The patent laws of the "IP5"1 countries have set forth explicit patent disclosure requirements, which require the specification of every patent application to disclose the invention clearly and completely so that a person skilled in the art can practice the invention. This is one of the basic characteristics of the IP5 patent systems. Although the IP5 countries share this and many other common features of a patent application, there are slight differences in the patent disclosures and filing formalities of the IP5 countries. In the preceding IP5 article, we discussed the differences in the filing formalities in the IP5 countries. This article will cover the differences in the application parts and the ordering of the application in the IP5 countries.
China
Rule 17 of the Patent Law of China (incorporating original Rule 18) provides that the description of a patent application must include a title of the invention, and the following parts with a section heading preceding each part: (1) technical field; (2) background art; (3) contents of the invention; (4) description of figures; and (5) preferred mode of carrying out the invention. The description must not refer to the claims for the purpose of describing matters contained in the description. Rule 17 further provides that if an application contains disclosure of one or more nucleotide and/or amino acid sequences, the description must contain a sequence listing, and a copy of the said sequence listing in machine-readable form must be submitted to the State Intellectual Property Office (SIPO). Rule 18 requires that the drawings be numbered and arranged in numerical order. Rule 18 also requires that reference signs appearing in the text must appear in the drawings, and vice versa. Rules 19-22 describe the specific form the claims must take. Further, Rule 20 requires that an abstract consisting of a summary of the disclosure be provided with the application disclosure.
United States
A U.S. nonprovisional (utility) application must include the following: (1) utility patent application transmittal form or transmittal letter; (2) appropriate fees; (3) application data sheet (under 37 C.F.R. § 1.76); (4) specification (with at least one claim); (5) drawings (when necessary); (6) executed oath or declaration; (7) nucleotide and amino acid sequence listing (when necessary); and (8) large tables or computer listings (when necessary). Requirements for arrangement of the specification are provided under 37 C.F.R. § 1.77, and primarily include a title of the invention, cross-reference to related applications, a background section, brief summary of the invention, brief description of the several views of the drawings, detailed description of the invention, a claim or claims, abstract of the disclosure, and sequence listing. The description of the invention should also include the best mode for carrying out the invention, but failure to do so does not result in invalidity of the patent.
Japan
Article 36 of the Japan Patent Law provides that protection and utilization of an invention are promoted through a description, claims, and drawings, which serve both as a technical document disclosing technical details of an invention and as a document of title defining the technical scope of a patented invention accurately. Section 23 of the Regulation under the Japan Patent Law provides that a request for patent must be accompanied by a specification, any necessary drawings, and an abstract. The specification must state: (1) the title of the invention; (2) a brief explanation of the drawings; (3) a detailed explanation of the invention; and (4) the patent claim(s). Article 36(4) further provides the requirements of the description, and requirements for the statement of the claims are provided under Article 36(5) and (6). Only an application that meets these requirements serves both as a technical document and as a document of title. Section 3.2.1 of Part I of the Examination Guidelines further requires applicants to disclose the best mode of carrying out the invention, although failure to disclose the best mode does not result in invalidity of the patent.
Korea
Pursuant to the revisions to the Korean Patents Act, which came into effect on January 1, 2015, requirements for a specification and claims when filing a patent application have been relaxed. Under revised Article 42, any forms of a description of an invention, such as a thesis, papers, or any other publications, may be accepted at the time of filing a patent application in Korea. A specification and claims that meet the formality requirements can be submitted within fourteen months of the earliest priority date. If they are not submitted within this period, the application will be deemed to be withdrawn.
Article 42(2) provides that a patent application must be accompanied by a specification stating the following, along with the necessary drawings and abstracts: (1) the title of the invention; (2) a brief description of the drawings; (3) detailed description of the invention; and (4) the scope of the claims. There is no best mode requirement under the Korean Patents Act.
EPO
Under Article 78(1) of the European Patent Convention (EPC), a European patent application has to contain: (1) a request for the grant of a European patent; (2) a description of the invention; (3) one or more claims; (4) any drawings referred to in the description or the claims; (5) an abstract. Rule 42 of the EPC provides details on the content of the description. In particular, Rule 42(1) provides that the description shall: (1) specify the technical field to which the invention relates; (2) indicate the background art; (3) disclose the invention, as claimed, in such terms that the technical problem, even if not expressly stated as such, and its solution can be understood, and state any advantageous effects; (4) briefly describe the figures in the drawings, if any; (5) describe in detail at least one way of carrying out the invention claimed; (6) indicate explicitly, when it is not obvious from the description or nature of the invention, the way in which the invention is industrially applicable. The EPC does not have a best mode requirement.
Footnote
1. The five major intellectual property offices: the Korean Intellectual Property Office; European Patent Office; Japan Patent Office; State Intellectual Property Office of the People's Republic of China; and United States Patent and Trademark Office.
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