Dec 17, 2021
Multiple dependent claims depending on other multiple dependent claims will no longer be allowed in Japan
On December 15, 2021, the Patent System Subcommittee of the Industrial Structure Council approved the plan on multiple dependent claims depending on other multiple dependent claims to be no longer permitted in Japan.
From now on, it will be required to describe claims in a manner that is consistent with international standards. The timing of this change has not been yet announced, but we will update as soon as there is more information available.
What are multiple dependent claims depending on other multiple dependent claims?
A multiple dependent claim that depends on another multiple dependent claim means that a claim that selectively cites two or more claims can be the basis for other multiple claims.
Claim 1 A composition containing A.
Claim 2 A composition as claimed in claim 1 further comprising B.
Claim 3 A composition as claimed in claim 1 or 2, further comprising C.
Claim 4 A composition as claimed in any one of claims 1 to 3, further comprising D.
Claim 5 A composition as claimed in any one of claims 1 to 4, further comprising E.
Claims 4 and 5 are multiple dependent claims depending on other multiple dependent claims.
The following figure illustrates the process:
Claim 1 A
Claim 2 A+B
Claim 3 A + C, A + B + C
Claim 4 A + D, A + B + D, A + C + D, A + B + C + D
Claim 5 A+E, A+B+E, A+C+E, A+B+C+E, A+D+E, A+B+D+E, A+B+C+D+E
A multiple dependent claim depending on another multiple dependent claim had the advantage of simplifying the description of claims 4 and 5 above, however, there are a few issues that have arisen:
1. The number of claims without citation increases exponentially with the number of multiple claims.
2. 99% of the applications have less than 30 claims, but about 5% of the applications have more than 1,000 claims when no citation format is adopted.
3. Multiple dependent claims depending on other multiple dependent claims are not allowed in the US, China and South Korea, and Japan has struggled to cooperate with these countries up until now. In principle, PCT applications also do not allow the inclusion of such claims.
4. When Japanese applicants file overseas applications, 73% of all applications are filed in the countries that do not allow the inclusion of multiple dependent claims depending on other multiple dependent claims/
Source: “The State of Industrial Property Rights Policy in the Age of Corona and Post-Corona: Summary”, Subcommittee on Fundamental Issues, Intellectual Property Subcommittee, Industrial Structure Council
1 A cited claim that further limits an independent claim must be a dependent claim that represents a specific embodiment of the independent claim.
2 In principle, there is a limitation of one independent claim per category (product, method, apparatus, use).
3 If there is at least one multiple dependent claim, a certain amount will be added to the fee.
4 Among the reasons for rejection, the application is subject to an objection rather than a rejection. Before examination, the Office of Patent Application Processing checks for multi-multiple claims and calculates the application fee.
5 The Office of Patent Application Processing will check the multiple dependent claims depending on other multiple dependent claims and calculate the application fee before examination. On the other hand, it is not a reason for rejection as stipulated in Article 53 of the Patent Law.
Edited materials distributed to the 16th Working Group of the Technical Committee on Examination Standards, Patent System Subcommittee, Intellectual Property Subcommittee, Industrial Structure Council
Thus, to comply with international standards, minimize the burden of monitoring by third parties, and the excessive burden of examination by reducing the difference between the number of claims and the number of claims that would be listed if the citation format was not adopted, it was decided to restrict the use of multiple dependent claims depending on other multiple dependent claims. This restriction is applied to patent and utility model applications, and no exceptions will be made.
Revision of judging criteria
Multiple dependent claims depending on other multiple dependent claims will be newly added to the Patent/Utility Model Examination Guidelines as a category of claims that are judged to be in violation of Article 36, Paragraph 6, Item 4 (Delegated Ordinance Requirement) of the Patent Law and Article 5, Paragraph 6, Item 4 (Delegated Ordinance Requirement) of the Utility Model Law. In addition, necessary amendments will be made to the relevant sections of the Patent and Utility Model Examination Handbook.
Reasons for rejection
The reason for rejection would be a violation of Article 36(6)(iv) of the Patent Law (Delegated Ordinance Requirement), however, the violation of the description of multiple dependent claims depending on other multiple dependent claims would not be considered a reason for invalidation or opposition.
Reasons for rejection
There is a plan to provide information on support tools to detect multiple dependent claims depending on other multiple dependent claims.