JPO bans multiple dependent claims depending on other multiple dependent claims

The JPO has announced that multiple dependent claims depending on multiple dependent claims (known as “multi-multi claims” in Japan) will no longer be permitted in Japanese patent and utility model applications.  The new rule applies to patent and utility model applications filed on or after April 1, 2022 (**see notes below).

What are multiple dependent claims depending on other multiple dependent claims (multi-multi claims)?

First, a multiple dependent claim is a dependent claim that cites back to more than one claim. (e.g. Claim 3:  A device as claimed in claim 1 or 2, further comprising C.)

A multiple dependent claim depending on other multiple dependent claims is “a claim that selectively cites two or more other claims that also selectively cite back to two or more other claims” (revised JPO guidelines).

To illustrate, please see the following example set of claims:

Claim 1  A device with A.　　　　　　　　　　　　　　　　　
Claim 2  A device as claimed in claim 1 further comprising B.　　　　　　　　　
Claim 3  A device as claimed in claim 1 or 2, further comprising C. 　　　　  
Claim 4  A device as claimed in any one of claims 1 to 3, further comprising D.
Claim 5  A device as claimed in any one of claims 1 to 4, further comprising E.

Here, claim 3 is a multiple dependent claim only, so still allowed.
However, claims 4 and 5 are multiple dependent claims depending on other multiple dependent claim(s) and are thus no longer allowed.

That is:

• Claim 3 selectively cites two or more other claims (claims 1 or 2), but claims 1 or 2 do not selectively cite other claims.
• Claim 4 selectively cites two or more other claims (any of claims 1-3), AND any of these claims 1-3 (i.e., claim 3) cites two or more other claims.
• Claim 5 selectively cites two or more other claims (any of claims 1-4), AND any of those claims 1-4 (i.e., claims 3, 4) cite two or more other claims.



Office actions against multi-multi claims

According to the new guidelines, a first office action will be issued for patent applications filed on or after April 1, 2022, which include multi-multi claims*.  These rejected claims will not be examined for any other substantive requirements such as inventive step or novelty. 

Claims that cite multi-multi claims will are also not subject to examination for other substantive requirements.  So, if the example claim set above contained a claim 6 which stated “The device according to claim 4, wherein D is made of x”, this claim would not be subject to examination for other substantive requirements.

In our example claim set above, only claims 1-3 would be substantively examined.

Final Notice of Rejection
If an amendment to overcome the multi-multi claim rejection is found to contain another reason for rejection, a FINAL Notice of Rejection will be issued, and related amendment restrictions (compared to first office actions) imposed.   

Utility models
In the case of a utility model application, an order to amend will be issued as the claims do not meet the basic requirements for utility models.

Note also that according to the JPO, whilst multi-multi claims will be a reason for rejection, they will not be considered a reason for opposition or invalidation.

Reason for rule change

The JPO’s rationale for the change to the guidelines is that the examination of multi-multi claims places an unreasonable burden on examiners, which is disproportionate to the actual number of claims. This is because the number of combinations of features increases exponentially for such claims that lack definitive dependency/citation. 

The JPO also notes that multiple dependent claims depending on other multiple dependent claims are already disallowed in the US, China and Korea, so banning such claims in Japan will increase harmonization and conformity to international standards.

KIPB is here to help

--------------------------------------------------------------

* Reason for rejection: Violation of Article 36(6)(iv) of the Patent Act - claim description not composed in accordance with the Order of the Ministry of Economy, Trade and Industry.

** The above information is based on that published by the JPO. See the following on applicable “filing dates on or after April 1, 2022”: 

• Divisional (and converted) applications. The priority date will apply when considering multi-multi claims, not the actual filing date of the divisional.  That is, multi-multi claims will still be allowed for the divisional if the parent application was filed before April 1, 2022 even if the divisional is filed on or after April 1, 2022, (assuming all requirements as a divisional application are met. If not, multi-multi claims will be disallowed.)
• PCT applications.  The new rule will not apply for PCT applications with international filing dates before April 1, 2022, but entered the Japan national phase on or after this date.
• Paris Convention applications. The rule change will apply to Paris Convention applications which have a filing date in Japan on or after April 1, 2022, even if the date they claim priority to is before April 1, 2022.