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Home > Public Comments Invitation > Feedback > Invitation for Public Comments on the Draft Revision of Examination Guidelines for Requirements of Unity of Invention and Amendment that Changes a Special Technical Feature of an Invention

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Invitation for Public Comments on the Draft Revision of Examination Guidelines for Requirements of Unity of Invention and Amendment that Changes a Special Technical Feature of an Invention

March 6, 2013
Japan Patent Office
Administrative Affairs Division
Examination Standards Office

After the deliberation of revising Examination Guidelines for “Requirements of Unity of Invention” and “Amendment that Changes a Special Technical Feature of an Invention”, at its eighth meeting on November 12, 2012 and its ninth meeting on January 10, 2013, the Committee on Examination Standards of the Industrial Structure Council agreed upon an outline of the revisions at its ninth meeting.

In accordance with the outline of the revisions, a draft revision of Examination Guidelines for “Requirements of Unity of Invention” and “Amendment that Changes a Special Technical Feature of an Invention” is prepared. Also, a draft revision of Examination Guidelines for “Procedure of Examination”, where the above revision relates, is prepared. We invite public comment as outlined below.

1. Subjects on which comments are invited

Disclaimer

This translation may be used for reference purpose only. This English version is not an official translation of the original Japanese documents. In cases where any differences occur between the English version and the original Japanese version, the Japanese version shall prevail.

2. Due date

Written comments must be received on or before Friday, April 5, 2013.

3. Submission of comments

Please send us your comments with your name*, contact information, and occupation, via one of the following methods:

* If you are a company or institution, please give us the name of the body, department, and person in charge.

E-mail

PA2A12@jpo.go.jp

Please use "Written comments on the draft revision of Examination Guidelines" as the subject line.

Facsimile

+81-3-3597-7755

To the attention of: Examination Standards Office, Administrative Affairs Div., First Patent Examination Depart.

Please use "Written comments on the draft revision of Examination Guidelines" as the subject line.

Postal mail

To the attention of: Examination Standards Office, Administrative Affairs Div., First Patent Examination Depart., Japan Patent Office

3-4-3 Kasumigaseki, Chiyoda-ku Tokyo 100-8915, Japan

Please use "Written comments on the draft revision of Examination Guidelines" as the subject line.

4.Notes for submitting comments

  • The Japan Patent Office will not be able to reply to each of the comments individually.
  • All descriptions except your name and contact information may be released to the public. However, if a comment contains personal information that could make it possible to identify an individual commenter, the concerned parts will be concealed prior to the release of the comment to the public.
  • The personal information included with your comments, such as your name, contact information etc., will be managed appropriately, and will only be used for administrative affairs related to the invitation for public comments, such as to contact you in the event that we have any questions concerning your comments.

[Reference 1] Points of the Draft Revision of the Examination Guidelines for the “Requirements of Unity of Invention” and the “Amendment that Changes a Special Technical Feature of an Invention”

1. Key principle of the revision of the Examination Guidelines

Concerning the Examination Guidelines for the “Requirements of unity of invention” the subject of the examination was expanded from two perspectives, “the special technical feature” (STF) and “the examination efficiency.” Concurrently, examples relating to the decision of the subject of the examination (Example 14-28) were added. Furthermore, concerning the Examination Guidelines for the “Amendment that changes a STF of an invention,” based on the same concept as the draft revision of the Examination Guidelines for the “Requirements of unity of invention,” the scope that the requirement in the Patent Act Article 17 bis (4) does not apply was expanded.

2. The draft revision of the Examination Guidelines for the “Requirements of Unity of Invention”

The subject of the examination on the requirements except the requirements specified in the Patent Act Article 37 shall be decided by the following procedures (1) and (2).

(1) The decision of the subject of the examination based on the STF

It is determined whether there is any STF in terms of an invention first mentioned in the scope of claims or inventions of the first series(*) in claims in the same category that include all matters specifying the invention first mentioned, and the “inventions for which whether there is any STF has been determined before STF was found” or “inventions having the same or corresponding STF that was found first” are decided as the subject of the examination.

(*) A series created by consecutively selecting inventions to which the smallest claim numbers are attached out of the inventions, will be referred to as “of the first series,” as a matter of convenience.

(2) The decision of the subject of the examination based on the examination efficiency

If it is efficient to examine an invention together with inventions that have become the subject of the examination in (1), then the invention will be added to the subject of the examination.

For example, the inventions described below in (a) and (b) will be added to the subject of the examination as inventions that can be efficiently examined together.

  • (a) Inventions in the same category that include all matters specifying the invention first mentioned in the scope of claims.
    However, inventions shall be excluded if; (ⅰ) the problem to be solved by the invention first mentioned in the scope of claims and the specific problem to be solved understood by technical features added to said invention have little relevance, or (ⅱ) the technical feature of the invention first mentioned in the scope of claims and the technical feature added to said invention have low technical relevance.
  • (b) Inventions that can be examined without a substantive additional prior art search as a result of the examination of the inventions decided as the subject of the examination in (1).

3. The draft revision of the Examination Guidelines for the “Amendment That Changes a STF of an Invention”

If the invention after the amendment that would become a subject of the examination due to the Examination Guidelines for the “Requirements of unity of invention” after the amendment, assuming that the claims after the amendment would be described in a row after the claims before the amendment, then the requirements under the Patent Act Article 17 bis (4) does not apply to inventions after the amendment.

[Reference 2] An Example of the Decision of the Subject of the Examination in the Draft Revision of the Examination Guidelines for the “Requirements of Unity of Invention”

Explanation of the Example

There were no STFs in the inventions claimed in claims 1 and 2, but STF was found in the invention claimed in claim 3. The inventions claimed in claims 4, and 7-9 have the same or corresponding STFs to the found STF.

Furthermore, the inventions claimed in claims 5, 6, and 10-12 are in the same category that includes all matters specifying the invention first claimed in claim 1. However, the specific problem to be solved by the invention claimed in claim 11 that can be perceived from the technical feature which was added to the invention claimed in claim 1, and the problem to be solved by the invention claimed in claim 1 have little relevance. Furthermore, the technical feature of the invention claimed in claim 12 which was added to the invention claimed in claim 1 and the technical feature of the invention claimed in claim 1 have little technical relevance.

reference

Decision of the Subject of the Examination

The inventions claimed in claims 1-10 are the subject of the examination.

The inventions claimed in claim 11 and claim 12 will be excluded from the subject of the examination, when as a result of having examined the inventions claimed in claims 1-4 and claims 7-9, the inventions claimed in claim 11 and claim 12 are not inventions that can be examined without additional prior art search and judgment, and also when there are no other circumstances to consider that it is more efficient to examine the inventions together.

[Last updated 6 March 2013]

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