JPO’s Examination Practice for Unity of Invention and Shift Amendment

AIPLA Mid-Winter Institute IP Practice in Japan Committee Pre-Meeting Seminar JPO’s Examination Practice for Unity of Invention and Shift Amendment JPAA International Activities CenterShigeki Yamakawa, Ph.D. January 29, 2013 - Possible Revision of Examination Guideline -

Contents • Unity of Invention • Special Technical Feature (STF) • Prohibition of Shift Amendment • Current Examination Practice • Problems • Revision of Examination Guideline • Summary

Unity of Invention • Unity of Invention • All the inventions claimed in a patent application need to be so linked as to form a single inventive concept. • JP Patent Law Art. 37 • “Two or more inventions may be the subject of a single patent application… provided that these inventions are of a group of inventions recognized as fulfilling the requirements of unity of invention…”

Requirements of Unity of Invention • “[T]wo or more inventions must be linked so as to form a single general inventive concept by having the same or corresponding Special Technical Features (STFs)…” • “[STF] stands for a technical feature defining a contribution made by an invention over the prior art.” (Patent Law Enforcement Regulations Art. 25octies) • STF is identified in relation to the prior art. • STF is a feature that makes the invention novel. • No novelty, No STF!

Current Examination Practice on Unity Requirement (1) (1) STF Assessment concerning Claim 1 • Starts with the smallest numbered claim, i.e. Claim 1. • It involves examination of novelty of Claim 1, a substantive requirement for patentability. (2a) In case that STF is found in Claim 1, all the claims that have the same or corresponding STF will be subjected to substantive examination. • If the subsequent claims involve the same or corresponding STF, unity requirement is met; • If any one of claims does not involve such STF, the application does not meet unity requirement.

Hypothetical Example (1) • In case that STF is found in Claim 1, all the claims that have the same or corresponding STF will be subjected to substantive examination Feature “A” is a STF Claim 3 A+B+C Claim 1 A Claim 2 A+B Claim 4 A+B+C+D Claim 5 A+B+C+E Claim 6 A+C Claim 7 A+C+E Claim 8 A+E 6

Current Examination Practice on Unity Requirement (2) (2b) In case that No STF is found in Claim 1, • the existence of STF is assessed concerning the next smallest numbered claim in the same category that includes all the features recited in the previously assessed claim (the “first series of claims originating from Claim 1”), until STF is found; and • claims that will be subjected to substantive examination are limited to (i) claims concerning which the existence of STF have been assessed so far, and (ii) claims having all the features recited in the claim in which STF is first found.

Hypothetical Example (2) • Original Claims 1 and 2 lack novelty, and Claim 3 is novel by having STF “C”. • Claims 1-5 will be subjected to substantive examination, but Claims 6-8 , which include not all the features recited in Claim 3 will not, even though they have the STF. • Application does not meet requirement of unity of invention. • No STF • No STF • STF “C” (i) First series of claims originating from Claim 1 Claim 1 A Claim 2 A+B Claim 3 A+B+C Claim 4 A+B+C+D (ii) Claims having all the features recited in the Claim 3, where STF is found. Claim 5 A+B+C+E Claim 6 A+C Claim 7 A+C+E Claim 8 A+E 8

Prohibition of Shift Amendment • “Shift Amendment” • Amendment of claims which changes STF of the claimed inventions • Prohibition of Shift Amendment • Requirements of Unity of Invention are applied to claim amendment made in response to an office action (OA). • Applicable to applications filed on and after April 1, 2007.

Prohibition of Shift Amendment • Prohibition of Shift Amendment • A set of amended claims need to be so linked with claims that have already been examined as to form a single inventive concept. • JP Patent Law Art. 17bis (4) • Where any amendment of claims is made to respond to an OA, invention for which determination on its patentability is stated in the OA received prior to making the amendment and the invention constituted by the matters described in the amended claims shall be of a group of inventions recognized as fulfilling the requirements of unity of invention set forth in Article 37.”

Current Examination Practice on Shift Amendment (a) In case that STF is found in Claim 1 before amendment, all the amended claims that have the same or corresponding STF will be subjected to substantive examination. • If all the claims after amendment involve the same or corresponding STF, the amendment is lawful; • If any one of claims after amendment does not involve such STF, the amendment is not lawful and cause another office action. (b) In case that no STF is found in Claim 1, amended claims have to include all the features recited in the previously assessed claims.

Hypothetical Example (3) ◆Original Claims 1 and 2 lack novelty, and Original Claim 3 is novel by having STF “C”. ◆Amended Claims 1’-3’,which include all the features recited in original Claim 3, will be examined. ◆　Amended claims 4’-6’, which have not all the features recited in Original Claim 3, will not be examined, although amended Claims 4’ and 5’ include STF “C”, and cause another OA. • No STF • No STF • STF “C” Claim 1’ A+B+C+F Claim 2’ A+B+C+D+F (i) First series of claims originating from Claim 1 Claim 3’ A+B+C+D+E+F Claim 1 A Claim 2 A+B Claim 3 A+B+C Claim 4 A+B+C+D Claim 4’ Claim 5’ (ii) Claims having all the features recited in the Claim 3, where STF is found. Claim 5 A+B+C+E Claim 6’ Claim 6 A+C Claim 7 A+C+E Claim 8 A+E 12

Statistic (1) 5 points increase Percentage of number of OA notifying Unity Requirements in total number of OA • April 1, 2007 • Shift amendment is prohibited • Revision of Exam. Guidelines • April 1, 2004 • Art 37 was revised. Year of first office actions Change in percentage of Unity Requirement Office Action (as for patent applications filed on and after January 1, 2004) Source: Exhibit 5 for 8th Meeting of the Committee on Examination Standards of the Industrial Structure Council

Statistic (2) Approx. 1 % of 2nd OA Number of OA notifying Shift Amendment Year of 2nd OA Change in Number of Office Action (OA) notifying Shift Amendment (applicable to patent applications filed on and after January 1, 2007) Source: Exhibit 5 for 8th Meeting of the Committee on Examination Standards of the Industrial Structure Council

Problems (1) <Unity of Invention> • If Claim 1 lacks novelty, not all the claims may be examined, even though some of them could be allowable by having STF. • Even though STF is found in a claim within the first series of claims originating from Claim 1, other claims that are not involved in the first series of claims originating from Claim 1 will not be subjected to substantive examination. • Applicant cannot choose a claim to be first examined.

Problems (2) <Prohibition of Shift Amendment> • In case that Claim 1 does not have STF, unnecessary / unwanted features may have to be included in the amended claims, in order to avoid a shift amendment rejection, since amended claims have to include all the features described in the claim where STF was found or which was last examined. • Procedural costs and expenses are incurred for filing a divisional application.

Revision of Examination Guideline • Committee on Examination Standards of the Industrial Structure Council has been discussing revision of Examination Guideline on “Unity of Invention” and “Shift Amendment.” • 8th meeting on November 12, 2012 • 9th meeting on January 10, 2013

Revision of Examination Guideline • Concept of Unity of Invention in terms of STF will remain • No revision of laws or regulations • Examination Guideline will possibly be revised, so that more claims can be subjected to substantive examination, in terms of: (1) “the same or corresponding STF” (2) “Efficiency of examination”

Revision of Examination Guideline • Claims to be examined in terms of “the same or corresponding STF” • Whether Claim 1 has STF or not, claims that have (i) the same or (ii) corresponding STF that is first found in the first series of claims originating from Claim 1 will be examined. • Claims independent from Claim1 will also be subjected to substantive examination as long as they have the same or corresponding STF that is first found in the first series of claims originating from Claim 1. • “Corresponding STF” • It is considered that two or more claims have a “corresponding STF” if the problems solved by the claimed inventions (limited to those which had not solved by the time of application) are the same or overlapping between them.

Revision of Examination Guideline (2) Claims to be examined in terms of “Efficiency of examination” • When it is considered “efficient” to examine claims together with those that have the same or corresponding STF, such as claims dependent on Claim 1, should be examined. • Exceptions: • If the problems solved by the invention recited in a claim are irrelevant to the problems solved by Claim 1, or • If a technical feature recited in a claim which is not included in Claim 1 is irrelevant to Claim 1, then, an examiner does not have to examine patentability of such claims.

Hypothetical Example (4) • No STF • No STF • STF “C” (1) Claims with the same feature C (currently examined) Claim 1 Claim 2 Claim 3 Claim 4 A A+B A+B+C A+B+C+D First series of claims originating from Claim 1 Claim 5 Claim 6 (1) Claims with the same feature “C” A+C A+C+E Claim 7 (1) Claims with feature C’ corresponding to feature “C” Claim 8 A+C’ A+C’+F Claim 9 A+E (2) Claims depending on Claim 1 Claim 10 A+G Claim 11 (2) Exception: Claim 11 that has little relation to Claim1 A+Z

Revision of Examination Guideline • Prohibition of Shift Amendment • Assuming that a set of amended claims had been included in a set of claims before the amendment, Claims that would have fulfilled requirements of Unity of Invention will be subjected to substantive examination.

Hypothetical Example (5) (1) Claims with the same feature C (currently examined) New Claim 1 • No STF • No STF • STF “C” Orig. Claim 1 A Orig. Claim 2 A+B Orig. Claim 3 New Claim 1’ New Claim 2’ A+B+C+D A+B+C First series of claims originating from Claim 1 New Claim 3’ New Claim 4’ • Claims with the • same feature “C” A+C A+C+E • Claims with the • corresponding feature “C” New Claim 5’ New Claim 6’ A+C’ A+C’+F New Claim 7’ A+E (2) Claims depending on Orig. Claim 1 New Claim 8’ A+G (2) Exception: Claim 9’ that has little relation to Orig. Claim 1 New Claim 9’ A+Z

Summary (1) • Requirements of Unity of Invention in terms of “the same or corresponding STF”: • STF is a technical feature defining a contribution over prior art. • STF is identified in relation to prior art. • Shift Amendment is prohibited when claims are amended in response to OA: • Requirements of Unity of Invention are applied to claim amendment made in response to an office action (OA).

Summary (2) • If Claim 1 lacks novelty, [Currently] • Only the first series of claims originating from Claim 1 may be examined. • Amended claims have to have all the features recited in the claim where STF was found or which was examined last [After revision] • Claims to be examined can involve: • Claims that have STF found in the first series of claims originating from Claim 1, and • Claims depending Claim 1

Practical Tips • Important claims should be in the first series of claims originating from Claim 1. • Claim 1 is always examined first. • Prior art search regarding what applicant considers as “STF” • Interview with examiner to discuss which claims should be examined in terms of “the same or corresponding STF” and “efficiency of examination.” • Divisional application is still a remedy for “unity of invention” and “shift amendment” rejections.

THANK YOU FOR YOUR ATTENTION Shigeki YAMAKAWA YAMAKAWA International Patent Office 4th Floor, Sanno Park Tower 11-1, Nagatacho 2-Chome, Chiyoda-Ku Tokyo 100-6104, Japan shigeki.yamakawa@nifty.com

Disclaimer The views expressed in this presentation are those of the author and do not necessarily reflect the views of JPAA or the author’s firm. This presentation is for general informational purposes only and should not be taken as legal advice.

JPO’s Examination Practice for Unity of Invention and Shift Amendment