Japanese Intellectual Property, Patent and Trademark Law Firm in Japan

Most countries including Japan prohibit an amendment to add “New Matter” which is beyond the original disclosure into a patent (utility model) application.  However, since each country has a different interpretation of “New Matter”, the practice of amendments also slightly differs according to countries.
Here is an introduction of Japanese practice regarding “New Matter” and the comparison of thereof with other countries (USA, Europe, China, and Korea).

“New Matter” in Japanese practice

Japanese patent law stipulates that any amendment shall be made within the scope of the matters stated in the originally filed application, prohibiting the addition of new matters (Article 17-2(3)).  If an amendment fails to meet this requirement, a patent application falls under a reason for refusal (an office action) or a ground for invalidation.

According to the Examination Guidelines in Japan, an amendment that adds not only matters explicitly stated in the original application but also matters "obvious" from the statement in the original application” can be allowed.  In other words, the matters that are neither explicitly described in nor obvious from the original disclosure can be regarded as “New Matter” in Japanese practice.

Under this guideline, the matters that are not directly stated in the original disclosure can be introduced by an amendment, as far as the matters are considered obvious based on the original description or drawings from the standpoint of a person skilled in the art.

“New Matter” in other countries

USA

According to the MPEP in USA, newly added limitations to claims, the specification or drawings must be supported in the specification through "express, implicit, or inherent" disclosure.  Therefore, the matters that are not expressly, implicitly, or inherently supported through the original disclosure can be regarded as “New Matter” in US practice.

Europe (EPC)

According to the Guidelines for Examination in EPC, an amendment must be shown to be"directly and unambiguously" derivable from the original application.  Therefore, the matters that are not determined directly and unambiguously from the original disclosure can be regarded as “New Matter” in EP practice.

China

According to the Guidelines for Examination in China, an amendment shall not go beyond the scope of the original (initial) disclosure.  The original disclosure includes not only the contents explicitly described in the description or drawings, but also the contents determined "directly and unambiguously" according to the original disclosure.  Therefore, the matters that are not determined directly and unambiguously according to the original disclosure can be regarded as “New Matter” in Chinese practice.

Korea

According to the Guidelines for Examination in Korea, the matters that are "obvious"from the original disclosure do not constitute “New Matter”.  In other words, the matters that are neither explicitly disclosed in nor obvious from the original disclosure can be regarded as “New Matter” in Korean practice. 

Comparison

Japanese practice regarding “New Matter” is similar to that of Korea in that the matters obvious from the original disclosure do not constitute “New Matter”. Whereas, there are similarities in the interpretations of “New Matter” between China and EPC in that both countries have adopted the criterion of “directly and unambiguously”.

As seen above, the requirement “directly and unambiguously” in the practices regarding "New Matter" in China and EPC is stricter than those in Japan, USA and Korea. Refer to a comparison table below.

Comparison Table of “New Matter” 

Notes.
This analysis is based on our investigation and our views at present so that there is possibility of change in the practice regarding “New Matter” in each country.  It is recommended that you contact local agents to acquire more precise information on the practice, if necessary.

If you need more information in this matter, please contact us athttp://en.aigipat.com/contact/index.html.

End of report