jpo’s examination practice for unity of invention and shift amendment

JPO’s Examination Practice for Unity of Invention and

Shift Amendment

JPAA International Activities CenterShigeki Yamakawa, Ph.D.

January 29, 2013

AIPLA Mid-Winter InstituteIP Practice in Japan Committee Pre-Meeting Seminar

- 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

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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…”

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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!

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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.

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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

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Claim 1A

Claim 2A+B

Claim 3A+B+C

Claim 4A+B+C+D

Claim 6A+C

Claim 8A+E

Claim 7A+C+E

Claim 5A+B+C+E

Feature “A” is a STF

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 all the features recited in the claim in which STF is first foundwhich STF is first found.

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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.

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(ii) Claims having all the features recited in the Claim 3, where STF is found.

Claim 1A

Claim 2A+B

Claim 3A+B+C

Claim 4A+B+C+D

Claim 6A+C

Claim 8A+E

Claim 7A+C+E

Claim 5A+B+C+E

(i) First series of claims originating from Claim 1

No STF No STF STF “C”

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.

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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.”

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Current Examination Practice on Shift Amendment

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(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.


◆ 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.

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(ii) Claims having all the features recited in the Claim 3, where STF is found.

Claim 1A

Claim 2A+B

Claim 3A+B+C

Claim 4A+B+C+D

Claim 6A+C

Claim 8A+E

Claim 7A+C+E

Claim 5A+B+C+E

Claim 1’A+B+C+F

Claim 2’A+B+C+D+F

Claim 3’A+B+C+D+E+F

Claim 4’ Claim 5’

Claim 6’


(i) First series of claims originating from Claim 1

Statistic (1)

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Year of first office actions

Per

cent

age

of n

umbe

r of

OA

no

tifyi

ng U

nity

Req

uire

men

ts in

to

tal n

umbe

r of

OA

April 1, 2007•Shift amendment is prohibited•Revision of Exam. Guidelines

April 1, 2004•Art 37 was revised.

5 points increase

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)

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Year of 2nd OA

Num

ber

of O

A n

otify

ing

Shi

ft A

men

dmen

t

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

Approx. 1 %

of 2nd OA

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.

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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.

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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

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• 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”

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(1) 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.

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(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.

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Claim 1 Claim 2 Claim 3 Claim 4

Claim 5

(1) Claims with the same feature C(currently examined)A A+B A+B+C A+B+C+D

Claim 6

A+C A+C+E

Claim 7 Claim 8

A+C’ A+C’+F

Claim 9

A+E

Claim 10

A+G

Claim 11

A+Z

(1) Claims with the same feature “C”

(1) Claims with feature C’ corresponding to feature “C”

(2) Claims depending on Claim 1

(2) Exception: Claim 11 that has little relation to Claim 1


First series of claims originating from Claim 1


• 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.

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Orig. Claim 1A

Orig. Claim 2A+B

Orig. Claim 3New Claim 1’

New Claim 2’

New Claim 3’ New Claim 4’

A+C A+C+E

New Claim 5’ New Claim 6’

A+C’ A+C’+F

New Claim 7’

A+E

New Claim 8’

A+G

New Claim 9’

A+Z

No STF No STF STF “C” (1) Claims with the same feature C (currently examined)

(1) Claims with the same feature “C”

(1) Claims with the corresponding feature “C”

New Claim 1

A+B+C A+B+C+D

(2) Exception: Claim 9’ that has little relation to Orig. Claim 1

First series of claims originating from Claim 1

(2) Claims depending on Orig. Claim 1

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).

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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

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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.

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Shigeki YAMAKAWAYAMAKAWA International Patent Office

4th Floor, Sanno Park Tower 11-1, Nagatacho 2-Chome, Chiyoda-Ku

Tokyo 100-6104, [email protected]

THANK YOU FOR YOUR ATTENTION

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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

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