On July 1, 2013, the Japan Patent Office (“JPO”) revised its Examination Guidelines1 concerning “Requirements for Unity of Inventions” (hereinafter “unity requirement”), “Amendment that Changes a Specific Technical Feature (STF) of an Invention” (hereinafter “ACSTF”), and “Examination Procedure” relating to said unity requirement and ACSTFs.
The revised Examination 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 Examination 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 had not been examined as to novelty and/or inventive step because of a unity violation under the former Examination Guidelines, will be so examined so as to enhance the efficiency of the examination.
The changes effected by these new Examination Guideline are as follows.
I. 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 (same as the former Examination Guidelines).
Second, if it would be efficient to examine any additional claim(s) together with the claim(s) already selected to be examined in order to determine whether any STF is included — that is, if any additional claim(s) that 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 claim(s) shall be examined for novelty and inventive step. Such additional claim(s) would be any that would be examined as to novelty and inventive step without determining if the claim(s) satisfy the unity requirement under the revised Examination Guidelines.
For example, it would be efficient to examine the below claims (1) and (2) together.
(1) 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.
(2) An invention that can be examined without conducting any substantial additional prior-art search(es) as a result of examining claims that have become subject to examination.
II. 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).
III. Our Comments
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 Examination Guidelines will be examined if the examination can be made without the need to substantially conduct any additional prior-art searches.
1. “On Additions and Revisions of Examination Guidelines,” http://www.jpo.go.jp/cgi/link.cgi?url=/shiryou/kijun/kijun2/tukujitu_kijun.htm
Hiroshi HARI, Patent Attorney