ClaimsForJapan

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Claims For Japan: 

Claims For Japan FICPI Patent Drafting Course November 2001 Shoichi Okuyama

Not So Much Different: 

Not So Much Different While differences do exist, they have become less as a result of recent harmonization efforts. As a result of the 1994 Patent Law Amendment, the requirements for claims and specification are quite similar to those under EPC. But, yes, there still remain some differences.

One-part v. Two-part: 

One-part v. Two-part The Japan Patent Office and the courts do not distinguish between the one-part and two-part formats. Practically, one-part, American style claims are recommended.

How many claims?: 

How many claims? No restrictions on the number of independent claims. Claims can be restricted even after grant. Examination fees and annuities are dependent on the total number of claims.

Claim dependency: 

Claim dependency Few restrictions or fee penalties on claim dependency. Multiple or multiple-on-multiple dependent claims are OK without additional fees. A claim cannot depend on more than one claims at the same time (eg. Claim 3 dependent on Claims 1 and 2 is not allowed, “or” is OK).

Means Plus Function Claims: 

Means Plus Function Claims No provisions like Section 112, Paragaph 6 in the US Patent Law. But the courts often find means plus function claims too vague and tend to rely on the embodiments found in the specification and drawings.

Incorporation By Reference: 

Incorporation By Reference Not recommended. Be careful with PCT applications Not allowed officially, but this is just a Patent Office position. No court decisions exist on this issue.

Software-related Inventions: 

Software-related Inventions If drafted as software closely related to a computer, software claims are allowed. The technical character of the invention is not required. Technical character is provided, according to JPO, by the use of computer.

Chemical Inventions: 

Chemical Inventions No paper or prophetic examples accepted. Real experimental data is required. As many examples as possible to support broad claims.

Secondary Use: 

Secondary Use Claimed as a product with a specific utility. “A cancer drug comprising compound A” when compound A is known as a drug for cold. “Use of compound A…” format is permissible, but not recommended. Such claim is understood as a method claim.

Medical Procedures: 

Medical Procedures Not patentable on humans. Animals are OK. Treatment and diagnostic methods. Products and kits are patentable.

Thank You: 

Thank You