Notice of Revision of Examination Guidelines for Amendment of Description,Claims and Drawings

1. Summary of Revision of Examination Guidelines

1.1 Keys to the Revision

In accordance with the old Examination Guidelines, an amendment was allowable only within the scope of "matters expressly present in the description, claims or drawings as originally filed" and "matters directly and unambiguously derivable from the matters described in the description, claims or drawings as originally filed".
In the newly revised Examination Guidelines, such strict restriction on amendments are loosen to some extent, as mentioned below.

(1) The revised Examination guidelines change the scope of allowable amendment to "matters expressly present in the description, claims or drawings as originally filed" and "matters inherently present (matters obvious from the disclosure) in the description, claims or drawings as originally filed".

(2) "matters inherently present in the description, etc. as originally filed" means matters which are obvious to a person skilled in the art in the light of technical common knowledge as of the filing, and which are implicitly accepted by a person skilled in the art as if they were present in the description, etc. In addition, they include a matter inherently present to a person skilled in the art by a plural matters*1 described in the description, etc. as filed.

(3) The matters described not only in the embodiments but also in the clause for "the problems to be solved by the invention" are taken into consideration to judge whether the amendment is allowable. Accordingly, in some extent, an amendment for generalizing to a broader concept or restricting to a narrower concept would be acceptable.

1.2 Applicable Date of Revised Examination Guidelines

The revised Examination Guidelines are applied to those applications filed on or after January 1, 1994 and examined on or after October 22, 2003.

---

*1 Matters described in the problems to be solved by the invention and the preferred embodiments of the invention, in the description and drawings, etc.

---

2. Contents of Revision of Examination Guidelines

2.1 Amendment to Claims

(1) An amendment as set forth below will be deemed as an addition of a new matter.
Amendment which adds a matter not described in the description, etc. as a result of generalizing to a broader concept; and
Amendment to be a matter which is excluded from the description, etc. as a result of restricting to a narrower concept.

(Examples)
1) Case 6 Related to Judgment on New Matter (See Attached Document)
2) Case 9 Related to judgment on New Matter (See Attached Document)
3) Case 10 Related to Judgment on New Matter (See Attached Document)

(2) If part of a matter defining the invention in the claims is deleted causing generalization of concept, but the deleted words is essentially of no technical significance, and it is obvious that no new technical meaning is introduced as a result of an amendment (or it is obvious from the disclosure in the description, etc. that the deleted matter is an optional addition), such amendment is not deemed as an addition of a new matter.

(Example)
1) Case 1 Related to Judgment on New Matter (See Attached Document)

(3) Within the scope of the disclosure in the description, etc. as filed, an amendment of the claims on the basis of the drawings is allowable.

(Examples)
1) Case 39 Related to Judgment on New Matter (See Attached Document)
2) Case 40 Related to Judgment on New Matter (See Attached Document)

2.2 Amendment to "Detailed Description of the Invention" clause

(1) Addition to the "Effect of the Invention" clause
Generally, an amendment adding a new effect of the invention is judged to be an addition of a new matter. However, such amendment may be allowable if the structure, operation and function of the invention are explicitly described in the description, etc. as filed, from which the additional effect appears to be obvious.

(Example)
1) Case 21 Related to Judgment on New Matter (See Attached Document) Change in Criterion of Judgment

(2) Others
An amendment adding the content of prior art documents to the claims or the embodiments of the invention, adding specific examples of the invention, or adding a matter unrelated or contradictory to the contents of the description, etc. as filed is not allowable as usual.

2.3 Amendment of Drawings

An amendment of drawings is allowable if it remains within the scope of the disclosure in the description, etc. as filed. But the drawings after an amendment often contain matters other than those described in the description, etc. as filed.

(Examples)
1) Case 44 Related to Judgment on New Matter (See Attached Document) Change in Criterion of Judgment
2) Case 46 Related to Judgment on New Matter (See Attached Document) Change in Criterion of Judgment

---

3. How we cope with the new Revision

Since the restriction on an amendment after the revision is still strictly imposed as compared to the United States, even though the restriction on amendment has been loosened to some extent, we recommend that any applicant should look through the matters described in the description, etc. carefully as usual before filing an application.
When making an amendment in response to the notification of reasons for refusal, etc., an applicant can, as necessary, perform the amendment within the scope of the matters inherently present in the description, etc. as filed. However, since an addition of a new matter falls under the ground for invalidation, an amendment outside the scope of the matters expressly present in the description, etc. as filed should be as restricted as possible. Moreover, in the case of performing an amendment as above, it is necessary to sufficiently explain in his or her argument that the matter added as a result of the amendment is one that is obvious from the description, etc. as filed.

[Reference Data]
Cases Related to Amendment of Description, Claims and Drawings (A New Matter): Japan Patent Office (Partial translation)