Text size
S
M
L

Home> Systems/Procedures> Patents> Examination> Restriction of Multi-Multi Claims

Main content starts here.

Restriction of Multi-Multi Claims

August 9, 2022
Japan Patent Office
Administrative Affairs Division
Examination Standards Office

The Ministerial Ordinance Partially Amending the Ordinance for Enforcement of the Patent Act and the Ordinance for Enforcement of the Utility Model Act (Ordinance of the Ministry of Economy, Trade and Industry No. 10 of February 25, 2022) has been promulgated and will come into effect on April 1, 2022.

Please note that, in response to the revision of this Ministerial Ordinance, any Multi-Multi Claim (Note) will no longer be allowed in any patent application and application for utility model registration filed after the enforcement.

  • (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."

Outline of the revision of the Ministerial Ordinance

For the purpose of promoting international harmonization as well as reducing the workload of examination and the burden of monitoring by third parties, the measures have been taken as follows.

In order to enable the restriction of Multi-Multi Claims, based on Article 36(6)(iv) of the Patent Act, which stipulates the description format of patent claims as specified by the Ordinance of the Ministry of Economy, Trade and Industry, Item 5 was newly established in Rule 24ter of the Ordinance for Enforcement of the Patent Act, which is delegated by the said Item of the Patent Act, and it stipulates that any Multi-Multi Claim shall not be stated in the patent claims. In addition, Rule 4 of the Ordinance for Enforcement of the Utility Model Act has been revised to the same effect.

The revised Rule 24ter(v) of the Ordinance for Enforcement of the Patent Act applies to patent applications filed after the enforcement and does not apply to patent applications filed before the enforcement (it does not apply to divisional applications, etc. whose filing dates are retroactive to before the enforcement date.)

Examination on Multi-Multi Claims

The following is an outline of the proposed revision of the Examination Guidelines for Patent and Utility Model in accordance with the revision of the Ministerial Ordinance.

  • If a patent application filed after the enforcement of the Ministerial Ordinance contains any Multi-Multi claim, it falls under a reason for refusal for violation of Article 36(6)(iv) (Ministerial Ordinance Requirement on Statement of Claims.)
  • Any Multi-Multi Claim and claim referring to that is not subject to the examination for requirements other than the Ministerial Ordinance Requirement on Statement of Claims pertinent to Multi-Multi Claims.
  • If, in response to a notice of reasons for refusal for violation of the above Ministerial Ordinance Requirement on Statement of Claims, Multi-Multi claims are amended in proper form, and, as a result of which it becomes necessary to examine the amended claims and to be notified only the reasons for refusal that becomes necessary to notify due to the amendment, this shall be the final notice of reasons for refusal.
  • If an application for a utility model registration filed after the enforcement contains any Multi-Multi Claim, it shall not satisfy the requirements (Basic Requirements) provided in Article 6bis of the Utility Model Act.

Multi-Multi Claim Checker (Japanese version only)

For the convenience of applicants and patent agents, we provide a “Multi-Multi Claim Checker”, which is a Multi-Multi Claim detection tool to enable them to more appropriately comply with the restriction of Multi-Multi Claims. This checker is only available in Japanese.

Since it is expected that large amount of pre-filing unpublished information is handled, please download the checker directly from the link below and put it to practical use. This checker can be used in an offline environment because it operates without communicating externally.

Regarding the Checker Update (Ver. 1.1) (March 23, 2022)

Detection accuracy has been improved in response to the Multi-Multi Claims that could not be detected in some cases.

*After downloading the compressed file, unzip it and run it from the "multimultichecker_ver_1_1.html" file.

Multi-Multi Claim Checker

Points to note

  • This checker detects Multi-Multi Claims and claims that refer to the said claims.
  • Please be aware that some Multi-Multi Claims may not be detected or may be detected incorrectly.
  • If you find any incorrect detection and the like, we would appreciate it if you could inform them to us by using the contact information below. We will use this information to improve the checker in the future.

Status of Applications filed after the restriction of Multi-Multi Claims

The status of applications filed after the restriction of Multi-Multi Claims is as follows.

The ratio of applications containing any Multi-Multi Claim to the total patent applications was about 65% before the restriction of Multi-Multi Claims, while it decreased to about 5% after the restriction (6.0% for applications filed in April,2022 and 4.5% for those filed in May,2022) *1. In addition, the ratio of applications containing any Multi-Multi Claim to the total applications for utility model registration also decreased from about 25% before the restriction of Multi-Multi Claims to about 3% after the restriction (3.3% for applications filed in April,2022 and 2.6% for those filed in May,2022) *1.

As you can see from the above data, in many cases, the applicant has taken action prior to filing the application. However, if you find that your patent application contains any Multi-Multi Claim after filing the application, please consider making a voluntary amendment, for example, by the time of filing a request for examination. This will avoid the possibility of receiving a notice of reasons for refusal for violation of the Ministerial Ordinance Requirement on Statement of Claims pertaining to Multi-Multi Claims*2.

Thank you for your cooperation in responding to the restriction of Multi-Multi Claims.

*1 The above percentages are provisional figures. The figures assume that all divisional applications, etc., whose original filing dates are before the enforcement date are retroactively before the enforcement date.
*2 If a reason for refusal in violation of the above-mentioned Ministerial Ordinance Requirement on Statement of Claims is notified, the final notice of reason for refusal may be rendered and the scope in which an amendment can be made may be limited in the case where the invention in the amended claims for which the violation of the restriction of Multi-Multi Claims has been resolved by the response has other reasons for refusal (see "Examination on Multi-Multi Claims" above).

[Last updated 9 August 2022]

Contact Us

Administrative Affairs Division
Examination Standards Office,
Japan Patent Office

E-mail: PA2A10@jpo.go.jp