Implementation on Multiple-Multiple Dependent Claim Restrictions
As of April 1, 2022, restrictions on multiple-multiple dependent claim will be implemented in Japan. This article introduces practical points that overseas applicants should be aware of. A multiple-multiple dependent claim is a multiple dependent claim that cites at least one multiple dependent claim. Multiple-multiple dependent claims, which are currently allowable in Japan, will not be allowable after April 1, 2022 for patent applications and utility model registrations in Japan. The violation of multiple-multiple dependent claim restrictions will be a reason for rejection for patent application filed after April 1.
Filing dates of applications which will be subjected to the restrictions are as follows:
- Japanese National Phase Entry of International
Application:
the international filing date is on or after April 1 - Japanese Patent Applications having Priority under the Paris
Convention:
the actual filing date is on or after April 1 - Divisional Applications:
the original application is filed on or after April 1
The JPO explains that the aim of this implementation is to encourage international harmonization and to reduce burden of examination workload. The multiple-multiple dependent claim is already restricted in the U.S.A., China, and Korea, and Japan will follow them. No exceptions will be stipulated. All multiple-multiple dependent claims will be subject to rejection without exception.
| JP | US | KR | CN | EP | |
| Multi | 〇 | 〇 | 〇 | 〇 | 〇 |
| Multi-multi | 〇→× | × | × | × | 〇 |
Review Dependencies of Claims
Applicants who file applications to the JPO on or after April 1 should review the dependencies of claims in order to avoid any unnecessary reasons for rejection, especially for those based on EP applications where the multiple-multiple dependent claims are allowable, as well as applications based on CN applications where some exceptions regarding multiple-multiple dependent claims are allowed.
A reason for rejection based on the multiple-multiple dependent claims restrictions can be avoided by changing a dependent claim so that it depends on a single claim. An invention that was excluded to resolve the multiple-multiple dependent claim can be claimed with an additional independent or dependent claim. Since there are no restrictions on the total number of claims or the number of independent claims in Japan, it is possible to significantly increase the number of claims as long as the unity of invention requirements are fulfilled. However, as shown in the next section, it should be remembered that some official fees may increase depending on the number of claims.
Increase in Official Fees according to Number of Claims
Fee for Request for Examination
The fee for request for examination will increase depending on the number of claims as shown in the table below.
| Paris-route and Divisional Application | 138,000 JPY + 4,000 JPY per claim |
| PCT-route | 124,000 JPY + 3,600 JPY per claim |
Annual Fee
Annual fee will also increase depending on the number of claims. Although the increase will not be of great impact in the early years, the fee charged on each claim will be significantly greater after the tenth year as shown below.
| 1-3rd year: annually, | 4,300 JPY + 300 JPY per claim |
| 4-6th year: annually, | 10,300 JPY + 800 JPY per claim |
| 7-9th year: annually, | 24,800 JPY + 1,900 JPY per claim |
| 10-25th year: annually, | 59,400 JPY + 4,600 JPY per claim |
*Annual fees after the revision of April 1, 2022
The following chart shows that the amount of annual fees will be significantly different between a patent with 10 claims and a patent with 20 claims after the tenth year.
*Annual fees are calculated based on the fee table to be applied on April 1, 2022
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
