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Multiple dependent claims depending on other multiple dependent claims will no longer be allowed in Japan

Feb 28, 2022


Multiple dependent claims depending on other multiple dependent claims will no longer be allowed in Japan


 



Multiple dependent claims depending on other multiple dependent claims will no longer be allowed to be stated in utility model registration and patent applications from April 2022 onwards.

The Ordinance for Enforcement of the Patent Act and the Ordinance for Enforcement of the Utility Model Act will be amended in order to restrict the description of multiple dependent claims depending on other multiple dependent claims to reduce the excessive examination and monitoring by third parties.

This Ministerial Ordinance for Partial Revision of the Enforcement Regulations will be promulgated on February 25, 2022 and will come into effect on April 1, 2022.

Therefore, patent applications and applications for utility model registrations filed on or after April 1, 2022 will not be allowed to include multiple dependent claims depending on other multiple dependent claims.

 

1. Exceptions

Patent applications and applications for utility model registrations ffiled by March 31, 2022
Divisional applications, etc. with a filing date retroactive to March 31, 2022 or earlier
PCT applications with an international filing date on or before March 31, 2022, which will enter the national phase in Japan on or after April 1, 2022

2. Cases in which multiple dependent claims depending on other multiple dependent claims are not allowed

Applications with priority dates prior to March 31, 2022, but with priority dates on or after April 1, 2022

3. Filing process for patent applications

(1) The examiner will check whether or not the claims include the description of multiple dependent claims depending on other multiple dependent claims.

(2) If the examiner determines that the claims contain multiple dependent claims depending on other multiple dependent claims, the applicant will be notified of the reasons for rejection for violation of Article 36, paragraph 6, item 4 of the Patent Law.

 (a)  With respect to claims pertaining to multiple dependent claims depending on other multiple dependent claims, requirements other than those pertaining to such claims are not subject to examination. In addition, claims citing multiple dependent claims depending on other multiple dependent claims are also not subject to examination except for the requirements pertaining to such claims.

 (b) Judgment of unity of invention

 The requirement of unity of invention (Article 37 of the Patent Law) is not judged for multiple dependent claims depending on other multiple dependent claims and any claims that cite them, and the unity of invention is judged only for claims other than the said claims.

(3) The process after amendment

When the applicant makes an amendment to overcome reasons for refusal on the grounds of multiple dependent claims depending on other multiple dependent claims, and as a result, such reason for refusal is overcome, the examiner checks other requirements. If the examiner finds that there are new reasons for refusal, a final notice of reasons for refusal is issued.

 

4. Filing process for utility model registration applications

With respect to utility models, Article 4 of the Enforcement Regulations of the Utility Model Law, which is delegated by Article 5(6)(iv) of the Utility Model Law, newly establishes Item 5, which restricts multiple dependent claims depending on other multiple dependent claims

(1) Examiners will check whether or not the scope of claims (claims) includes multiple dependent claims depending on other multiple dependent claims

(2) If the examiner determines that the claims contain multiple dependent claims depending on other multiple dependent claims, he or she will order an amendment to the application, stating that the application does not meet the basic requirements (Article 6-2, item 3; Article 5, paragraph 6, item 4).


5. Reasons for Objection and Invalidation

Violation of the description of multiple dependent claims depending on other multiple dependent claims is not a reason for objection or invalidation. (Article 36(6)(iv) is excluded from the reasons for objection and invalidation (Article 113(4), Article 123(1)(iv)) (Article 37(1)(iv))

6. Provision of a simple checker on multiple dependent claims depending on other multiple dependent claims

Multiple dependent claims depending on other multiple dependent claims detection tool has been provided by the JPO. You can download the Simple Checker Ver.1 (ZIP: 5KB) here.
After downloading, open the “multimultichecker_ver_1_0.html” file.