Current Practice:

As you may know, under the current Japanese patent practice, “Multiple-Multiple Dependent Claims” are not restricted.

Hence, at the time of filing a request for examination, we sometimes propose revising the dependencies of the Japanese claims to protect broader scopes of inventions by the use of “Multiple-Multiple Dependent Claims”. 

In this respect, we also file a preliminary amendment to be on the safe side, in which we add a copy of the original claim set at the end of the specification, in consideration of the recent strict judgment of support requirements in Japan.  This may work beneficially when any necessity arises in the future to file a divisional application based on the original claims.

New Practice:

However, under the new practice, which is applied to applications whose “filing date”** is April 1, 2022 or later, “Multiple-Multiple Dependent Claims” are restricted.

**Please note that the “filing date” is considered as follows:

• PCT national phase applications: international filing date;
• Paris route applications: Japanese filing date; and
• Divisional applications: parent filing date.

If an application filed on or after April 1, 2022 includes “Multiple-Multiple Dependent Claims”, the application is rejected as violating Article 36(6)(iv).

For our overseas clients, a Japanese national phase application must be filed within 30 months from a priority date, and therefore, we think we will receive a first case to which the new practice will be applied probably around October 2023. 

The Examination Guidelines describe a typical example in which the recitation of a claim violates the “Multiple-Multiple Dependent Claims” requirement as follows:

Where, when a claim recites a dependency from two or more other claims in an alternative manner, the claim that it depends from is that which depends from two or more other claims in an alternative manner.

The Examination Guidelines further state that:

If an Examiner determines that there are claims that violate the Regulations under Article 24ter(v) of the Patent Law, the Examiner shall, in addition to indicating the Ground for Rejection, clearly indicate in the Notice of Grounds for Rejection the inventions that are not subject to examination with respect to requirements other than those prescribed in Article 36(6)(iv) and the Regulations under Article 24ter(v) of the Patent Law, and indicate the reasons why they are not the subject to examination.

Our Future Practice:

As explained above, at the time of filing a request for examination, we currently propose revising the dependencies of the Japanese claims by use of “Multiple-Multiple Dependent Claims”. 

However, in view of the above change, we will propose to revise the claim dependencies to exclude the use of “Multiple-Multiple Dependent Claims” are not presented regarding PCT applications whose international filing date is April 1, 2022 or later, so that we can avoid the possibility of receiving an unnecessary office action.

We will of course revise the dependencies of claims if we receive explicit instructions to do so from our clients.  Further, once examination is initiated and an office action is issued, we will amend the Japanese claims such that the broadest scope of the claimed invention is protected.

We believe the above comments will be clear to you.  Should you have any further questions, please do not hesitate to contact us at info@allegropat.com