Revision of Examination Guidelines for the “Requirements of Unity of Invention” and the “Amendment that Changes a Special Technical Feature of an Invention”

July 1, 2013
Japan Patent Office

The Japan Patent Office (JPO) revised the Examination Guidelines for Patent and Utility Model in Japan for the “Requirements of Unity of Invention” and the “Amendment that Changes a Special Technical Feature of an Invention”.

The JPO invited public comment from March 6 to April 5, 2013, and based on the results, the JPO revised the Examination Guidelines for Patent and Utility Model in Japan. The revision of Examination Guidelines for the “Requirements of Unity of Invention” is applied to the examination on or after July 1, 2013 (Applications filed on or after January 1, 2004). The revision of Examination Guidelines for the “Amendment that Changes a Special Technical Feature of an Invention” is applied to the examination on or after July 1, 2013 (Applications filed on or after April 1, 2007).

Examination Guidelines for Patent and Utility Model in Japan

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 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 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 etc. as a result of the examination of the inventions decided as the subject of the examination in (1).

3. The 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 revision, 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.

4. Other

The JPO revised the relevant parts of the Examination Guidelines for the “Procedure of Examination”.

[Reference 1] An Example of the Decision of the Subject of the Examination after the 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 understood 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 low technical relevance.

[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.

[Reference 2] An Example of the Decision of the Subject of the Examination after the Revision of the Examination Guidelines for the “Amendment that Changes a STF of an Invention”

[Explanation of the Example]

The inventions of Claim 2, 3 before the amendment are those in the same category that include all matters specifying the inventions of Claim 1, 2 before the amendment respectively. The inventions of Claim 1, 2 did not have any special technical features, while a special technical feature was found in the invention of Claim 3. Regarding this application, the first notice of reasons for refusal was issued due to lack of novelty to the inventions of Claim 1, 2 and lack of inventive step to the invention of Claim 3. After said notice of reasons for refusal, the scope of claims were amended to Claim ① - ③ in the same category including all matters specifying the invention of Claim 3 and Claim ④ - ⑥ having a special technical feature same as or corresponding to the invention of Claim 3.

Claims ① - ⑥ after the amendment are inventions which have the same or corresponding special technical feature of claim 3 before amendment and fall under Part I Chapter 2 “Requirements of Unity of Invention” 3.1.2.1(4) (b). Therefore, they become subject of the examination.

[Decision of the Subject of the Examination]

Assuming that the claimed inventions of amended Claim ① - ⑥ are described continuously from the inventions of Claim 1 - 3 before the amendment (In other words, assuming that the claimed inventions of amended Claim ① - ⑥ are described as the inventions of Claim 4 - 9 before the amendment), the amended inventions that become the subject of the examination with regard to the requirements other than those of unity of invention in the light of “3.1 Decision of Subject of the Examination” in Part I Chapter 2 “Requirements of Unity of Invention” become the subject of the examination of requirements other than those described in Article 17bis(4).

[Last updated 1 July 2013]

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