Official Fees at the Japan Patent Office:

Unlike the US practice, there are NO excess claims fees in Japan. The official filing fee remains the same, JPY 14,000 for a PCT national phase application, independent of the number of total/independent claims.

Meanwhile, as you may know, a request for examination must be filed within 3 years (from international filing date for PCT national phase application), and the official fee is simply calculated based on the number of claims:

JPY 124,000 (basic fee) + JPY 3,600 x N (number of claims)

Hence, at the time of filing a request for examination, we try to reduce the total number of claims by restructuring claims sometimes with the use of multi-multi type claims.

*The term “multi-multi claim” means “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” (Source: JPO website https://www.jpo.go.jp/e/system/patent/shinsa/multimulticlaims.html) 

Revised Examination Guidelines in Japan:

However, the examination guidelines were recently revised in Japan, and the revised guidelines will apply to Japanese patent applications whose “Filing Date” is April 1, 2022 or later.

The “Filing Date” is defined as follows:

1. PCT national phase application: International Filing Date
2. Japanese application claiming Paris convention priority: Japanese Filing Date
3. Divisional application: filing date of it’s parent application

Reason for Rejection:

If a Japanese patent application filed on or after April 1, 2022 includes any Multi-Multi Claims, we will receive an Office Action stating that the application does not satisfy the requirements prescribed in Article 36(6)(iv) of the Patent Law, which defines:

The statement of the scope of claims … shall comply with each of the following items:  the statement is composed in accordance with Ordinance of the Ministry of Economy, Trade and Industry.

Please note that, if a claim is considered as being a “multi-multi claim”, the claim and it’s dependent claims are NOT examined regarding other requirements, such as novelty, inventive step, etc. 

Our Procedures:

At the filing stage, even if we receive an amended set of claims, we basically do not file it but file the PCT original claims. This is because we should avoid the possibility of putting a reason for rejection or invalidation into the application, and further, we can preserve rights for filing a divisional application directed to the original claims of the PCT application if the Japanese translation includes the original claims.

At the time of filing a request for examination, we carefully review the PCT original claims and proposed amended claims, if there are any, and we provide our comments and proposals to conform to Japanese requirements. In this respect, we will also check if there are any Multi-Multi Claims and will prepare draft amendments to be filed together with a request for examination.

For your information, the international filing dates of PCT applications for which we recently receive filing instructions from our clients are around October-December 2020, and therefore, it will take around one and a half years till the new practice will apply to Japanese national phase applications. 

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

[Update in July 2022]

The Japan Patent Office recently reported the status of Japanese applications filed after the Multi-Multi Claim restriction:

• Before the restriction, the ratio of applications containing multiple claims to all patent applications was about 65%;
• After the restriction, the ratio decreased to about 5%.

This means that the applicants voluntarily amend the claims so that no multi-multi claims are included. The JPO suggests amending the claims, for example, at the time of filing a request for examination.