Six common mistakes in Japanese patent applications

Six Common Mistakes in
Japanese Patent Filings
<Claims>

Six Common Mistakes in
Japanese Patent Filings

1. “Mere method claims” for forming a product
2. Limitations only by names of claimed subject and elements
3. Single dependent claims
<Specification>
4. Detailed prior art
5. Detailed objects, summary, and effects of the invention
6. Words, “the invention” and “the present invention”

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1

Mistake 1: “Mere method claims” for forming a product

2

Decisions of “Method for making” claims

Ex. “Method for grinding a glass surface”
1. H16(Ne)4518 (Tokyo High Court, Feb 24, 2005)
“The invention is directed to a Cutting Method of Street Manhole,
which is a cutting method, but not a method for making a
product”

Suggestion: Adopt “Method for making” claims.
Benefit of “Method for Making” Claims:
Claim scope extends to the final products.

2. H15(Wa)860 (Osaka District Court, April 27, 2004)
“To be qualified as a product, which is to be made by a method
for making, the product should be separately sold” “The
claimed subject is only a part of a product, and therefore, claim
is not considered as a method for making a particular product.

Selling and using the final products infringe patents.
Cf. Mere method Claims:
Only “using the method” infringes the patent.

3. H13(Wa)3764 (Tokyo District Court, November 26, 2003)
“A method of making claim should change chemical or physical
characteristics or forms”

It used in a foreign country, no infringement.
Better to try, even when chances are small.

3

4

Mistake 2: Limitation only by “name” of
the claimed subject

Suggestions for “Method for Making” Claims.
1. Explicitly say “method for making/producing (product)”

Ex. “Secondary Battery,” where elements of the top claim can be
any battery.

2. The product to be made should not be a part of an object.
→ Could be considered as mere method for forming/changing.

Suggestion: Add requisite elements for accomplishing the subject,
or

3. The product must have been changed.
Not enough:

Broaden the name of the claimed subject.

covering a wafer by resist,
exposing the resist, and

In determining inventive step, limiting by name of claimed subject
does not help a lot

etching the resist.
Sufficient:

further etching the wafer.

In infringement litigation, it limits the scope of claims.
5

6

Limitation only by name of claim element:
Not suggested as well

Mistake 3: Single dependencies
Only claims depending from “STF claim” are examined.

Ex. “carrier” which does not carry anything in claim language.
Suggestion: Add explanation for being the named element, or

Claim 3

Claim 4

Claims to be
examined
1~7

2

1~5

3

Claim 2

Special technical
feature (STF) was
found in claim:
1

Claim 1

1~4

Claim 5

Broaden the name of claimed element.

Claim 6

Claim 7

4

1~4

Not Found

In determining inventive step, limiting by name of claimed
element does not always help, for vagueness.

1~4

To increase a chance to be examined,

In infringement litigation, meaning of the element is narrowly
construed in reference to the specification.

Claim 5 should depend from claims 3 and 4 as well.
Claims 6 and 7 should depend from claims 2 to 5 as well.
7

8

Mistake 4: Detailed prior art

Drafting multiple dependent claims
Suggestion:

Anything explained in “Prior Art” section is

Each claim should depend from all possible claims.

deemed not a part of his invention.
→ Cannot be used in amendment.

What about PCT Application to be entered into JP or EP

→ Descriptions in “Prior Art” limit claimed scope.

Suggestion: JP/EP Style

→ More description, more limited.

Depending from multiple of multiple‐dependent claims,
because adding dependencies later may introduce a new matter.

If problems of prior art are discussed, the invention is
construed not to have the same problems.

What about PCT to be entered into US as well.

→ Descriptions of prior art problem limit claimed scope.

Suggestion:
File a continuation from PCT and amend claims at the entry.
9

Descriptions of Prior Art

10

Mistake 5: Detailed Objects, Summary, and
Effects of the invention

Suggestion:
1. Move discussions and explanations of prior art into
embodiment.

Anything written in those sections limit the scope

2. Discuss and explain them as a part of your invention or an
alternative solution.

of the inventions, since:
Objects of the invention,

3. In the prior art section, merely say:

Summary of the invention, and

Ex. Abstract of 2001‐12345 says that “(cited sentences).”
(No admission is made.)


Cf. In ****, it is disclosed that ******.

mean:

(Applicant’s admission is made)

those of the claimed invention.
11

12

Decisions that limited claims in reference to
Objects, Summary, and Effects of the invention

Drafting Objects, Summary, and Effects
of the invention

1. Tokyo District Court, Ｈ10(wa)30302
Claimed phrase, “lower portion” was limited in
reference to the explanation made in Effect of the
Invention section.

Suggestion:
Write minimum in the following sections.
Objects of the invention
Summary of the invention

2. Osaka District Court, Ｈ08(wa)13483


Claimed phrase, “natural stone” was limited in
reference to the explanation in Object of the
Invention section.
13

Mistake 6: Saying “the invention” or “the present
invention” in preferred embodiment

14

Avoiding “the invention” and “the present invention”

Suggestion: Avoid saying “the invention” or

“The invention” or “the present invention” means

“the present invention.” （本発明)

claimed invention.
Ex. According to the present invention, (effect) is achieved.
→ Claimed inventions are construed to achieve the effect.

15

Ex. According to the first embodiment, ….. is achieved.
→ Does not necessarily limit claims.

16

Six common mistakes in Japanese patent applications

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