Not every Japanese Office Action is about prior art. A large share of objections on national phase cases cite Article 36 — the description requirements — and many of them are, at root, translation and drafting-convention problems rather than substantive defects. This article explains what each Art. 36 requirement asks, why translated PCT specifications trigger them, and which fixes are possible within the new-matter limits of Art. 17-2(3).
Table of Contents
| Provision | Requirement | Typical trigger in a PCT case |
|---|---|---|
| Art. 36(4)(i) | Detailed description clear and sufficient for a skilled person to carry out the invention (enablement) | Process steps or parameters not explained; results asserted without how-to |
| Art. 36(6)(i) | Claimed invention is described in the detailed description (support) | Broad genus claim, narrow examples; functional claims wider than the disclosed means |
| Art. 36(6)(ii) | Claimed invention is clear (clarity) | Undefined terms, relative expressions, inconsistent terminology after translation |
| Art. 36(6)(iii) | Each claim is concise | Redundant or duplicative claims |
| Art. 36(6)(iv) | Claims drafted as prescribed by ministerial ordinance | Multi-multi dependent claims (filings on or after April 1, 2022) |
The detailed description must enable the skilled person to carry out the invention across the claimed scope. In national phase cases the objection typically targets claims to a result or a parameter where the specification shows one way of achieving it but claims all ways, or where a manufacturing condition essential to reproduce the examples is missing. The response is usually a combination of argument (the missing step is common general knowledge — supported by a reference), data confirming that the disclosed teaching works, and, where necessary, narrowing the claim to the enabled scope.
Support asks whether the claim scope is backed by the disclosure: whether the skilled person could recognise from the description that the problem is solved across the whole claimed range. Chemical and mechanical cases with one or two examples and a broad claim are the usual targets. Because the description cannot be expanded (new matter), the practical choices are to argue that the disclosed principle extends to the claimed scope, or to narrow the claim toward the examples — keeping in mind that after a final Notice narrowing must qualify as a limited restriction under Art. 17-2(5).
Clarity objections are the most translation-driven of all. The examined claim is the Japanese text; a term rendered with a Japanese word that has a different technical meaning, a relative expression without a standard, or the same feature translated two ways in the claims and the description will draw an Art. 36(6)(ii) objection. The remedies are an amendment consistent with the original disclosure, or — where the original foreign-language text supports the intended meaning — a corrected translation filed with a statement of reasons (誤訳訂正書, Art. 17-2(2)). Conciseness objections usually fall away with the same amendment.
Item (iv) is the hook for the multi-multi claim restriction: since April 1, 2022 the ordinance prohibits a multiple dependent claim that refers to another multiple dependent claim, and the JPO does not examine such claims on the merits until they are fixed. The restriction applies by international filing date, so a PCT application filed before that date is exempt even if it entered Japan later. Restructuring is routine; details and the JPO’s free checker tool are in our multi-multi claim guide.
| Fix | Allowed? |
|---|---|
| Amend claims using wording found in the description | Yes — the standard cure |
| Define a term in the claim using a definition from the description | Yes |
| Add a definition or example that is not in the original disclosure | No — new matter (Art. 17-2(3)) |
| Correct a mistranslation where the original text supports the intended meaning | Yes — by corrected translation with reasons |
| Submit experimental data | Yes, to confirm a disclosed effect or enablement; not to supply a missing disclosure |
| Narrow after a final Notice | Only as a limited restriction (same field, same problem) or claim deletion — Art. 17-2(5) |
For the timing and extension rules that govern all of these responses for overseas applicants, see the Office Action hub; for amendment mechanics, the new matter and final Office Action guide.
FOR FOREIGN COUNSEL & APPLICANTS
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Disclaimer
This article provides general information about Japanese patent practice as of September 2026 and does not constitute legal advice. Periods, fees and examination practice may change, and the deadline for a specific case depends on the documents actually issued. Please consult a qualified Japanese patent attorney about your specific matter.
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