should be welcomed, it also means that some patents granted under the old standard may be revoked under the current standard. Thus, careful review is necessary to evaluate those patents. The same is true regarding how to decide whether a support requirement is met, and we recommend including as many fall-back positions as possible in the specification in order to carve out non-supported subject matter by way of amendment in the event that the JPO makes a negative decision in this regard, as it is likely that the JPO will apply a somewhat stricter approach regarding the support requirement than the approaches applied by other patent offices. Lastly, an inherent disclosure is a situation wherein, for example, the technical feature in a claim in question is not explicitly disclosed in a prior art document, but is necessarily possessed by a material disclosed therein. Such a situation frequently occurs in the field of biotech. In the case of a product claim, our proposed solution for the above problem is reformulating it into a use-limited product claim wherein a use having a link with the disputed technical feature is stated. The reason for this is that the JPO and the courts tend to acknowledge the novelty of the subject matter claimed therein as long as prior art documents are silent about such a use, which is likely the case. The above strategy is possible in Japan, as a stated use in a product claim directed to a non-medical subject matter also has a limiting effect, unlike the EPO’s medical use claim practice. What advice would you give to a less experienced patent attorney regarding biotech patent prosecution? Some biotech patents are based on cutting-edge technologies, and we often encounter situations in which an examiner does not seem to correctly understand the technology underpinning the patent application under examination. However, lessexperienced patent attorneys will tend to blindly accept what an examiner argues before thoroughly analysing the argument. Thus, our advice for these attorneys is that in order to be more effective, they should trust in the power of invention, and should rather start with the mindset that the invention must be something patentable, as the aim is to get a patent granted. From our experience, even in cases where getting a patent grant appeared to be hopeless, we could usually find a way through in the end. Therefore, an approach with the above mindset is more effective than one that starts from doubting the patentability of the invention. EXPERT INSIGHT 59 About Masaki Morishima Masaki Morishima is a patent attorney and head of the International Client Department at Saegusa & Partners, with more than a decade of experience in patent prosecution. He is also co-head of the firm’s Chemical and Biotech Department, responsible for overseeing the work of almost a dozen attorneys and staff. His own practice involves working with large multinational corporations filing patents and launching products in Japan, drawing upon his wealth of experience in drafting and prosecuting patent applications. About Saegusa & Partners Saegusa & Partners is one of Japan’s leading patent firms. Founded in 1946 and headquartered in Osaka, Saegusa & Partners boasts a team of experts whose practices cover organic and inorganic chemistry, biotechnology, pharmaceuticals, foods, cosmetics, machinery and electronics. The firm is especially proficient in patent law matters relating to the field of chemistry and biotech, and each of its past presidents has been a patent attorney with expertise in chemistry. Contact Masaki Morishima Partner Saegusa & Partners Kitahama Konishi Building, 7-1, Dosho-machi 1-chome, Chuo-ku, Osaka-shi, Osaka 541-0045, Japan Tel: +81 6 6203 0941 Fax: +81 6 6222 1068 E: m-morishima@saegusa-pat.co.jp www.saegusa-pat.co.jp There have been great developments in three areas: namely, a technical effect in the context of inventive step, support requirement, and inherent disclosure.
RkJQdWJsaXNoZXIy Mjk3Mzkz