Japan IP News

FPB Circular No. 11-01 February 2011

EXAMINATION SCOPE RESTRICTED WITHIN UNITY RANGE DETERMINED BASED ON ORIGINAL CLAIMS

  1. Preface
    The Japanese Patent Law 2006 includes a new provision of Art. 17bis(4) requiring that a Special Technical Feature (abbreviated as "STF") included in all of original claims which have been once subjected to the patentability Examination by a JPO Examiner must be common to those claims pending after an Amendment filed in response to a Notice of Rejection Reason. In other words, all of a set of claims submitted by the Amendment must fall within a "Unity of Invention" range of the original claims once examined with respect to the patentability. In this instance it to be understood that an expression of "original claims" means, in this Report, "claims pending at the initiation of the initial Examiner's Examination.
    This provision is applicable to a Japanese patent application having a filing date (an international filing date in case of PCT national entry) on or after April 1, 2007.
    This provision is to make clear that the patentability Examination must be restricted within the unity range of the original claims even after an Amendment filed in response to a Notice of Rejection Reason issued as a result of the initial Examination on the original claims.
    It is expected that this provision will speed up the JPO's Examination.
  2. Provisions of JP Patent Law 2006 and Rule Relating to Unity of Invention Requirement:
    Art. 17bis(4) of Patent Law stipulates as follows: In case an Amendment to the claims is submitted, an invention(s) defined by the amended claim(s) and an invention(s) defined by an original claim(s) which has been subjected to patentability determination by a Notice of Rejection Reason the Applicant has received before the Amendment must be inventions complying with the Unity of Invention requirement stipulated by Art. 37.
    Art. 37 of Patent Law stipulates as follows: Two or more inventions may be filed by a single patent application as far as they are a group of inventions satisfying the unity requirement because of their technical relationship as provided for in an ordinance of the Ministry of Economy, Trade and Industry.
    Rule Art. 25-8 stipulates as follows:
    1) The technical relationship referred to in Art. 37 of the Patent Law which is to be defined by a Rule is a relationship in which two or more inventions are so related to each other as to constitute a single general inventive concept by including the identical or corresponding special technical feature.
    2) The special technical feature stipulated by the preceding item is a special technical feature clearly showing contribution to the prior art of the particular invention.
    3) Existence of the special technical feature stipulated by the item (1) is determined regardless of whether the two or more inventions are defined by different claims or by a single claim in an alternative format.
  3. Revision of JPO's Examination Guidelines
    In view of the above-mentioned provisions, the JPO made public a revised Examination Guideline with respect to the Unity of Invention which is applicable to a patent application having a filing date on or after January 1, 2004. This revised Examination Guideline makes clear that any claim outside of the unity range of the original Claim 1 determined based on Art. 37 of the Japanese Patent Law will not be subjected to the patentability Examination in the same application.
  4. Restricted Initial Examination Range
    4-1) Patentability Examination Scope Limited Within Unity Range
    The Examination Guidelines regarding the Unity of Invention and Examination manner to be applicable to a patent application filed on and after January 1, 2004 state that the initial Search and Examination range must include the original Claim 1 so as to determine whether or not the Unity of Invention exists in the patent application.
    According to the revised Examination Guideline regarding the Unity of Invention requirement, the Examination must be initiated by determining whether or not the original Claim 1 includes an STF. If the original Claim 1 includes an STF, any other original claim(s) having the same or corresponding STF as that of the original Claim 1 as well as the original Claim 1 must be examined with respect to patentability. The remaining original claims not having the same or corresponding STF as the original Claim 1 will not be subjected to the patentability Examination but are given a rejection reason of non-unity based on Art. 37.
    4-2) In Case of Original Claim 1 Not Having STF
    If the Examiner determines that the original Claim 1 does not include any STF, it is apparent that no Unity of Invention requirement is satisfied. It is to be understood that the Unity of Invention must be, according to the Examination Guidelines, determined on the basis of the original Claim 1 only.
    In such situation, the Examination Guideline stipulates that the Examination must be further carried on to find an STF within a series of original claims which is obtained by repeating a step of selecting, starting from the original Claim 1, a claim with a smallest claim number within a group of original claims, each claim within the group including all elements of one preceding claim and being classified into the same category as each other.
    Any claim(s) having substantially been examined through the above procedure to find an STF is to be included within the initial Examination range regarding the patentability such as novelty, inventive -step etc. other than Unity of Invention requirement.
    Any remaining claim(s) which has not been subjected to the above-mentioned patentability Examination is rejected as not complying with the Unity of Invention requirement based on Art. 37.
  5. Examination Guideline for Determining Compliance of Amendment with Art. 17bis(4) Requirement - Manner of Examination for Determination Regarding Amendment Shifting STF
    5-1) According to the Examination Guideline how to determine an gAmendment Shifting STF,h the Examiner must determine whether or not all the claim(s) within the above-mentioned initial Examination range has the same or corresponding STF as all claims pending after an Amendment filed in response to a Notice of Rejection Reason issued as a result of the patentability Examination for the initial Examination range.
    5-2) In case all the claims (including the original Claim 1) already subjected to the patentability Examination and all the claims pending after the Amendment have the same or corresponding STF, the Examiner must proceed his/her Examination for all the pending claims after the Amendment with respect to the patentability such as novelty, inventive-step, etc. without raising a rejection reason based on Art. 17bis(4), i.e. "Shifting Amendment Rejection".
    If, however, any claim pending after the Amendment does not have the same or corresponding STF as the all examined claim(s), such claim is placed outside of the patentability Examination range and is given a rejection reason based on Art. 17bis(4). That rejection reason is noticed to the Applicant by a Notice of Rejection Reason while the Notice having in many cases a finality feature.
    5-3) If the original Claim 1 does not have any STF, it is apparent that the Art. 17bis(4) requirement cannot be satisfied. However, according to the Examination guideline, the Examination must be further made, as follows:
    5-3-1) If there exists any original claim having an STF within the original claims once examined, one or more claims pending after the Amendment including the same or corresponding STF as the STF of the original claim are subjected to the patentability Examination and those claim(s) not having the particular STF is excluded from the patentability Examination and is given a rejection reason under Art. 17bis(4).
    5-3-2) If no claim exist having an STF within the original claims once examined, a sequence similar to that mentioned in the above item (4-2) is made so as to seek an STF within pending claims after the Amendment. Namely, an STF is sought within one of the pending claims having a smallest claim number and including all the elements of (and belonging to the category as) an original claim which has been finally determined with respect to STF. When the particular claim does not include ay STF, another procedure is made for seeking an STF within a train of serial pending claims by repeating such a step as to select a claim with a smallest claim number within the remaining pending claims each including all the elements of (belonging to the same category as) the particular claim.
    When an STF is found in a claim within the STF seeking procedures, the claim and those claims already reviewed and such claims as include the same STF as the found STF are subjected to the patentability Examination.
    If, at this step, there exist any claims which have not been subjected to the patentability Examination, such claims will be given the rejection reason under Art 17bis(4).
  6. Non-Compliance With The Requirement of Art.17bis(4)
    6-1) Rejection Reason But Not Dismissal Reason
    When the Examiner finds that an Amendment which has been filed in response to a Notice of Rejection Reason does not comply with the stipulation of Art. 17bis(4), the Examiner can issue a Notice of Rejection Reason (Arts. 49 and 50) because of non-compliance of that Amendment with Art. 17bis(4).
    However, he/she cannot dismiss such Amendment. In other words, the Examiner must once enter such Amendment and issue such a Notice of Rejection Reason stating that the particular Amendment does not comply with the unity requirement across an Amendment of Art. 17bis(4). That is, all the claim(s) pending even after that Amendment does not include the same or corresponding STF as that included by the pending claim(s) within the initial Examination range. Such Amendment as does not comply with the requirement of Art. 17bis(4) may be called "an Amendment Shifting STF".
    6-2) No Invalidation Reason
    It is to be understood that non-compliance with the across-amendment unity requirement of Art. 17bis(4) is not an invalidation reason nullifying an already issued patent.
  7. Japanese Practitionerfs View Points:
    Under the new Examination practice under the Japanese Patent Law 2006 which has been mentioned above, the Applicant of a Japanese patent application is suggested to pay attention to the following points:
    7-1) In drafting claims, the claims must be arranged in order of importance. In other words, a claim which is to be surely examined next to the original Claim 1 should be given a claim number of "2."
    7-2) In preparing an Amendment in response to a Notice of Rejection Reason, the Applicant must make sure that an STF within any original claim being once subjected to the patentability Examination is also included in the claim 1 pending after Amendment and delete any claim(s) outside of the unity range of the once examined claims if he/she does not want to receive the rejection reason under Art. 17bis(4).
    7-3) If a Notice of Rejection Reason is issued based on Art. 17bis(4), the Applicant might choose either one of the following ways:
    A) to file an Amendment deleting the claims rejected based on Art. 17bis(4);
    B) to file a divisional application with a claim(s) corresponding to the deleted claim(s) in addition to an Amendment of the above (A) ; and
    C) to file an Argument arguing that a determination by the Examiner with respect to the stipulation of Art.17bis(4) is incorrect and to wait for a next Decision of Rejection or for Grant (It is to be understood that a divisional application is still possible even after issuance either of a Decision of Rejection or for Grant without filing an Appeal under the Japanese Patent Law 2006 ).

    End