Publication date 2017-10-20 Auteur/autrice Osamu Mikuni
Publication media INTELLECTUAL PROPERTY MANAGEMENT Langue Japanese

Dr. Mikuni’s paper, titled “Overcoming Rejection for Failure to Satisfy Written Description Requirement in Prosecution using Postfiled Data”, was published in INTELLECTUAL PROPERTY MANAGEMENT on October 20, 2017.

Short description:

Generally, scientific and technical theses are submitted once experimental data have been collected and the research has a certain degree of completeness. Meanwhile, unlike scientific and technical theses, many patent applications are filed at a stage when only the bare minimum of experimental data has been obtained, or in some unavoidable cases, without any experimental data at all. Consequently, this leads to reasons for rejection being issued due to deficiencies in disclosure requirements (enablement requirement, support requirement, etc.). This does not happen very often when specifications are created on the basis of the original scientific or technical thesis, but in terms of total numbers, patent applications are rarely drawn up this way. In acknowledging this situation, the author investigates, on the basis of actual cases to date, the possibility of overcoming disclosure requirement violations by submitting, mainly during the examination stage, so-called post hoc data for patent applications which were indicated as having disclosure requirement deficiencies.

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