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Multi-multi claims are no longer allowed and applicants for patent and utility models need to be careful, warns Ryo Maruyama of Kyosei International Patent Office.
As of April 1, 2022, “Multi-multi claims“ are restricted by a Ministerial Order amendment referring to “claims that selectively cite two or more other claims and claims that selectively cite the citations of two or more other claims.“
Multi-multi claims are no longer allowed in patent and utility model applications filed in Japan. The purpose is to pursue the goal of international harmonisation and reduce the burden of examination processing and monitoring by third parties.
The Japan Patent Office (JPO) advises people to be careful when filing applications. It also provides a tool (in Japanese only) to check whether multiple claims are included within the scope of claims.
The tool will be launched in a browser. Users enter or copy and paste the description of the claims to be detected in the multi-multi claim directly into the input field. It can also be used in an offline environment to check unpublished projects before filing.
See Figure 1 for an Input/Output example.
Figure 1. English graphic created by Kyosei International Patent Office based on “Simple Multi-Multi Claim Checker Ver.1.1”, March 4, 2021, Japan Patent Office (JPO). Source: Official Website of the Japan Patent Office. https://www.jpo.go.jp/system/patent/shinsa/letter/multimultichecker.html
Claims detected as multi-multi claims: claim 4
Claims that cite multi-multi claims other than the above claims: claim 5
[Claim 1.] A ball bearing having a specific structure.
[Claim 2.] The ball bearing according to claim 1, wherein the inner ring is made of stainless steel.
[Claim 3.] The ball bearing according to claim 1 or 2, wherein the outer ring is made of stainless steel.
[Claim 4.] The ball bearing according to any one of claims 1 to 3, wherein an annular shock absorber is provided on the outside of the outer ring.
[Claim 5.] The ball bearing according to claim 4, wherein the annular shock absorber is made of rubber.
The new item (v) was established in article 24-3 of the Ordinance for Enforcement of the Patent Law. It is based on article 36, paragraph 6, item 4 of the Patent Law, stipulating the form of statement of claims in newly established item 5.3 of the Patent Law. Article 4 of the Enforcement Regulation of the Utility Model Law was also amended to the same effect.
“The purpose [of the limitation] is to pursue the goal of international harmonisation and reduce the burden of examination processing and monitoring by third parties.” - Ryo Maruyama, Kyosei
The amendment does not apply to patent applications filed before the enforcement of the Patent Law. This does not apply to divisional applications, etc, whose filing dates are retroactive to before the enforcement date.
It also does not apply to Patent Cooperation Treaty (PCT) applications whose international filing date is before the effective date and which enter the national phase in Japan after the effective date. However, even if the priority date is before the effective date, an application with a priority claim, whose filing date is after the effective date, is subject to the multi-multi claim limitation.
Ryo Maruyama is vice president and chief patent attorney at Kyosei International Patent Office. He can be contacted at: email@example.com
Kyosei International Patent Office, patents, utility model application, third parties, examination, JPO, PCT, priority claim