1. New Practice of Unity of Invention (Article 37) "Unity of Invention" and "Shift Amendments" under the Revised Examination Guidelines in Japan JPAA International Activities Center Kazuhiro Yamaguchi October 22-23, 2013 AIPLA Annual Meeting IP Practice in Japan Committee Pre-Meeting

2. 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.

3. 3 2013.10 (AIPLA) History of "Unity of Invention" in Japan a) Prior to December 31, 2003 "Unity of Application" under previous Article 37 b) January 1, 2004 - "Unity of Invention" under current Article 37 Revision of Examination Guidelines c) April 1, 2007 - Revision of Examination Guidelines Introduction of "Prohibition of Shift Amendment" d) July 1, 2013 - Revision of Examination Guidelines (applied to the examinations on or after July 1, 2013)

4. 4 2013.10 (AIPLA) Inconvenience of the Previous Examination Guidelines in Japan a)A claim set subject to examination is determined by Examiner in accordance with the difficult and complicated provisions of "unity of invention." (= No separate office action for Restriction/Election of Species is issued.) *Note: Unfortunately, no change by the latest revision b)Many claims may be excluded from the subject of examination if claim drafting is improper or too challenging in terms of a "special technical feature (STF)." (= Especially, chain of claim dependency may make a great difference.) *Note: "Chain of claim dependency" is still important after the latest revision c)Strict and complicated provisions of "prohibition of shift amendment" may be applied after receiving 1st OA. (= More divisional applications may be innevitable.)

5. 5 2013.10 (AIPLA) What is a Special Technical Feature (STF)? - No Change by the Revision - An "STF" is not considered to exist in the following cases: (1)Technical matters which falls under any paragraph of Article 29 (≈ lack of novelty, not including so-called "secret prior art") (2)Additions, omissions, conversions, etc. of well-known technologies with respect to the technical matters of point (1) above which do not produce any new effect (3)Mere changes of design with respect to the technical matters of point (1) above Note: For example, if a notice of reasons for rejection is issued with respect to the claim 1 based on Article 29(1)(iii) (novelty), that means claim 1 has no STF. If a notice of reasons for rejection is issued with respect to claim 1 based only on Article 29(2) (inventive step), normally that means it has an STF, but if the difference between the invention and the cited reference is only an addition, omission, conversion or design change with respect to well-known technologies, it is possible that an STF will not be recognized.

6. 6 2013.10 (AIPLA) How chain of claim dependency may make a great difference in Unity of Invention? Claim 1Claim 2 Claim 6 Claim 3Claim 7Claim 9 Claim 8 Claim 4 Claim 5 In accordance with the examination guidelines, the Examiner will decide the order to determine a "Special Technical Feature (STF)" If an STF is found in Claim 3, Examiner will examine claims which: (1)belongs to the same category, and (2)recites all matters identifying the invention claimed in Claim 3, which includes the "STF". "STF" found Examiner may not examine Claims 4-6 because Claims 4-6 are not dependent from Claim 3 even if a more important feature is claimed therein. An important feature (which is to be an "STF") should be claimed in earlier claims in the "first serial dependent line." Example (under previous examination guidelines):

7. 7 2013.10 (AIPLA) How chain of claim dependency may make a great difference in Unity of Invention? Hypothetical Example (under the previous examination guidelines): Claim 3Claim 1Claim 2 (armrest)(armrest + caster) Claim 7-9 (armrest + caster + leather cushion etc.) Claim 6Claim 4-5 * in principle, not examined * not examined (caster) (armrest + rocking mechanism etc.) "STF" = Caster

8. 8 2013.10 (AIPLA) What is Prohibition of Shift Amendment? - Inconvenience of the Previous Examination Guidelines - Under the previous examination guidelines, if the examiner determines claim 1 has no “special technical feature (STF)” before amendment, an amendment is considered as "shift amendment" unless: (a)the claimed invention includes all the matters (possibly, the STF plus other redundant feature(s)) specifying the invention of the examined claims (in which special technical features were found or which were examined to determine whether a special technical feature is recited); and (b)the invention is in the same category. (1)If an amendment responding to a first notice of reasons for rejection (1st OA) is shift amendment, a final notice of reasons for rejection will be issued without examining the amended claim at issue. (2)If an amendment responding to a final notice of reasons for rejection (Final OA) is shift amendment, the amendment will be dismissed.

9. 9 2013.10 (AIPLA) What is Prohibition of Shift Amendment? To prevent re-doing examinations due to amendments made during examinations after issuing reasons for rejection (i.e. office action). Ex. 1: (Before amendment) (After amendment) Claim 1: Antennas of mobile phones Claim 1: Hinges of mobile phones Ex. 2: ( Before amendment) (After amendment) Claim 1: Antennas of mobile phones Claim 1: Hinges of mobile phones Claim 2: Hinges of mobile phones Notice of Reasons for Rejection Prohibited Notice of Reasons for Rejection Claim 1 lacks inventive step Claim 2 has no unity of invention and thus will not be examined Prohibited

10. 10 2013.10 (AIPLA) What is Prohibition of Shift Amendment? Hypothetical Example (under the previous examination guidelines): Before amendment (Original Claims 1-3) Claim 1: An apparatus comprising A * A (= leg) includes NO STF. Claim 2: The apparatus of claim 1, further comprising B * B (= armrest) includes NO STF. Claim 3: The apparatus of claim 1 or 2, further comprising C * Whether or not an STF is found C (= caster)... (See Cases 1 and 2) Claim 1Claim 2Claim 3

11. 11 2013.10 (AIPLA) What is Prohibition of Shift Amendment? - Inconvenience of the Previous Examination Guidelines - Hypothetical Example (under the previous examination guidelines) (cont.): After amendment (Case 1: Where the caster is regarded as the "STF") Claim 3 (New Claim 1)Claim 1Claim 2 (armrest)(armrest + caster) (New Claim 2) (armrest + caster + leather cushion) (New Claim 3) "STF" = Caster (New Claim 4) * not examined (even if original Claim 3 is dependent from Claim 1) *not examined (because the caster is not recited) (caster) (armrest + rocking mechanism)

12. 12 2013.10 (AIPLA) Hypothetical Example (under the previous examination guidelines) (cont.): After amendment (Case 2: Where no "STF" is found in original Claims 1-3) Possibly Allowable amendments are: New Claim 1: An apparatus comprising: A, B, C and "α (= foldable legs)" and New Claim 1: An apparatus comprising: A, B, C and "β (= tall legs)" However, A+α (*1), A+β (in which B and C are not recited) are not allowable. A+B+α, A+B+β (*2) are also not allowable. (*1: plus α without B and C)(*2: plus β without C) Unallowable Amendment What is Prohibition of Shift Amendment? - Inconvenience of the Previous Examination Guidelines -

13. 13 2013.10 (AIPLA) Ratio of Notification Year when notices of reasons for rejection are issued (Source)JPO Website Special Committee for Examination Guidelines at the 8th meeting January 1, 2004 Article 37 of Japanese Patent Act is amended. The examination guidelines relating to "Unity of Invention" are revised. April 1, 2007 Prohibition of "Shift Amendment" is introduced. The examination guidelines relating to "Unity of Invention" are again revised. Impacts of the Revision relating to "Unity of Invention" More impacts especially on incoming applications which does not take advantage of multiple dependency?

14. 14 2013.10 (AIPLA) Impacts of the Revision relating to "Shift Amendment" (Source)JPO Website Special Committee for Examination Guidelines at the 8th meeting Number of Notification Year when second notices of reasons for rejection are issued In 2011, about 1% of all second notices of reasons for rejection includes the rejection of the "shift amendment."

15. 15 2013.10 (AIPLA) Revision of Examination Guidelines - Applicable Applications - 1.In principle, the revised examination guidelines are applied to the examination on or after July 1, 2013. 2.The provisions of the "shift amendment" are not applied to applications filed before March 31, 2007. 3.The revised examination guidelines are not applied to applications filed before December 31, 2003 as the provisions of the "unity of application" (provisions different from the "unity of invention") should be applied. Jan. 1, 2004April 1, 2007July 1, 2013 Unity of Application (under the different guidelines) Unity of Invention (under the "revised" guidelines) Shift amendment (under the "revised" guidelines) Filing Date:

16. 16 2013.10 (AIPLA) Revision of Examination Guidelines - Key Principle - Key principle of the revision of the Examination Guidelines (A) Revision of "Requirements of unity of invention" The subject of the examination was expanded from two perspectives: (1) the "special technical feature (STF)" and (2) the "examination efficiency." (B) Revision of "Amendment that changes a STF of an invention (Shift Amendment)" Based on the same concept as the revision of the Examination Guidelines for the "Requirements of unity of invention," the scope that "Shift Amendment" (the requirement in the Patent Act Article 17 bis (4)) does not apply was expanded.

17. 17 2013.10 (AIPLA) Revision of Examination Guidelines (A) Revision of "Requirements of Unity of Invention" The subject of the examination on the requirements (ex. patentability such as novelty and inventive step) except the requirements specified in Article 37 shall be decided by the following procedures (1) and (2). (1)The decision of the subject of the examination based on "Special Technical Feature (STF)" (2)The decision of the subject of the examination based on "Examination Efficiency"

18. 18 2013.10 (AIPLA) Revision of Examination Guidelines (A) Revision of "Requirements of Unity of Invention" (1)Subject of the examination based on "Special Technical Feature (STF)" a) Claims subject to determination of the STF: a-1) an "invention first mentioned" (= claim 1) in the scope of claims; and a-2) an "invention of the first series(*)" in claims belong to the same category and include all matters specifying the "invention first mentioned" b) Claims subject to examination: b-1) the invention (≈ claims) for which whether there is any STF has been determined before the STF was found" and b-2) the invention (≈ claims) having the same or corresponding STF that was found first"

19. 19 2013.10 (AIPLA) Revision of Examination Guidelines (A) Revision of "Requirements of Unity of Invention" (1)Subject of the examination based on "Special Technical Feature (STF)" (cont.) Meaning of the term "invention of the first series(*)" Claim 1: An apparatus. Claim 2: The apparatus of claim 1, wherein... Claim 3: The apparatus of claim 1 or 2, wherein... Claim 4: The apparatus of any one of claims 1 to 3, wherein... Claim 5: The apparatus of claim 1, wherein... Claim 6: A method.

20. Tree Diagram Note: The order of the original claims (before examination) may matter! 20 2013.10 (AIPLA) Revision of Examination Guidelines (A) Revision of "Requirements of Unity of Invention" (1)Subject of the examination based on "Special Technical Feature (STF)" (cont.) Meaning of the term "invention of the first series(*)" (cont.) Claim 5 Different series due to the different category Claim1 Claim 2Claim 3-2Claim 4-3-2 Claim 4-2 Claim 3-1Claim 4-3-1 Claim 4-1 Claim 6 The "inventions of the first series": Examiners check only this line of dependency to determine whether the claims (shaded) before examination contain an STF "Line of dependency": Line of claims containing matters identifying the invention for the directly preceding claim (Apparatus) (Method)

21. 21 2013.10 (AIPLA) Revision of Examination Guidelines (A) Revision of "Requirements of Unity of Invention" (2)Subject of the examination based on "Examination Efficiency" If it is efficient to examine a claimed invention "B" together with the claimed invention "A" that has become the subject of the examination in (1) (which is previously mentioned), then the claimed invention "B" will be added to the subject of the examination. For example, the inventions described the following (a) and (b) will be added to the subject of the examination as the claimed invention that can be efficiently examined together.

22. 22 2013.10 (AIPLA) Revision of Examination Guidelines (A) Revision of "Requirements of Unity of Invention" (2)Subject of the examination based on "Examination Efficiency" (cont.) (a) Claimed invention "B" (ex. Claim 5) belongs to the same category and includes all matters specifying the clamed invention first mentioned (= Claim 1) in the scope of claims. However, the claimed invention "B" shall be excluded if: (i) the "specific problem to be solved" which is understood by technical features added to the claimed invention "B" (ex. Claim 5) has little relevance to the "problem to be solved by the invention" first mentioned (= Claim 1) in the scope of claims, or (ii) the "technical feature" added to the claimed invention "B" (ex. Claim 5) has low technical relevance to the technical feature of the invention first mentioned (= Claim 1) in the scope of claims.

23. Revision of Examination Guidelines (A) Revision of "Requirements of Unity of Invention" (2)Subject of the examination based on "Examination Efficiency" (cont.) Hypothetical Example for (2)(a)(i): Claim 1: A chair comprising casters. = The "problem to be solved by the invention" is easiness for moving the chair (and the casters are not the "STF"). Claim 5: A chair of Claim 1 further comprising armrests. = The "specific problem to be solved" is easiness for putting arms. Excluded from the examination due to little relevance to the "problem to be solved by the invention" of Claim 1

24. Revision of Examination Guidelines (A) Revision of "Requirements of Unity of Invention" (2)Subject of the examination based on "Examination Efficiency" (cont.) Hypothetical Example for (2)(a)(ii): Claim 1: A chair comprising casters. = The "technical feature" is an element for moving the chair (and the casters are not the "STF"). Claim 5: A chair of Claim 1 further comprising tall legs. = The "additional technical feature" is an element for providing a view from a higher position. Excluded from the examination due to low technical relevance to the technical feature of Claim 1

25. 25 2013.10 (AIPLA) Revision of Examination Guidelines (A) Revision of "Requirements of Unity of Invention" (2)Subject of the examination based on "Examination Efficiency" (cont.) (b) Claimed invention that can be examined without a substantive additional prior art search etc. as a result of the examination for the claimed invention in accordance with "(1) Subject of the examination based on STF".

26. Revision of Examination Guidelines (A) Revised "Requirements of Unity of Invention" (2)Subject of the examination based on "Examination Efficiency" (cont.) Hypothetical Example for (2)(b): Claim 3Claim 1Claim 2 (armrest)(armrest + caster) Claim 4-5 (armrest + caster + leather cushion etc.) Claim 6 * Claim 6 will be examined because the prior art search has been conducted for the examination of Claims 3-5 (caster)

27. 27 2013.10 (AIPLA) No STF An STF is found in "C" Claim 1Claim 2Claim 3 Claim 4 Claim 5 Claim 6 Claim 7Claim 8 Claim 9 Claim 10 Claim 11 Claimed invention having identical STF (C) Claimed invention having corresponding STF (C’) Claimed invention dependent from Claim 1 Z has little relevance to Claim 1 Inventions newly subject to examination based on the "STF" under the revised examination guidelines Inventions newly subject to examination based on “efficient examination” under the revised examination guidelines Inventions subject to examination under the old examination guidelines (No change by this revision) Generic Example: where an STF is found in "C" of Claim 3 Revision of Examination Guidelines (A) Revision of "Requirements of Unity of Invention"

28. 28 2013.10 (AIPLA) Revision of Examination Guidelines (B) Revision of "Shift Amendment" (1) If the claimed invention after the amendment (i.e. new claims after the amendment) would become a subject of the examination in accordance with the Examination Guidelines for the revised "Requirements of unity of invention," assuming that the new claims (the claims after the amendment) would be described in a row of the original claims (the claims before the amendment) for examination, (2) then the requirements under the Patent Act Article 17 bis (4), "Shift Amendment," does not apply to claimed inventions after the amendment (i.e. amended claims).

29. 29 2013.10 (AIPLA) Revision of Examination Guidelines (B) Revision of "Shift Amendment" Meaning of the phrase "assuming that the new claims (the claims after the amendment) would be described in a row of the original claims (the claims before the amendment) for examination" The new claims (1) to (6) would become a subject of the examination if they satisfy the revised "Requirements of unity of invention" as discussed before.

30. 30 2013.10 (AIPLA) Hypothetical Example (under revised examination guidelines): Before amendment (Original Claims 1-3) Claim 1: An apparatus comprising A * A (= leg) includes NO STF. Claim 2: The apparatus of claim 1, further comprising B * B (= armrest) includes NO STF. Claim 3: The apparatus of claim 1 or 2, further comprising C * Whether or not an STF is found C (= caster)... (See Cases 1 and 2) Claim 1Claim 2Claim 3 Revision of Examination Guidelines (B) Revision of "Shift Amendment"

31. 31 2013.10 (AIPLA) Hypothetical Example (under the revised examination guidelines) (cont.): After amendment (Case 1: Where the caster is regarded as the "STF") Claim 3 (New Claim 1)Claim 1Claim 2 (armrest)(armrest + caster) (New Claim 2) (armrest + caster + leather cushion) (New Claim 3) "STF" = Caster (New Claim 4) * subject to examination without reciting the armrest *not examined in view of the revised "requirements of unity of invention" (caster) (armrest + rocking mechanism) Revision of Examination Guidelines (B) Revision of "Shift Amendment"

32. 32 2013.10 (AIPLA) Hypothetical Example (under the revised examination guidelines) (cont.): After amendment (Case 2: Where no "STF" is found in original Claims 1-3) If either of "(A)(1): STF" or "(A)(2): examination efficiency" is satisfied, "Possibly" allowable amendments are: New Claim 1 (*1): An apparatus comprising: A and "α (= foldable legs)" and New Claim 1 (*2): An apparatus comprising: A, B and "β (= tall legs)" Also, A+α, A+β (in which B and C are not recited) may be possibly allowable. A+B+α, A+B+β may be possibly allowable. (*1: plus α without B and C)(*2: plus β without C) Possibly allowable Revision of Examination Guidelines (B) Revision of "Shift Amendment" Realistic? ? ?

33. Original Claim 1 Original Claim 2 New Claim 1 (Original Claim 3) New Claim 2 (Original Claim 4) New Claim 3New Claim 4 New Claim 5New Claim 6 New Claim 7 New Claim 8 New Claim 9 Invention having an identical STF (C) Z has little relevance to claim 1 Newly regarded as no shift amendment (Inventions subject to examination under the revised examination guidelines relating to determination based on the "STF") Invention dependent on claim 1 before amendment Newly regarded as no shift amendment (Inventions subject to examination under the revised examination guidelines relating to determination based on “efficient examination”) Continuously regarded as no shift amendment (Claims subject to examination under the old examination guidelines and no change by this revision) No STF An STF is found in "C" Invention having an corresponding STF (C ʹ ) 33 2013.10 (AIPLA) Revision of Examination Guidelines (B) Revised "Shift Amendment" Generic Example: where an STF is found in "C" of Claim 3

34. 34 2013.10 (AIPLA) Try to include a Special Technical Feature (STF) in the original claims (most preferably, Claim 1) of the "invention of the first series." Advantages to have an STF in the original claims of the "invention of the first series" =The claims subject to examination will be broadened as follows: (The same will be applied to the amended claims subject to examination in term of shift amendment) (1)If a new claim includes an STF that is identical or corresponds to the STF of the original claim in the "invention of the first series," the new claim is not required to recite the other matters (claim limitations) of the original claim in which the STF is found. (2)An STF of a claim that can be subject to examination does not have to be identical to the STF found in a claim in the "invention of the first series" as long as both claims having a corresponding relationship (ex. common problem to be solved, etc.). (3)The category of a new claim (product, method, production method) does not have to be the same as the category of the original claim in which the STF is found. (4)An additional claim reciting an additional feature, which is only weakly related in terms of the technical field or the problem to be solved, may not be excluded from the subject of examination as long as the STF is identical or corresponds to the STF found in the original claim. Practice Tips

35. 35 2013.10 (AIPLA) Further Information JPO Website (in English) Revision of Examination Guidelines for the "Requirements of Unity of Invention" and the "Amendment that Changes a Special Technical Feature of an Invention" (July 1, 2013) http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/revision201307.htm Examination Guidelines for Patent and Utility Model in Japan http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/1312-002_e.htm http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/revision201307.htm http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/1312-002_e.htm (in Japanese) Reference Materials: Special Committee for Examination Guidelines (8th and 9th meetings: ) http://www.jpo.go.jp/shiryou/toushin/shingikai/shinsakijyun_menu.htm http://www.jpo.go.jp/shiryou/toushin/shingikai/shinsakijyun_menu.htm Note:In this presentation, the translations provided by the JPO in the above web pages are modified for the purpose of explanation

36. 36 2013.10 (AIPLA) Kazuhiro Yamaguchi SOEI PATENT AND LAW FIRM Marunouchi MY PLAZA 9th fl. 1-1, Marunouchi 2-chome, Chiyoda-ku, Tokyo 100-0005 JAPAN www.soei.com yamaguchi-k@soei-patent.co.jp THANK YOU