February 21, 2022
Yasunobu Okada

A multiple dependent claim that depends on another multiple dependent claim (called a “multi-multi claim” in Japan) will no longer be accepted in patent applications filed on and after April 1, 2022, due to forthcoming legislative revisions. Public comments on the legislation closed on January 25, 2022, and the revised draft of the Examination Guidelines for Patents and Utility Models was published on February 10, 2022, and is now open for public comments. The following is a summary of what we know about this issue.

According to the revised draft of the Examination Guidelines, a multi-multi claim is defined as “a claim that selectively cites two or more other claims (second order multiple dependent claim) that [also] selectively cite two or more other claims (first order multiple dependent claim)”.

In other words, the Examination Guidelines discuss the following situation: a claim describing “claim A or B” or “any of the claims A to C” (first order multiple dependent claim), in which there is also a claim dependent from the first multiple dependent claim describing “claim D or E” or “any of the claims D to F” (second order multiple dependent claim).

In the following exemplary claims, claim 3 corresponds to the first order multiple dependent claim and claim 4 corresponds to a second order multiple dependent claim, also called a multi-multi claim.

Claim 1: An apparatus with A.

Claim 2: An apparatus as claimed in claim 1, further comprising B.

Claim 3: An apparatus as claimed in claim 1 or 2, further comprising C. (This is a first order multiple dependent claim, which is still allowed)

Claim 4: Apparatus as claimed in any of claims 1-3, further comprising D. (This is a second order multiple dependent claim, or multi-multi claim, which is no longer allowed)

Claim 5: Apparatus according to claim 4, wherein D is d1 (This is a claim citing the multi-multi claim, which is also no longer allowed).

(Quoted from the JPO’s “Outline of the Proposed Revision of the Examination Guidelines for Patents and Utility Models”)

In Japan, multi-multi claims have been allowed until now. However, in order to decrease the burden of examination and increase harmonization with foreign countries that bar multi-multi claims, the JPO has decided to restrict them. 
Specifically, Article 24-3 of the Ordinance for Enforcement of the Patent Law, which is delegated by Article 36 (6) iv, of the Patent Law, is scheduled to establish a new Item (v).

Article 24-3

(2) The description of patent claims as provided by Ordinance of the Ministry of Economy, Trade and Industry under Article 36(6)(iv) of the Patent Law shall be as provided in the following items

(i) … (iv) [Omitted]

(v) When stating claims by selectively citing two or more other claims, the claims to be cited shall not selectively cite two or more other claims.

(Quoted from the JPO’s “Outline of the Proposed Revision of the Examination Guidelines for Patents and Utility Models”)

Therefore, for patent applications filed on and after April 1, 2022, the inclusion of multi-multi claims will be grounds for rejection in violation of the Delegation Ordinance. If a multi-multi claim is presented by an Applicant, substantive examination of novelty, inventive step, etc. will not be conducted for multi-multi claims.

Furthermore, claims that cite back to multi-multi claims are also not subject to examination. In the example above, claim 5 is an ordinary claim on its own, but it depends from a multi-multi claim. For this reason, claim 5 is also not subject to examination. In other words, if you file a request for examination for the example above, only claims 1-3 will be examined substantively, and claims 4 and 5 will not be substantively examined. It is noted that having multi-multi claims is a reason for rejection, but not a reason for opposition or invalidation.

For reference, the treatment of multi-multi claims in major countries and the PCT is as follows:
(Quoted from the 16th Working Group of the Technical Committee on Examination Standards, Patent System Subcommittee, Intellectual Property Subcommittee, Industrial Structure Council, Japan Patent Office, Document 1 “Restriction of Multi-Multi Claims”)

United States: Not Allowed
Korea: Not Allowed
China: Not Allowed (with some exceptions)
Europe: Allowed
PCT: Allowed

For PCT applications, it is expected that an international search report will continue to be issued even if there are multi-multi claims.

As a practical tip, applicants will need to adjust claim dependency so that multi-multi claims are avoided. In this case, if the same dependency relationship as before is to be realized, the number of claims will increase. As the number of claims increases, the burden of examination fee and patent fee increases, so it may not necessarily be a good idea to realize the same dependency as before.

Therefore, for example, if the composition of the invention alone contains the inventive subject matter, the invention should be dependent only on claim 1, or if the invention has particular advantages related to the inventive step in a lower claim, the invention should be dependent only on that lower claim. However, this strategy is not something new, as applicants have always been working to eliminate multi-multi claims when filing applications in foreign countries.

As a reminder of the transitional measures, the limitation on multi-multi claims will apply to “applications filed on and after April 1, 2022.” Please note that this does not mean that multi-multi claims will be disallowed for applications filed before that date.

The limitation on multi-multi claims also applies to utility models, and is added to the basic requirements. Therefore, if multi-multi claims are included, an amendment order will be issued as a violation of the basic requirements, and the same attention should be paid to utility models as well.

Last, but not least, the above information is based on information that is currently available to the public and has not yet been finalized. Therefore, please be aware that there is a possibility of changes to the specific operation in the future.