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JPO: Multiple-Multiple Dependency Claim No-Go from April 1, 2022

posted 2 years ago

Japan used to allow “multi-multi claims” (described as “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”).[1] However, beware that if you were intending to file a two-layered multiple dependency claim in Japan, to gain broader coverage, this is no longer a safe option from April 1, 2022. The JPO announced it would enable an examiner to require removal of “multi-multi claims” in an Office Action.[1] This is largely to get more in line with other patent offices like the USPTO.

The United States Patent & Trademark Office (USPTO) outright rejects dependent patent claims that refer to multiple another multiple dependent claim(s). It also charges a hefty price for multiple dependent claims.[2] However, some jurisdictions like the EPO allow “multi-multi claims,” so make sure if you might have such claims.[3, p. 3]

Do you have “multi-multi claims”? If you or your client do for an upcoming patent or utility model application in Japan, please reconsider.

Will old multiple-multiple dependency claims be rejected? No, only those filed on or after April 1, 2022.[1] Be careful if you are filing a Divisional Application thereafter, in case it has old “multi-multi claims” in it. Incidentally, PCT international applications can still be examined with multiple-multiple dependency claims in them.[3, p. 8]

* The information provided on this website is for informational purposes only and is not intended as legal advice.
** For questions or consultation, please contact us for more information.

Sources

[1] Japan Patent Office. “Restriction of Multi-Multi Claims.” https://www.jpo.go.jp/e/system/patent/shinsa/multimulticlaims.html March 9, 2022. Accessed March 24, 2022.

[2] United States Patent & Trademark Office. Fee schedule for 37 CFR §1.16(j), as of March 23, 2022, $860 for Large Entities. https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule

[3] JPO Examination Standards Office. “マルチマルチクレーム制限について [Multi-multi claim limits]” PDF handout. https://www.jpo.go.jp/system/patent/shinsa/letter/document/multimultichecker/multichecker.pdf found on JPO, “マルチマルチクレームの制限について [Multi-multi claim limits],” https://www.jpo.go.jp/system/patent/shinsa/letter/multimultichecker.html under マルチマルチクレーム制限について(説明資料)(PDF:887KB). March 2022. Accessed March 24, 2022.

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