News & Topics

– Revisions of Regulations for Enforcing Patent Act 36(4)(iv) and Utility Model Act 5(6)(iv) and 6-2(iii) effective on April 1, 2022 –

A multiple dependent claim¹ depending from another multiple dependent claim (“multiple-multiple claim”²) had been accepted in Japan until the end of March 2022. However, on or after April 1, 2022, the multiple-multiple claim in patent applications and utility model applications having a filing date of April 1, 2022 or later will be rejected and not examined for patentability (e.g., novelty, inventive step, enablement requirement, written description requirement, etc.).

1. Overview of Revisions on Multiple-multiple Claim
(1) No patent and utility model having a multiple-multiple claim being accepted
Patent applications filed on or after April 1, 2022 having a multiple-multiple claim will be rejected due to a violation of Article 36(6)(iv) of the Japanese Patent Act. Utility model applications filed on or after April 1, 2022 having a multiple-multiple claim will receive an order to amend the claim under Articles 5(6)(iv) and 6-2(iii) of the Japanese Utility Model Act.

(2) No Examination of multiple-multiple claim
Under the revised Regulations for enforcing the Patent Act, a multiple-multiple claim is examined only for compliance with the prohibition against multiple-multiple claims, and is not examined for the other requirements (e.g. unity of invention, novelty, inventive step, enablement requirement, written description, etc.). This Regulation also applies to a single dependent claim that depends from a multiple-multiple claim.
If an examination other than the multiple-multiple dependency (substantive examination) becomes necessary due to an amendment to remove the multiple-multiple dependency, and consequently, if an Office Action including only reasons for refusal based on the substantive examination of the amended previous multiple-multiple claim is issued, that action will be a final Office Action. A response to the final Office Action is limited to (i) canceling the claim(s), (ii) narrowing the claim(s), (iii) correcting typographical error(s), and/or (iv) addressing an indefiniteness issue.

(3) Scope of the new regulations
The restrictions on multiple-multiple claim apply to patent applications and utility model applications filed on or after April 1, 2022 (please note that for a PCT application, the international filing date is the date to determine the applicability of the revisions). The revisions on a multiple-multiple claim do not apply to continuation applications and divisional applications whose parent patent applications or utility model applications are filed on or before March 31, 2022.

2. Tips
As described above, an invention defined as a multiple-multiple claim is not to be examined for substantive patentability issues such as novelty, inventive step, enablement, written description, etc. Accordingly, if an application including a multiple-multiple claim is filed and examined, the multiple-multiple claim and its dependent claims will be rejected without substantive examination, which wastes time and money. Considering the examination time and cost, it would be desirable to remove all multiple-multiple claims before starting examination of the application, preferably by filing a request for examination.
Please note that a simple multiple dependent claim is not subject to the revisions of the Regulations related to the Patent Act. Thus, one option for amending a multiple-multiple claim may be, for example splitting the multiple-multiple claim into several claims, each of which is to be a simple multiple dependent claim; or a simple dependent claim depending from a multiple dependent claim, whichever is appropriate.
In Japan, a multiple dependent claim is counted as a single claim and is not counted based on the number of its base claims as in the U.S., when calculating the examination fee. In addition, there is no surcharge for a multiple dependent claim, unlike the multiple dependent claim fee of the USPTO.

3. Examples of Multiple-multiple Claim
Followings are examples that are considered to be a multiple-multiple claim. Claims 1-3 below are assumed to be present in all of Examples 1 to 4.

Claim 1: X comprising A.
Claim 2: The X according to claim 1, further comprising B.
Claim 3: The X according to claim 1 or 2, further comprising C.

Example 1
Claim 4: The X according to any one of claims 1 to 3, further comprising D.
→ Claim 4 is a multiple-multiple claim, because claim 4 depends from the multiple dependent claim 3.

Claim 5: The X according to claim 4, wherein the D is d1.
→ Claim 5 is NOT a multiple-multiple claim, but is NOT substantively examined (for novelty, inventive step, etc.), because claim 5 depends from the multiple-multiple claim 4.

Example 2
Claim 4: A method for preparing the X according to any one of claims 1 to 3.
→ Claim 4 is a multiple-multiple claim, because claim 4 is a multiple dependent claim and depends from the multiple dependent claim 3, although this claim 4 is directed to a different subject matter from that of claims 1-3 and is in a different category from that of claim 4 in Example 1.

Example 3
Claim 4: The X according to claim 3, wherein the C is c1.
Claim 5: The X according to claim 3, wherein the C is c2.
Claim 6: The X according to claim 4 or 5, further comprising D.
→ Claim 6 is a multiple-multiple claim, because claim 6 depends from claims 4 and 5 and claim 6 indirectly depends from the multiple dependent claim 3 through its dependency from claims 4 and 5.

Example 4
Claim 4: Y comprising D.
Claim 5: The Y according to claim 4, further comprising E.
Claim 6: The Y according to claim 4 or 5, further comprising F.
Claim 7: Z consisting of the X according to any one of claims 1 to 3 and the Y according to any one of claims 4 to 6.
→ Claim 7 is a multiple-multiple claim, because claim 7 depends from claims 1-3 for the X where claim 3 is a multiple dependent claim, and also depends from claims 4-6 for the Y where claim 6 is a multiple dependent claim. Please note that one of the two multiple-multiple dependencies (i.e., depending from claims 1-3 or from claims 4-6) is sufficient for claim 7 to be a multiple-multiple claim.

Claim 8: Z consisting of the X according to claim 3 and the Y according to claim 6.
→ Claim 8 is NOT a multiple-multiple claim, because claim 8 depends from one claim for each of the X and Y and has no selection from two or more claims for the same aspect (i.e., claim 8 depends only from claim 3 for the X and depends only from claim 6 for the Y), even though claim 8 depends from two claims, i.e., claims 3 and 6, each of which is a multiple dependent claim.

4. Related portions of Japanese Patent Act, Utility Model Act, and Regulations (see underlined revised portions)

(1) Japanese Patent Act, Article 36(6)(iv)
36 (1)-(5): Not shown.
36 (6): A description of scope of claim as provided in the paragraph (2) shall comply with each of the following subparagraphs:
(i)-(iii): Not shown.
(iv): The description must be prepared also in accordance with other relevant ordinances provided by the Ministry of Economy, Trade and Industry.

(2) Ordinance for enforcement of the Japanese Patent Act Article 24-3(v) (Newly added)
24-3: A description of scope of claims pursuant to the provisions of the Ordinance of the Ministry of Economy, Trade and Industry in Article 36(6)(iv) of the Patent Act shall be prepared as set forth as in each of the following paragraphs:
(i)-(iv): Not shown.
(v): when a claim recites a selection of a base claim from two or more other claims, none of the two or more other claims shall recite a selection of its base claim from two or more other claims.

(3) Japanese Utility Model Act, Article 5(6)(iv)
5 (1)-(5): Not shown.
(6): A description of scope of claims as provided in the paragraph (2) shall comply with each of the following subparagraphs:
(i)-(iii): Not shown.
(iv): The description must be prepared also in accordance with other relevant ordinances provided by the Ministry of Economy, Trade and Industry.

(4) Japanese Utility Model Act, Article 6-2(iii)
6-2: The Commissioner of the Patent Office may order the applicant to amend a description, scope of claims, or drawings of the utility model attached to the application, designating an appropriate period for the amendment, if the application falls under any of the following subparagraphs:
(i)-(ii): Not shown.
(iii): An application for a utility model registration does not satisfy the requirements prescribed in Article 5(6)(iv) or those provided in the preceding Article.

(5) Ordinance for enforcement of the Japanese Utility Model Act, Article 4(v) (Newly added)
4: A description of scope of claims of a utility model application under Article 5(6)(iv) of the Utility Model Act provided by the Ministry of Economy, Trade and Industry shall be as in the following subparagraphs:
(i)-(iv): Not shown.
(v): when a claim recites a selection of a base claim from two or more other claims, none of the two or more other claims shall recite a selection of its base claim from two or more other claims.

Footnotes
1.  The “multiple dependent” claim in Japan is a dependent claim that is written in a way that one base claim is to be selected from two or more candidate claims. Even if a claim depends from two or more claims, if there is no such selection, e.g. a claim depending from one claim for each of two or more features, the claim is a simple/single dependent claim (see Example 4, claim 8 above). In contrast, in the US, a “multiple dependent” claim is “any dependent claim that refers to more than one other claim” (see 37 CFR. 1.75), regardless of absence or presence of the selection.

2.  A multiple dependent claim having at least one multiple dependent claim in the list for the selection discussed in “1” above is considered as a “multiple-multiple claim”. Namely, a multiple-multiple claim having two or more claims in the selection list in which at least one claim is not a multiple dependent claim is treated similarly to a multiple-multiple claim whose selection list includes only multiple dependent claims.