JPO Restriction of Multi-Multi Dependent Claims
Hiroyasu Ninomiya, NYT Partners (Japan)
A “multi-multi dependent claim”* is no longer allowed in a patent application from April 1, 2022, due to the recent amendment to the regulation of the patent act.
The restriction of multi-multi dependent claims leads to limitations on the number of combinations of constitutions of claimed inventions and affects substantive contents of specifications. In other words, by using multi-multi dependent claims, a large number of combinations of recited elements in claimed inventions can be covered by a small number of claims. Under the new regulation, to cover the same number of combinations of elements in claimed inventions as that recited with multi-multi dependent claims, a large number of claims is necessary in some cases, or specifications have to cover all the combinations. Therefore, the restriction would have relatively significant impact on many applicants in Japan and many Japanese practitioners who have been accustomed to the use of multi-multi dependent claims. In fact, the practitioners of the committee to which I belong have expressed various opinions or concerns on how to change descriptions of specifications in response to the restriction of multi-multi dependent claims.
This paper talks about an overview of the multi-multi dependent claim restriction, which was a significant shock to applicants in Japan.
Note that a multi-multi dependent claim is no longer allowed in a utility model application from April 1, 2022, as well.
*A “multi-multi dependent claim” means “any dependent claim that alternatively depends on two or more other claims that also alternatively depend on two or more other claims.”
- Background of the restriction
- Reduction of the burden of examination and monitoring by third parties
To understand inventions covered by a multi-multi dependent claim, one should appreciate inventions of all possible combinations from the multi-multi dependent claim, which has been causing an excessive burden in understanding the inventions.
- International harmonization
A multi-multi dependent claim is not allowed in the US, Korea, and China, among the US, Europe, Korea, China, and Japan offices.
- New regulation
- The restriction of multi-multi dependent claims applies to applications filed on or after April 1, 2022.
- A multi-multi dependent claim is still allowable for divisional applications and converted applications based on patent applications or utility model applications filed before April 1, 2022.
- The restriction of multi-multi dependent claims does not apply to PCT national phase applications in Japan filed on or after April 1, 2022, when international application dates of the corresponding PCT applications are before April 1, 2022.
- For an application claiming priority, the same restrictions apply no matter when the priority date is, as long as its filling date is on or after April 1, 2022.
- In case of violation of restriction of multi-multi dependent claims
- If a patent application includes a multi-multi dependent claim, the application falls under a reason for refusal for violation of the description requirement (Article 36 (6) (iv) of the patent act).
- When a multi-multi dependent claim exists in an application, for the claim and a claim(s) depending on the claim, other requirements necessary to grant a patent (the other written requirements, novelty, inventive step, etc.) are not examined by an examiner.
- If a multi-multi dependent claim is deleted by an amendment in response to a notice of reasons for refusal against violation of the restriction of multi-multi dependent claims, the amended claim is examined regarding the other requirements such as novelty requirement and inventive step requirement. If the amended claim does not meet another requirement such as inventive step requirement, a final notice of reasons for refusal is issued in general. Note that stricter requirements are imposed on an amendment in response to a final notice of reasons for refusal.
- If a utility model application contains any multi-multi dependent claim, the application shall not satisfy formality requirements, and a correction order is made.
- Possible impact
Before the revision, a multi-multi dependent claim allowed a large number of combinations of recited elements in claimed inventions. Multi-multi dependent claims are no more allowable, and disclosure of all necessary combinations of constitutions of an invention (sufficient embodiment patterns) is required in the specification without using multi-multi dependent claims or copying multi-multi dependent claims into the specification. Applicants in Japan might need to be more careful than ever about whether combinations of constitutions of an invention are fully disclosed in a specification.