We are an international patent law firm capable of assisting clients in all aspects of filing for patents, trademarks, and designs domestically and overseas.

Under the Japanese patent practice, enablement requirements and support requirements are very strict, and accordingly, in order to meet those requirements, the specification and claims must be drafted as follows;

1. the description of the specification is so sufficient that one skilled in the art can practice the entire scope of the invention encompassed by claims without referring to any documents or materials other than the specification,
2. it can be recognized, from the description of the specification and the technical knowledge that was very common or had already been well-known at the time the application was filed, that the intended results can be obtained in the entire scope encompassed by claims, and
3. the significance of each feature recited in claims is clearly supported and verified in the specification.

For example, according to these strict enablement and support requirements in Japan, the critical significance of both the upper and lower limits of a numerical limitation recited in claims must be verified with experimental data included in the specification as originally filed or with convincing technical rationale that was self-evident to one skilled in the art at the time the application was filed. In this respect, please note that the description of the specification must clearly prove, with specific examples or convincing technical rationale, that the intended results were actually achieved for the entire scope of claims at the time the application was filed, and must also include specific examples or convincing technical rationale to clearly prove the significance of all the features recited in claims. Further, the breadth of claims must be such that the overall disclosure of the application enables expanding or generalizing the explanation or description in the specification to the scope of the claims while achieving the intended results for entire range encompassed by the claims can still be recognized from the description of the specification.

Submission of experimental data or technical information after the filing of the application or during the examination procedures cannot serve to remedy defects in satisfying any of the enablement requirements and the support requirements.

In our experience in the prosecution, in some cases claims had to be restricted to specific embodiments described in the specification, and in a few extreme examples, the application had to be abandoned because of insufficient support in the specification. It is very rare that the original claims can be retained once a rejection regarding the enablement and/or the support requirements is issued.

In order to avoid the problem caused by rejections regarding the enablement and/or the support requirements,

1. the specification should be formulated to include a sufficient number of examples to fully cover the entire scope of the invention encompassed by claims, and
2. the description of the specification should be prepared such that it proves that the intended results can be obtained in the entire scope of claims.