Revised Guidelines for “Unity of Invention” and “Shifting Amendment”

The Japan Patent Office (JPO) announced that the Japanese Patent Examination Guidelines for “Unity of Invention” and “Shifting Amendment” will be revised on July 1, 2013. According to the revised Guidelines, the requirements for “Unity of Invention” and “Shifting Amendment” will be relaxed to some extent. The revised Guidelines will be applied to patent examinations conducted on and after July 1, 2013. The revised Guidelines are summarized below.

1. Unity of Invention

Special Technical Feature (STF) is defined as a technical feature recited in a claim of an application that is not found in a single main prior art reference, after searching the prior art and performing a limited examination of the claims in the application.

Example 1 (Independent Claim 1 has an STF)

In a case where independent claim 1 of an application has an STF, claims dependent from independent claim 1, as well as other independent claims and claims dependent therefrom having the same STF would meet the requirements of unity of invention. Therefore the JPO will conduct a substantive examination of these claims with respect to inventive step and other patentability requirements. If a corresponding STF is found in a claim of the application, the claim containing the corresponding STF, along with claims dependent therefrom are also substantively examined. An example of a corresponding STF to an STF would be a demodulation element (corresponding STF) which is associated with a modulation element (STF). Other remaining claims having no such STF or corresponding STF do not meet the unity of invention requirement and are not examined.

Example 2 (Independent Claim 1 does not have an STF)

In another example, a limited examination is performed on the first independent claim of an application to determine whether or not an initial STF exists. If an initial STF does not exist in the first independent claim, claims dependent on the first independent claim are examined to determine if an initial STF exists. The dependent claims are examined in the order of the numbering of the claims. Once an initial STF is determined in a dependent claim, the limited examination to determine an initial STF stops. No limited examination to determine a subsequent STF will be performed. The first independent claim, the dependent claim where the initial STF was determined, the intervening claim(s) between the first independent claim and the dependent claim where the initial STF was determined, and claims directly or indirectly dependent on the dependent claim where the initial STF was determined are substantively examined. Other dependent claims not depending from the dependent claim containing the initial STF, having a higher claim numbering than the dependent claim where the initial STF was determined and including the same initial STF or a corresponding STF are also substantively examined. In the example below where independent claim 1 does not have an initial STF, the JPO will check whether claim 2 depending from independent claim 1 has an initial STF. If claim 2 does not have an initial STF, then the JPO will check whether claim 3 has an initial STF. This checking process continues with claim 4, 5, 6, … in the order of the numbering of the claims, until, or if, an initial STF is determined. Referring back to the example below, if an initial STF is found in claim 3, then the already checked claims 1, 2 and 3 (independent claim 1, intervening claim 2 and dependent claim 3 containing the initial STF) and other claims directly or indirectly dependent on the dependent claim 3 containing the initial STF (Claims 7-9) are substantively examined for inventive step and other patentability requirements. If the same initial STF or a corresponding STF is found in a dependent claim not depending from claim 3, these dependent claims and claims dependent therefrom are also substantively examined. In the example below, claims 4-6 and 10 which directly or indirectly contain the same initial STF or a corresponding STF are also substantively examined. No other independent claim (claim 11) or claim dependent therefrom (claim 12) are examined. According to the old Guidelines, if an initial STF is found in Claim 3, then the already checked Claims 1, 2 and 3 and other claims having all the features recited in Claims 1, 2 and 3 are substantively examined for inventive step and other patentability requirements.

2. Restriction of Changing STF (Shifting Amendment)

This restriction is applied only to patent applications filed on and after April 1, 2007 (actual filing date in Japan or PCT filing date).
In a case where claim 1 before amendment has an STF, all the amended claims should have the same or a corresponding STF.
In another case as shown in the chart below, an application has three claims, with claims 1 and 2 before amendment having no STF and claim 3 having an STF. The claims in the application are amended such that new claim (1) is the combination of old claims 1, 2 and 3. New Claim (4) includes the subject matter of old claim 1 and a corresponding STF of old claim 3. In this case, all of the new claims (1)–(6) should have the same or a corresponding STF as old claim 3. In the chart, new claims (1)–(3) have the same STF as old claim 3 and new claims (4)–(6) have a corresponding STF as old claim 3, and therefore they are all examined.
According to the old Guidelines, each of the new claims should have all the features recited in old claims 1, 2 and 3.

If you have any questions about these revisions, please let us know.