Closed Meeting between AIPLA (American Intellectual Property Law Association) and JPAA (Japanese Patent Attorneys Association), 2012 April 17

1. Japan Position on Unity of Invention
and Examination Practice
Closed Meeting between AIPLA and JPAA
April 17, 2012
Koji Hirayama
JPAA International Activities Center
HEIWA INTERNATIONAL PATENT

2. Contents
1. Unity of Invention
• JP Laws for Unity of Invention
• STF Assessing Procedures
• Example – Order of STF Assessment
2. Shift amendment
• What is Shift amendment?
• Examination practice
3. Summary
• Problems
• Practical Tips
• Conclusive Message
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3. JP Laws for Unity of Invention
[Applicable to applications filed on or after January 1, 2004]
• 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…”
• Patent Law Enforcement Order Art. 25octies
“[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
feature (“STF”)…”
“[STF] stands for a technical feature defining a contribution made by an
invention over the prior art.”
• Almost the same as PCT Rules 13.1 and 13.2
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4. STF Assessing Procedures
[Examination Guidelines, Part I, Chapter II]
• Test 1: Whether claim 1 involves STF?
• If claim 1 lacks novelty, neither contribution nor STF is found; all
claims do not meet unity of invention
• If claim 1 involves novelty, a contribution is found over the prior art;
STF is found
• Test 2: Whether subsequent claims involve “the same or
corresponding” STF?
• If the same or corresponding STF exists, unity of invention is met
• If any claim does not involve the same or corresponding STF, such a
claim does not meet unity of invention
• Unity of Invention (non-substantial requirements)
is examined together with substantive
requirements for patentability (“novelty”)
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5. Example – Order of STF Assessment
• Small-numbered claim having all features of the previous
claim is to be assessed first
Claim 1 Claim 2 Claim 3 Claim 7 Claim 9
(a)
Claim 8
(b)
Claim 6 Claim 4
Claim 5
• No STF in Claim 1 (lacking novelty)
• No STF in Claim 2 (lacking novelty)
• STF is found in Claim 3 (involving novelty)
• When STF is found, (a) “claims assessed so far” and
(b) “claims having STF” will be subjected to
substantive examination
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6. What is Shift amendment?
[Applicable to applications filed on or after April 1, 2007]
In response
Before amendment to OA After amendment
Claims Claims
1. High-sensitive antenna 1. Hinge structure of flip phone
Specification Specification
High-sensitive antenna High-sensitive antenna
Hinge structure of flip phone Hinge structure of flip phone
• JPO incorporated the concept of “unity of invention” into the
requirements for amending claims
• Amendment of claims which shifts the claimed inventions,
where the claimed inventions before and after the amendment
do not meet “unity of invention” [see Patent Law Art.
17bis(4)]
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7. What is Shift amendment? (cont’d)
[Examination Guidelines, Part III, Chapter II]
• Test: Whether the same or corresponding STF exists
between (a) “all of the inventions before amendment whose
patentability has been examined” and (b) “all of the
inventions after amendment”?
• Shift amendment is prohibited only for claims and in
response to a Notification of Reason for Rejection
• No prohibition when the specification/drawing is amended
(without amending claims)
• No prohibition unless any Notification of Reason for Rejection is
issued
• Shift amendment can be made, for example, at the time of
requesting examination
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8. Examination Practice – Example 1
In response
Before amendment to OA After amendment
Claim 1 Claim 2 Claim 3 Claim 1’ Claim 3’
“Basis” Claim 2’ Claim 4’
Claim 5’
• No STF in Claims 1 and 2 (lacking novelty)
• STF is found in Claim 3 (involving novelty) – “Basis” for amendment
• Claims after amendment should have all features of Claim 3
• Claims 1’ to 4’ having STF are examined
• Claims 5’ having no STF is not examined
• Claimed invention introduced by shift amendment will not
be examined
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9. Examination Practice – Example 2
In response
Before amendment to OA After amendment
Claim 1 Claim 2 Claim 3 Claim 1’ Claim 2’
“Basis” Claim 3’
Claim 4’
• No STF in Claims 1 to 3 (lacking novelty)
• Claims after amendment should have the same or corresponding STF
• STF is found in Claim 1’ (involving novelty)
• Claims 1’ to 3’ having STF are examined
• Claim 4’ having no STF is not examined
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10. Examination Practice
• Shift Amendment in response to a non-final Notification of
Reason for Rejection
• Notification of Reason for Rejection will be issued and
made final
• Shift Amendment in response to a final Notification of Reason
for Rejection
• Shift amendment will be dismissed and Decision of
rejection will be issued
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11. Problems
• Not all of the claims are examined although examination
fees are required for all claims
• The applicant cannot choose claims to be examined
• Examiner’s discretion may significantly effect on the
outcome of examination
• Rejections on “unity of invention” and “shift amendment”
might never be disputed before appeal or lawsuit
• No way to correct improper examination??
• Unnecessary/unwanted features should be included in
amended claims to avoid a shift amendment rejection
• Procedural costs and expenses are incurred for filing a
divisional application
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12. Practical Tips
• It’s about time when shift amendment rejection comes out!!
(April 1, 2007 + 3yrs for requesting examination + 28.7mos of ave. TFOA )
• Claim 1 should not be too broad
• Avoid a “unity of invention” rejection by securing novelty
• Prior art search becomes important
• Important claims should be small-numbered
• Claim(s) with a smaller number is more likely to be examined
• Divisional application is available to resolve “unity of
invention” and “shift amendment” rejections
• Interview with examiner may be useful
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13. Conclusive Message
“JPAA would like AIPLA to work together for leading
JPO to implement more useful and user-friendly IP system”
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14. Thank you for your attention !
Koji Hirayama
HEIWA INTERNATIONAL PATENT OFFICE
k-hira@heiwa-pat.com
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