Draft every elective-essay answer as a chain: name the statutory basis, list its requirements, apply each requirement to the question's facts, then conclude. Keep novelty and inventive step in separate paragraphs, weigh amendment against argument after a rejection notice, and test literal infringement before equivalence. Track progress with one weekly timed essay and a five-line rubric rather than by pages of notes.
Fixing Answers That Recite Law Without Applying It
Open by naming the statutory basis, list its requirements in compact form, then spend most of the space applying each requirement to the question's facts. Close with a one-line conclusion that visibly follows.
Treat each essay as subsumption. For novelty under Article 29(1), the chain is: identify the claimed invention from the claims; identify the invention disclosed in the cited publication; compare them element by element; conclude identical or distinct. For a description question under Article 36, the chain is: state the requirement (clarity, support, enablement), then test the drafted claim against it. Writing the requirement list before drafting forces you to notice when the facts leave one requirement unaddressed.
Build the skeleton into reusable checklists while you still have weeks to revise. Convert each topic in your notes into a short element list, then retire the prose version: revision means re-running checklists against new fact patterns, not rereading sentences. In timed writing, mark the four parts so each requirement gets its own application sentence and nothing is left implicit. The measurable outcome is a draft whose every conclusion can be traced upward to a stated requirement.
Keeping Novelty (新規性) and Inventive Step (進歩性) Apart
Novelty asks whether a single prior disclosure already contains the claimed invention. Inventive step asks whether a skilled person could easily reach it from one disclosure plus familiar modifications. Give each its own paragraph and its own comparison.
Worked scenario A: a question gives Claim 1 — a cooling device with heat pipes plus a corrugated fin — and one publication teaching heat pipes with flat fins, while a second reference describes corrugated fins as a known option. A plausible mistake is writing 'the claim lacks novelty because corrugated fins are known' and then blending both references into one inventive-step paragraph, never naming the distinguishing feature. The claim here is in fact novel over the first publication, because a different fin shape is an element-by-element difference.
The stronger decision is to run the statutory order: paragraph one compares the claim against the first publication, finds the fin shape as the single distinguishing feature, and concludes novelty; paragraph two then asks inventive step — whether a person skilled in the art would easily substitute corrugated fins for flat fins in view of the second reference. Separating them matters because the refutation points differ: novelty fails only on identical disclosure, while inventive step can be rebutted by showing the substitution is not a familiar one.
Amendment or Argument After a 拒絶理由通知 (Rejection Notice)
A rejection notice invites a choice: narrow or reword the claims by amendment within the limits of the original disclosure, or argue that the examiner's comparison misreads the claim or the reference. Address the strongest ground first.
The relevant framework: an examiner issues a rejection notice (Article 50) listing grounds such as lack of inventive step or description defects; an applicant responds, usually by amendment (Article 17-2) and argument. Amendments may not introduce new technical matter beyond the originally filed disclosure, so the original description and drawings define the amendment toolbox. If a rejection decision (Article 49) follows, the remedy is an appeal against the decision (Article 121), and correction scope at that stage is again constrained; the JPO's trial pages outline these procedures.
Worked scenario B: the notice attacks one claim as obvious, and the original description supports only the narrower embodiment with a pulsed drive mode. A tempting mistake is amending to add that mode while also inserting mechanism details that never appeared in the filing. The better decision: amend solely to recite the pulsed mode exactly as described, argue the remaining points, and tell the client why the outside material cannot be imported under the amendment limits and the candor owed under the Benrishi Act's professional duties.
| Situation in the notice | Likely better move | Key check before acting |
|---|---|---|
| Reference misread; a distinguishing feature exists | Argue with claim-construction points | Anchor every argument to claim language and what the reference actually discloses |
| Claim is broader than the disclosure supports | Amend to narrow within the original description | No new technical matter; clarity and support requirements still met |
| Several grounds, only some curable | Amend for the curable ones, argue the rest | Narrow first, then rebut whichever grounds survive the amendment |
Infringement Essays: Literal Reading First, Then Equivalence
Match every claim element to the accused product under the statutory definition of working; raise equivalence only after showing a literal element is missing; treat prior-use rights as defenses tied to the filing date.
Compact scenario C: the defendant's product omits one recited sensor but performs the same result, and the defendant's factory used a similar device before the filing. A plausible mistake is an essay that argues equivalence before establishing what literal comparison shows, and invokes the prior-use right (Article 79) without checking when the defendant's business began. The better order: first run the element-by-element comparison under the working definition in Article 2(3); once one element is absent, address the court-developed equivalence doctrine; then weigh the statutory prior-use defense against the filing-date facts.
The doctrine behind this order is teachable material. Equivalence is case law, not statute; the leading Supreme Court decision is commonly taught through a requirement set — the differing part is non-essential, substitution was attainable for a skilled person, and the accused product achieves the same function, effect, and purpose, among others — so an essay should test each requirement against the facts. Indirect infringement (Article 101) is a separate statutory category covering acts that enable another's direct infringement; do not merge it into the equivalence discussion.
Paris Route and PCT Route: Different Facts, Different Procedure
Paris-route facts mean a foreign filing with priority claimed under the Paris Convention; PCT facts mean an international application entering Japan's national phase later. Identify the route before writing any procedural paragraph.
Name the institutions accurately. Under the Paris route, the Japanese application claims priority from an earlier filing in a member country within the priority period. Under the PCT, the applicant files one international application, receives an international search report and written opinion, and then enters the Japanese national phase within the prescribed period, submitting a translation. JPO pages on international applications cover both routes. Domestic priority (Article 41) is a separate device: a later Japanese filing claiming the earlier one, unrelated to the PCT.
Essays use the route to test sequencing. A PCT fact pattern invites discussion of when the Japanese application is treated as filed and which disclosure serves as the basis for novelty; a Paris fact pattern invites priority analysis against an intervening disclosure between the earlier foreign filing and the Japanese filing. Practicing both: take one fact pattern and rewrite it under each route, listing which dates change and which documents enter the comparison. This drill exposes the habitual error of transplanting Paris priority rules into a PCT timeline.
A Weekly Timed Essay With a Five-Line Rubric
Write one complete essay each week under time pressure, then score five lines: correct legal basis, every requirement applied, facts anchored, paired doctrines separated, conclusion supported. Record which line scores lowest and target it.
The exercise: pick a past-style question — a patentability comparison, a rejection-notice response, or an infringement set — from published materials or your course book. Outline for one minute, write without notes, then score with the rubric in the bullets below and log the lowest line. Expected early observations: conclusions cite no basis, the novelty and inventive-step paragraphs blend, and application sentences summarize the law instead of pointing at facts. After several weeks, fact-anchoring improves first; treat rubric movement as a learning milestone, not a prediction of grading outcomes.
Use the log actively: rewrite only the weakest rubric line of the week, not the whole essay. If separation keeps failing, copy your merged draft and physically split it with paragraph headings before rewriting; the visual break makes the mixed reasoning obvious. If anchoring is the weak line, underline each fact in the question before outlining and require one underlined fact per application sentence. This converts revision from rereading into targeted repair, and the log grows into a personal list of your recurring drafting faults to re-check before the exam.
- Legal basis: every conclusion names the correct article or doctrine.
- Coverage: each stated requirement gets its own application sentence.
- Anchoring: each application sentence points to a specific fact in the question.
- Separation: novelty, inventive step, literal infringement, and equivalence stay in their own paragraphs.
- Conclusion: follows from the application, with no new argument introduced.
An Adaptable Sequence and Readiness Checks
Weeks one and two: build element checklists. Weeks three to six: timed essays by topic with the rubric. Final weeks: mixed sets and amendment-versus-argument drills. Readiness means structure survives time pressure and fatigue.
A concrete, adjustable sequence: days one to ten, convert the core articles — 29(1) and (2), 36, 17-2, 2(3) and 101, 79 — into one-page checklists; days eleven to thirty, one weekly timed essay per rubric line rotation; final stretch, mixed sets where you only outline answers aloud, then write one in full each week. Compress or stretch the phases to your remaining calendar. For administrative matters — subject options, dates, formats — the Japan Patent Office's examination pages at jpo.go.jp are the issuer's reference; confirm current details there.
Treat each check as binary and re-run it after any phase change. If a check fails, the fix is to return to the matching earlier phase rather than adding new reading — a failed split drill sends you back to checklist construction, not to a new textbook. The free practice set and the study-guide library on this site supply additional fact patterns for every phase, and the same rubric lines transfer unchanged to any topic you outline there.
- Outline any element question in under a minute using the four-part chain.
- Split a deliberately merged novelty and inventive-step draft correctly.
- State the amendment limits from memory and justify an argument-versus-amendment choice.
- Show the last two rubric-scored essays with no missing legal-basis line.
References and further reading
Use these references to explore the concepts and check the latest information from the relevant organizations.