Particular claim expressions available in Japan
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Particular claim expressions available in Japan

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Hidenori Hamai of Shiga International Patent Office compares particular claim expressions at the JPO, USPTO, and EPO

This article describes particular claim expressions available in Japan compared to the US and Europe. It is hoped that it will provide help in obtaining patents in Japan.

1. Disclaimer (negative limitation)

‘Disclaimer’ refers to claims explicitly stating an exclusion of only a part of the matters stated in the claims (see the JPO’s Examination Guidelines for Patent and Utility Models, or the Examnination Guidelines, Part IV, Chapter 2, 3.3 and 3.3.1 (4)).

One example of a recitation of a disclaimer would be: "provided that… is excluded" at the end of the claim.

It can be said that such disclaimers are more likely to be accepted by the JPO than the USPTO or EPO. Below, comparisons are made based on standards and actual cases.

(1) Comparison in standards

At the USPTO, Section 2173.05(i) of the Manual of Patent Examining Procedure (MPEP) stipulates that "any negative limitation or exclusionary proviso must have basis in the original disclosure."

At the EPO, however, Article 123(2) of the European Patent Convention (EPC), 1.7, 1.7.2, stipulates that "A disclaimer may be allowable in order to:

  • restore novelty by delimiting a claim against the state of the art under Art. 54(3) and (4) EPC 1973;

  • restore novelty by delimiting a claim against an accidental anticipation under Art. 54(2) EPC 1973; an anticipation is accidental if it is so unrelated to and remote from the claimed invention such that the person skilled in the art would never have taken it into consideration when making the invention; and

  • disclaim subject-matter which, under Art. 52 to 57 EPC 1973, is excluded from patentability for non-technical reasons”.

In addition, it is stipulated that "a disclaimer which is or becomes relevant for the assessment of inventive step or sufficiency of disclosure adds subject-matter contrary to Art. 123(2) EPC 1973".

Thus, it can be said that, at the EPO, disclaimers against prior art documents are generally options only for restoring loss of novelty caused by an accidental anticipation. It seems that the availability of this option is very limited.

On the other hand, at the JPO, the Examination Guidelines, under "Amendments Adding New Matter", describe as follows.

A disclaimer “is permitted [emphasis added] if the ‘disclaimer’ after exclusion does not introduce any new technical matter. The amendment to provide a ‘disclaimer’ in the following (i) and (ii) does not introduce any new technical matter, and the amendment is permitted.

(i) The amendment to exclude only the overlap in cases where the claimed invention overlaps the cited invention and is thus likely to lose novelty, etc.

(ii) [omitted]”

It should be noted here that the ‘disclaimer’ in the Examination Guidelines corresponds to the ‘undisclosed disclaimer’ at the EPO. In other words, the Examination Guidelines explicitly stipulate that an undisclosed disclaimer to overcome lack of novelty is permitted without specific conditions, such as "accidental anticipation". In this regard, a disclaimer is more available at the JPO than the USPTO or EPO.

What about lack of inventive step? The Examination Guidelines do not explicitly stipulate that a disclaimer is available for resolving a lack of inventive step. Thus, it is conceivable that a disclaimer cannot be used for such purposes.

However, in one court decision (2006 (Gyo-Ke) No. 10563), the judge mentioned that the Examination Guidelines do not stipulate any requirements for allowing a disclaimer. Thus, even though the Examination Guidelines do not positively stipulate that the use of a disclaimer is permitted for overcoming a lack of inventive step, this does not mean that a disclaimer cannot be used in an attempt to overcome a lack of inventive step rejection.

In fact, in Japan, a disclaimer can be effectively used to address not only lack of novelty but also lack of inventive step. Examples are provided below.

(2) Actual cases

Actual case 1: JP-B-6983122

Claim before amendments – a composition for corrosion inhibition comprising at least one compound selected from, among others, homopolymer or copolymer of ethane dithiol.

Claim after amendments – a composition for corrosion inhibition comprising at least one compound selected from, among others, homopolymer or copolymer of ethane dithiol, provided that a case where a monomer of the copolymer includes an epoxide is excluded.

Disclosure of prior art – claim 1 discloses a reaction product consisting of dimercaptans and epoxide.

Comments – this case was handled by Shiga International Patent Office. The term ‘epoxide’ was not described in the specification. Thus, the amendment corresponds to an undisclosed disclaimer.

This disclaimer was able to overcome a rejection due to lack of inventive step over the prior art.

The arguments provided in the remarks were that "even a skilled person could not have arrived at the present invention based on the citation, which describes copolymers of dimercaptan essentially [emphasis added] containing epoxides as monomers". This argument is like a ‘teaching away’ argument, because the excluded limitation is disclosed as an essential element in the prior art, and this fact ‘teaches away’ from the argument that a skilled person would be motivated to exclude the essential element from the prior art invention to arrive at the present invention.

In addition, the disclaimer could cover a broader scope than a limitation without a disclaimer, since the other option was to limit the “homopolymer or copolymer of ethane dithiol" to only “homopolymer of ethane dithiol” to distinguish the invention from the prior art.

Thus, a disclaimer can establish inventive step and novelty; for example, by excluding an essential element of the prior art. In addition, a disclaimer can cover a broader scope than a normal amendment when the basis for amendment is not well described in the specification.

Actual case 2: JP-B-6885112

Claim before amendments – a lap fillet weld joint of steel plates, wherein a chemical formulation of the steel sheet is, in mass%, 0.04 to 0.08% carbon, and 0.20 to 0.80% aluminium.

Claim after amendments – a lap fillet weld joint of steel plates, wherein a chemical formulation of the steel sheet is, in mass%, 0.04 to 0.08% carbon, and 0.20 to 0.80% aluminium (provided that a content of 0.30% or less is excluded).

Disclosure of prior art – claim 1 discloses a steel plate comprising 0.005 to 0.30% of aluminium.

Comments – the content of aluminium being 0.30% by mass was not disclosed in the specification. Thus, the amendment adding “0.30% by mass” corresponds to an undisclosed disclaimer.

This disclaimer was able to overcome a rejection due to lack of inventive step over the prior art.

In this case, a parameter feature could be excluded with the disclaimer. Although examples are not provided in this article, the disclaimer could be used for excluding ‘uses’ and other technical features. Thus, it is considered that a disclaimer can be used to exclude any technical features recited in the claims.

Actual example 3: JP-B-7009046

Claim before amendments – a composition in the form of an oil-in-water (O/W) emulsion comprising, among others, at least one emulsifier other than alkyl phosphate salt.

Claim after amendments – a composition in the form of an O/W emulsion comprising, among others, at least one emulsifier other than alkyl phosphate salt, provided that cases where the composition comprises alkyl phosphate in an amount of 0.1% by weight or more are excluded.

Disclosure of prior art – claim 1 recites an O/W-type sunscreen emulsion containing an alkyl phosphate without any content limitation. The specification discloses that a stable emulsion may not be obtained if the amount of the alkyl phosphate salt is less than 0.2% by mass.

Disclosure of JP-B-7009046 – the amount of the emulsifier(s) in the composition may be from 0.1 to 30% by weight, relative to the total weight of the composition.

Comments – this case was also handled by Shiga International Patent Office. The case was interesting because the basis for amendments of the term ‘alkyl phosphate’ was only disclosed in the prior art (i.e., an undisclosed disclaimer), which was incorporated in the first instance, and the basis for amendments for the feature "in an amount of 0.1% by weight or more" was disclosed in the specification of JP-B-7009046. Thus, the disclaimer was a combination of the disclosure of the present specification and the prior art, although the author is not sure that this approach is acceptable all the time.

In addition, although claim 1 of the prior art document discloses alkyl phosphate without any content limitation, the lack of inventive step could be overcome with the amendment because the prior art substantially discloses inventions comprising the alkyl phosphate in an amount of 0.2% by mass or more in consideration of “a stable emulsion may not be obtained if the amount of the alkyl phosphate salt is less than 0.2% by mass”.

Shiga International Patent Office took the safer option of reciting “0.1% by weight or more” is excluded instead of excluding "0.2% by weight or more". This approach indicates that you can use a disclaimer to overcome rejections by excluding inventions or technical ideas that are substantially disclosed in prior art documents, even though a broader invention is explicitly disclosed. It is true that this approach could cover a broader scope than just excluding alkyl phosphate without any content limitation.

2. Unusual parameters

Claims limited with ‘unusual parameters’ are often observed. Unusual parameter means a parameter that is not commonly used in the art. It seems that inventions limited by such unusual parameters are more likely to be permitted in Japan than in the US and Europe. Below, comparisons are made based on standards and an actual case.

(1) Comparison in standards

There does not seem to be any provision in the examination guidelines for unusual parameters at the JPO, USPTO, or EPO.

However, regarding inventions limited with numerical matters, the Examination Guidelines stipulate that even if a claim contains a statement to specify an invention using numerical limitations, the claimed invention shall be identified in the same manner as in ordinary cases (Part III, Chapter 2, Section 4).

At the EPO, in general, it seems that the reasons for refusal for unusual parameters are often due to clarity issues (Article 84, EPC) and sufficiency (Article 83, EPC). For example, according to case T 2700/17, a protocol to determine a feature of an unusual parameter in the specification was found to lack some detail, and the feature of the unusual parameter was then found to lack clarity.

For an unusual parameter in the claims, it is generally necessary to clearly describe, for example, definitions of terms and measurement methods in the specification, and this is common in the three jurisdictions.

However, the author thinks that unusual parameters are more likely to be permitted in terms of concrete judgments at the JPO than at the USPTO or EPO. An actual case compared in the three jurisdictions will be introduced below.

(2) Actual case: JP-B-7138892

Original claim 1 – an anti-reflective film, wherein in a graph of measurement of friction force with a TAC (triacetyl cellulose) film measured by applying a load of 400g to a surface of the film, a maximum amplitude (A) is 0.1 Newtons or less based on the average friction force.

Here, the feature of the maximum amplitude (A) can correspond to an unusual parameter since this is not commonly used in the art.

At the JPO, the meaning of "maximum amplitude (A)" was regarded as unclear. It was possible to overcome this rejection by adding the definition of this term. Thus, this feature was considered a valid way to limit the invention.

At the EPO (Application No. 18790054), the feature of an unusual parameter was rejected because of lack of clarity, with the statement that “it is not clear from the claim which particular structural features are related to the desiderata definition of the maximum friction force amplitude and there seem to be some essential features missing from independent claim 1 (GL F-IV, 4.5 and 4.10)”. The applicant decided to limit the formulation of the film to overcome this rejection.

Thus, it can be said that a broader patent was obtained in Japan because the invention was not limited in terms of the structure of the film before the JPO.

At the USPTO (Application No. 16/311,477), the feature of an unusual parameter was rejected because of lack of clarity, stating that "one skilled in the art would not be able to determine with sufficient or reasonable certainty whether an antireflection film provides the recited maximum amplitude or not given that the measurement is relative to some arbitrary TAC film (see MPEP § 2173.05(b), particularly Section II.)". In addition, novelty and obviousness were also rejected since a cited prior art invention inherently exhibited the claimed "maximum amplitude" (MPEP, Section 2112). The applicant decided to delete the feature of the unusual parameter to overcome these rejections.

Thus, it can be said that the unusual parameter was more acceptable before the JPO.

(3) Comments

At the USPTO and EPO, the feature of an unusual parameter itself was considered unclear. This fact means that the feature of the unusual parameter was invalid for specifying the invention. On the other hand, at the JPO, although the definition of the term was regarded as unclear, since no rejection due to lack of clarity was found in the unusual parameter itself, it was valid as a limitation of the invention.

However, even if unusual parameters are easily accepted at the JPO, the author does not actively recommend employing them. This is because, as pointed out at the USPTO as "inherently disclosed", a product may have been already publicly known in the art. In this case, it seems necessary for the applicant to submit, for example, new data to prove that their product is different from publicly known products, which requires more effort to obtain and maintain a patent.

3. Conclusion

(1) Disclaimer

At the JPO, unlike the USPTO and EPO, an undisclosed disclaimer is permitted without requirements such as ‘accidental anticipation’. A disclaimer is available as a means to overcome a lack of inventive step and a lack of novelty rejection. It seems there are no restrictions for the matters to be excluded, and parameters, uses, and even technical ideas can be excluded. When there is no appropriate basis for amendment in the specification, a disclaimer can be an option to obtain a broader scope of patent.

(2) Unusual parameters

At the JPO, it is generally permitted to limit inventions by unusual parameters, which are not usually regarded as unclear as long as, for example, technical terms and measurement methods are well described. There was an actual case where the requirements for the unusual parameter were judged more strictly at the USPTO and EPO than at the JPO.

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