In Japan, there had been a movement to restrict a multiple dependent claim that depends on another multiple dependent claim (hereinafter referred to as a “multi-multi claim”). Discussions had been held and establishment of new legal frameworks had been considered.
Revision of ministry ordinance was already publicized on December 27, 2021, and solicitation of public comments ended on January 25, 2022.
And now the draft revision to the Examination Standards was publicized on February 10, 2022, and public comments are being solicited during a period ending on March 11, 2022.
In Japan, multi-multi claims are to be restricted for the applications filed on or after April 1, 2022 *.
The publicized draft revision to the Examination Standards has revealed the details of restriction on multi-multi claims. We now introduce you the details.
* For divisional and converted applications, determination will be made based on the original filing date.
For applications claiming Paris Convention priority, determination will be made based on the actual filing date in Japan (not the priority date).
For PCT applications, determination will be made based on the international filing date.
2. Details of Revision
(1) Examination to be performed
Multi-multi claims are not to be examined in terms of requirements other than the ministerial ordinance requirements on multi-multi claims.
That is, for multi-multi claims, no examination is performed in terms of other patent requirements, such as unity of invention, novelty, and inventive step.
(2) Examination after amendment to overcome the multi-multi claim rejection
After amendment to overcome the multi-multi claim rejection is filed, if it becomes necessary to perform examination in terms of the requirements other than the ministerial ordinance requirements on multi-multi claims, a Notice of Reason(s) for Rejection that notifies the applicant of only the reason for rejection that has newly become necessary to be notified may be issued. Such Notice of Reason(s) for Rejection is to be a final one.
That is, when the multi-multi claim rejection is overcome by filing amendment, the next office communication may be a final Notice of Reason(s) for Rejection, as the case may be.
(3) Claim referring to the invention of a different category
A claim referring to the invention of a different category is also determined to a multi-multi claim.
Example (from the draft revision to the Examination Standards)
[Claim 1] A ball bearing having a specific structure.
[Claim 2] The ball bearing according to claim 1, wherein the inner ring thereof is of stainless steel.
[Claim 3] The ball bearing according to claim 1 or 2, wherein the outer ring thereof is of stainless steel.
[Claim 4] A method for manufacturing a ball bearing according to any one of claims 1 to 3.
Although differing in category from Claim 3, Claim 4 is determined to be a multi-multi claim.
3. Optimum Practice
We have long continued to review foreign applicants’ Japanese applications to find whether any amendment is required or preferred for smoother prosecution in light of the Japanese patent practice, and to suggest voluntary amendments based on such review at no cost. We will continue such review and suggestion in the future.
The publicized revision will have great influence on the patent practice in Japan. However, we would like you to trust us at ease for we will make suggestions for optimum measures (voluntary amendment) for each individual case.
Edited by Makoto Iwata