken line, while use of such technologies by other persons is restricted even if they are newly developed by the other persons themselves, with the result that the public suffer a disadvantage. On the other hand, if the patent right is established in a narrower range than the technical scope provided by the inventor for the society as shown in Fig. 1 (c), the inventor can gain no remuneration in the range outside the range surrounded by the solid line, resulting only in providing the technology. 3. Scope of Patentable Invention An invention and a claimable scope based thereon can be likened to the height of a light source and an area irradiated therewith, respectively, as shown in Fig. 2. Specifically, a highly advanced invention (an invention involving a higher value of technological knowledge provided for the society) h is claimable in a broader scope S, whereas a lowly advanced invention (an invention involving a lower value of technological knowledge provided for the society) h is claimable only in a narrower scope S. - 65 -