Comparative Study on Examination Practices
While the Trilateral Offices are working hard to cope with the workload problems of patent applications, it is important that the Offices do not lose sight of the quality aspect of the examination. In order to enhance the quality of the examination, examiners need to understand the invention properly based on the description. That is to say, to maintain and enhance the level of the quality of the examination, it is critical that an applicant prepares a well-drafted application.
Thus, the quality of the examination relies on the quality of the incoming application. In other words, preparing of high quality patent applications leads to the enhancement of the examination quality and also enables applicants to cut cost for making amendments or opinions. In view of these aspects, the Trilateral Offices decided to start the current comparative study.
Comparative Study on Laws, the Regulations, the Guidelines, etc
The Trilateral Offices conducted a comparative study in the 1990s named Project 12 (Project 12.4: Inventive Step/Non-obviousness, Project 12.6: Requirements for Disclosure and Claims) in view of the discussion on the harmonization of patent practice at that time. The purpose of the study was to identify similarities and differences of each Office's law, regulations, guidelines and practice on several items in detail. However, as many years have passed since then, the controlling laws, the regulations, the guidelines and the practices have been modified and many court cases have been brought.
Therefore, the Trilateral Offices revised the 1990s reports as a part of the Comparative Study on Examination Practices. The revised comparative study reports are provided below.
- The Revised Version of the Comparative Study Report on Trilateral Project 12.6 Requirements for Disclosure and Claims (Dec. 18, 2007)
- The Revised Version of the Comparative Study Report on Trilateral Project 12.4 Inventive step/Non-obviousness (Jun. 25, 2008)
Furthermore, the Trilateral Offices conducted a comparative study on Novelty in 2009. The report of the comparative study on Novelty is provided below.
- The Comparative Study Report on Novelty (Nov. 25, 2009)
Comparative Study on Hypothetical/Real Cases
The Trilateral Offices presented 1-3 hypothetical/real cases each concerning the following requirements:
- Requirements for Disclosure and Claim
- Requirements for Inventive step/Non-obviousness
- Requirements for Novelty
Then the Trilateral Offices presented each Office's view as to the presented hypothetical/real cases based on its own laws, regulations, guidelines, practices etc.
Requirements for Disclosure and Claim
Appendix related to Case 1
(Case 1 is based on 2005(Gyo-Ke)10042)
Appendix related to Case 2
(Case 2 is based on 2004(Gyo-Ke)290)
Requirements for Inventive step/Non-obviousness
Requirements for Novelty
- Comparative Study on Hypothetical/Real Cases: Novelty (Nov. 25, 2009)