Revision of Examination Guidelines related to Multi-Multi Claim Restriction

1 April 2022
Examination Standards Office,
Administrative Affairs Division,
Japan Patent Office

The draft revision of the Examination Guidelines for Patent and Utility Model in Japan (hereinafter, simply referred to as the “Examination Guidelines”) has been prepared based on the discussions at the 16th meeting of the Working Group on the Patent Examination Standards supervised by the Patent System Subcommittee under the Intellectual Property Committee of the Industrial Structure Council. The public comments were invited from February 10 to March 11, 2022.

The Examination Guidelines related to Multi-Multi Claim Restriction is revised in light of the public comments.

(Note) The term "Multi-Multi Claim" as restricted by the revised Ministerial Ordinance means "any dependent claim that refers to more than one other claim in the alternative ("multiple dependent claim") which depends from any other multiple dependent claim."

The revised Examination Guidelines is applied to examination of the applications filed on or after April 1, 2022.

Revised Examination Guidelines for Patent and Utility Model in Japan

Overview of Revision of Examination Guidelines for Patent and Utility Model in Japan

Part I Chapter 1 Principles of Examination and Flow of Examination

In 2. in "Flow of Examination," it is prescribed that the requirements associated with exclusion from the search such as the delegated ministerial ordinance requirement on statement of claims (Article 36(6)(iv), the Ordinance for Enforcement of the Patent Act, Article 24ter(v)), the requirement of unity of invention (Article 37) and the requirements of description and claims (Article 36) are examined and the invention to be subjected to the prior art search are determined.

Part I Chapter 2 Section 2 Prior Art Search and Determination of Novelty, Inventive Step, etc.

In 2.1 in "Decision regarding subject of search", it is prescribed that, in the first round of examination, the matters of the claimed invention falling within the range to be subjected to the examination in light of the aspects set forth in 2. in "Part II, Chapter II, Section 5, Ministerial Ordinance Requirements on Statement of Claims" and 4. in "Part II Chapter 3 Unity of Invention" are defined as the subject of search by the examiner.

Part I Chapter 2 Section 3 Notice of Reasons for Refusal

In 3.2.1 in "Cases where "final notice of reasons for refusal" should be notified", it is newly listed that a case where only reasons for refusal that become necessary to be notified as a result of the fact that a Multi-Multi claim has been resolved by an proper amendment and it has become necessary to examine requirements other than the delegated ordinance requirement on statement of claims pertaining to Multi-Multi claims shall be notified.
In addition, with respect to inventions that are not subject to the examination related to requirements other than the delegated ministerial ordinance requirement on statement of claims pertaining to Multi-Multi claims, it is prescribed that this shall be specified in the notice of reasons for refusal.

Part II Chapter 2 Section 5 Ministerial Ordinance Requirement on Statement of Claims

In 1. in "Overview", the purport of the establishment of Article 24ter(v) of the Ordinance for Enforcement of the Patent Act was listed.
In addition, in 2. in "Determination of Article 36(6)(iv)," it is prescribed that inventions pertaining to those which are claims that violate Article 24ter(v) of the Ordinance for Enforcement of the Patent Act and claims that refer to the claims in violation shall not be subject to the examination related to requirements other than the delegated ministerial ordinance requirement on statement of claims on Multi-Multi claims. Further, types of Multi-Multi claims that violate Article 24ter(v) of the Ordinance for Enforcement of the Patent act was newly listed.

Part II Chapter 3 Unity of Invention

In 4. in "Specific Decision Procedures for Subject of Examination," in the case where, based on a violation of the delegated ministerial ordinance requirement on statement of claims pertaining to Multi-Multi claims, an invention pertaining to a particular claim is excluded from the subject of the examination related to requirements other than the said delegated ministerial ordinance requirement on statement of claims, based on the scope of the claims after exclusion of the particular claim thereof, it is prescribed that the subject of the examination shall be determined on the requirements other than Article 37 by making an assessment under Article 37.

Part X Chapter 1 Basic Requirements for Utility Model Registration

Multi-Multi claims are newly listed as a type of failure to meet the ministerial ordinance requirements pertaining to the scope of claims of utility model.

[Last updated 1 April 2022]

Examination Standards Office,

Administrative Affairs Division,

Japan Patent Office

E-mail:PA2A10@jpo.go.jp

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