Recent changes in the JPO's examination guidelines

The revised guidelines regarding unity are to be applied to applications filed on or after January 1, 2004, and examined on or after July 1, 2013. The revised guidelines regarding ACSTFs are to be applied to applications filed on or after April 1, 2007, and examined on or after July 1, 2013.

By the revision, a claim that has not been examined as to novelty and/or inventive step because of a unity violation under the former guidelines, will be subject to examination so as to enhance the efficiency of the examination. The changes are as follows:

Procedure regarding unity

First, select claim 1 from the overall claims. If claim 1 includes an STF, the claim(s) dependent on claim 1 shall be examined as to inventive step and novelty.

If claim 1 does not include any STF, then select the lowest-numbered claim that depends on claim 1, and determine whether the selected claim includes any STF(s). If the selected claim does not include an STF, then select the next lowest-numbered claim that depends on claim 1, and determine whether that claim includes an STF; continue this process until a claim that includes an STF is found.

Claim 1 and other claims that depend on claim 1 and that have been selected to be considered as to whether an STF is included shall be examined for novelty and/or inventive step (as in the former guidelines).

Second, if it would be efficient to examine any additional claims together with the claims already selected to be examined in order to determine whether any STF is included—that is, if any additional claims can be examined without a need to substantially conduct additional prior art searches as a result of examining claims already to be examined—the additional claims will be examined for novelty and inventive step. Such additional claims would be any that would be examined as to novelty and inventive step without determining whether the claims satisfy the unity requirement under the revised guidelines.

For example, it would be efficient to examine the below claims (1) and (2) together.

Any claim(s) dependent on claim 1 and that includes all the limitations of claim 1. However, the claim(s) shall not be examined if (a) the problem to be solved by the invention of claim 1 has little relevance to a problem to be solved by the invention(s) of any claim(s) that have additional limitations, or (b) the STF(s) of claim 1 and the STFs of those additional claims have low technical relevance.

An invention that can be examined without conducting any substantial additional prior art search as a result of examining claims that have become subject to examination.

Procedure regarding ACSTF

If claims are amended, and the amended claims are to be examined as to novelty and inventive step under the revised Examination Guidelines regarding unity, these amended claims are considered to be claims that have not changed any of the invention’s STF(s).

Such additional claims would be any that would be examined as to novelty and inventive step without determining whether the claims satisfy the unity requirement.

In response to criticisms that the JPO’s requirements regarding unity of inventions have been too strict compared to those of other countries, the JPO has softened its Examination Guidelines regarding the unity requirement and ACSTFs. Now, even an invention that would not have been examined as to novelty and/or inventive step because of failure to meet the unity requirement under the former guidelines will be examined if the examination can be made without the need to substantially conduct any additional prior art searches.

Ryo Maruyama is a Japanese patent attorney and vice president of Kyosei International Patent Office. He can be contacted at: info@kyosei.or.jp

Hiroshi Hari is a Japanese patent attorney at Kyosei International Patent Office. He can be contacted at: info@kyosei.or.jp