Hitherto, multiple dependent claims in patent or utility model applications that depend from other multiple dependent claims have been permitted in Japan. However, amended enforcement regulations of the Patent and Utility Model Laws prohibiting the use of such multiple dependent claims are scheduled to take effect as of April 1, 2022. Specifically, Article 24-3(v) of the enforcement regulations of the Patent Law, which is referred to in Article 36(6)(iv) of the Patent Law, will stipulate the prohibition of such multiple dependent claims. According to the Japan Patent Office (JPO), this amendment is intended to make it easier for an applicant to make the claims of a Japanese application comply with overseas regulations, such as those of the U.S.A., China and South Korea, and to reduce the burden of examination due to the potentially vast amount of subject matter requiring examination when such multiple dependent claims are used.
 
While the precise details of how the amended regulations will be put into effect, together with a concomitant revision of the Examination Guidelines for Patents and Utility Models, remain under discussion, there have been indications that the application of the amended regulations will be rather strict, even in comparison to other jurisdictions. For example, it seems that the prohibition of multiple dependent claims will be applied in any case in which a claim refers to multiple claims that include multiple dependent claims, regardless of the dependent claims having different preambles or being in different categories (claims that refer to other claims are always regarded as "dependent claims" in Japan). Further, according to a draft amendment of the Examination Guidelines, claims that violate this regulation will not be examined, and this fact alone will be notified to the applicant as a reason for rejection without any substantive examination of the claim at issue (in a similar manner to a rejection for lack of unity). As such, there is a possibility that an applicant will waste one opportunity to have the claims substantively examined if the claims have not been adjusted to the proper format before examination. Incidentally, while violation of the amended regulations may constitute grounds for rejection, it will not constitute grounds for opposition or invalidation.
 
The new regulations may require overseas applicants to consider claim amendments when filing Japanese applications based on foreign applications or PCT applications. The new regulations will apply to applications filed on or after April 1, 2022.

 
Summary prepared by the International Information Group
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