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)
|
