the support requirement – namely, in regards to what extent an applicant is allowed to generalise, in a claim, the technical evidence given in the specification as filed. Such evidence is typically in the form of experimental data, and such generalisation is significant in the field of biotech. In view of this, we believe that if sufficient technical evidence is included in the specification as filed, there is a good chance of obtaining a reasonable scope in Japan, especially when taking into account the JPO’s generous approach regarding amendments. This is because such sufficient technical evidence allows a broader scope, whereas a ‘cosmetic’ amendment that only carves out the prior art or non-working embodiments, etc. may be possible under the JPO’s generous approach on amendments, even if there appears to be no clear basis in the specification as filed from the nonJapan-based practitioner’s point of view. In what ways can the skills of a dedicated patent attorney prove to be essential here? A dedicated patent attorney can act as a mediator who helps streamline communication between the examiner and the applicant, explaining the examiner’s messages to the applicant so that they can understand the examiner from the point of view of practitioners in their country or region, as well as explaining the applicant’s messages to the examiner so that the examiner can understand the applicant from the Japanese practitioner’s point of view. Obviously, this requires a deep understanding of not only Japanese practice but also the local practice of the applicant’s country or region, enabling dedicated attorneys to understand the mindset of both sides. Speaking from your own experience, what are the most common mistakes that you see made during patent prosecution? It has become more and more common for us to be asked to take over cases under examination from other patent firms, probably in order to increase the chances of success regarding cases that appear to be stuck. In those cases, we often find that the previous firm’s responses to the examiner’s grounds of rejection do not seem to directly address the examiner’s comments, but rather stick to their own theories. What we learned from this is that it is essential to address the exact reasons why the examiner thinks that the claimed subject matter is not patentable. While doing so may be easier for applicants for cases before their local patent office because of a deeper understanding of local practice as well as the local language, the same should also go for Japanese cases – with the help of a good Japanese patent attorney. EXPERT INSIGHT 57 It has become more and more common for us to be asked to take over cases under examination from other patent firms, probably in order to increase the chances of success regarding cases that appear to be stuck.
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