4

Amendment that Changes a Special Technical Feature ofan Invention and Requirements of Unity of Invention(*)

The Act for Partial Revision of the Design Act, etc. was put into force on April 1, 2007. Thereby, Article
17-2(4) of the Patent Act has come to prohibit applicants from making an amendment that changes theinvention mentioned in the claims which has been examined into an invention that technically differs from said
invention after receiving a notice of reasons for refusal.
In addition, the Examination Guidelines for Patent and Utility Model were revised in March 2007 in orderto respond to the revised Act of 2006.
However, users point out that the practice concerning "amendment that changes a special technical featureof an invention" and the "requirements of unity of invention" is excessively rigid. In addition, there are requests
for consideration of revision of the Examination Guidelines from the perspective of international
harmonization.
Given this factor, we conducted this study with the aim of preparing basic materials to be used inconsidering revision of the Examination Guidelines concerning amendment that changes a special technicalfeature of an invention and the requirements of unity of invention as well as the practice thereof by studying andanalyzing the past practice of the Examination Guidelines concerning "amendment that changes a special
technical feature of an invention" and the "requirements of unity of invention," and similar examination
standards and the practice thereof in major countries.

I

Purpose of This Study

With regard to an "amendment that changes aspecial technical feature of an invention," theExamination Guidelines state as follows: "If theinvention first mentioned in the claims before anamendment does not have any special technicalfeature, no same or corresponding special
technical feature can be found between said
invention and an invention after the amendment.
Therefore, it cannot be said that the requirementsof unity of invention are met in the relationships
between all of the inventions that were examinedin terms of the requirements for patentability,
such as novelty and inventive step, in the claims
before the amendment and all of the inventions in
the claims after the amendment." In this regard,
users point out that such practice is far from thelegislative purpose of Article 17-2(4) of thePatent Act and is excessively rigid. In addition,
there are requests for revision of the Examination
Guidelines from the perspective of international
harmonization of amendment systems.
Moreover, with regard to the practice of the"requirements of unity of invention," it has been
pointed out that if the invention first mentioned
in the claims does not have any special technicalfeature, severer determination is made based on
the practice in Japan compared to the practice inEurope, etc. and inventions subject toexamination are very limited.
Given this factor, we conducted this study
with the aim of preparing basic materials to beused in considering revision of the Examination
Guidelines concerning amendment that changes a
special technical feature of an invention and therequirements of unity of invention as well as thepractice thereof by studying and analyzing thepast practice of the Examination Guidelines
concerning "amendment that changes a special
technical feature of an invention" and the"requirements of unity of invention," and similar
examination standards and the practice thereof inmajor countries.

(*) This is an English translation of the summary of the FY2011 JPO-commissioned research study report on the issues
related to the industrial property rights system.
●IIP Bulletin 2012 Vol.211 ●Ⅱ System in Japan1

Examination on the requirements of unity of invention

Examination on the requirements of unity of invention (a posteriori)(a)Yes

Does the invention firstmentioned have an STF?

Examination is conducted on other inventions withan STF that is the same as or that corresponds
to the STF of the invention mentioned in claim 1 as
those inventions fulfill the requirements of unity ofinvention.
Examination Guidelines 3.1 Basic Examples
Examination Guidelines 3.1.1 Equivalent Special
Technical Feature
Examination Guidelines 3.1.2 Corresponding Special
Technical Feature
Examination Guidelines 3.2 Examples with a SpecificRelation

Exceptionally, examination is conducted on the scope that forms
the first serial dependent sequence, without questioning the unityof invention.
An invention that includes all matters specifying the invention in
the claim for which the existence of an STF has already beenassessed and is in the same category and to which the smallest
claim number is given is the invention for which the existence of an
STF is to be assessed next.

Is the invention for which the existenceof an STF is to be assessed next aninvention that was made by adding atechnical feature that has little technicalrelationship, and does the problem to besolved by the invention also have little
relevance?

NoYes

No (b)

Has an invention with an STF beenfound?/Have all inventions been
examined?

No

Inventions for which the existence of an STF has beenassessed until then and inventions in the same category that
include all matters specifying the invention with an STF are
made "subject to examination."

Other inventions for which
examination has substantively been
completed as a result of theexamination of an invention "subject toexamination" are also added to thesubject-matter of examination.

Yes

Inventions for which the existence of anSTF has been assessed until then are
made "subject to examination."

Make sure that the requirements of unity of invention are notapplied in an unnecessarily strict manner to other inventions forwhich examination has substantively been completed andinventions for which it is not easy to determine whether therequirements of unity of invention are fulfilled in relation with theinvention mentioned in claim 1.

●2 ●IIP Bulletin 2012 Vol.21

2

Examination concerning the requirements for an amendment that changes a special
technical feature
Examination concerning the requirements for a shift amendment

Yes
(a)

Does claim 1 before theamendment have an STF?

(b)-1(b)-2

No
Yes

Does the invention after
the amendment have an
STF that is the same asor that corresponds to
the STF of the invention
claimed in claim 1 beforethe amendment?

Is an STF found in the scopethat forms the first serial
dependent sequence before
the amendment?

No

Yes

Yes

Does the invention after theamendment have all mattersspecifying the invention claimed
in the claim in which the STF wasfound before the amendment?

No

Does the invention after theamendment include all mattersspecifying the invention
claimed in the claim before theamendment for which theexistence of an STF has beenassessed last?

NoNoAn invention that includes all matters specifying the invention inthe claim for which the existence of an STF has been assessed
last and is in the same category and to which the smallest claim
number is given is the invention for which the existence of anSTF is to be assessed next.

Violation of the requirements
for a shift amendment

Other inventions with anSTF that is the same as orthat corresponds to the STFof the invention mentioned inclaim 1 are made subject toexamination as they fulfill therequirements of unity ofinvention.
Examination Guidelines 3.1
Basic Examples

Is the invention for which theexistence of an STF is to be assessed
next an invention that was made byadding a technical feature that has
little technical relationship, and does
the problem to be solved by theinvention also have little relevance?

NoYes

Has an invention with an STF
been found?/ Have all
inventions been examined?

Inventions for which the existence of an STF has beenassessed until then and inventions in the same categorythat include all matters specifying the invention with an
STF are made "subject to examination."

Other inventions for which examination has
substantively been completed as a result of theexamination of an invention "subject toexamination" are also added to the subject-matterof examination.

NoInventions for which the existence of an STF has beenassessed until then are made "subject to examination."

Make sure that the requirements of unity of invention are not applied in an
unnecessarily strict manner to other inventions for which examination has
substantively been completed and inventions for which it is not easy to determine
whether the requirements of unity of invention are fulfilled in relation with theinvention mentioned in claim 1.

●IIP Bulletin 2012 Vol.21

Yes

3 ●YesⅢ Results of the Domestic UserSurvey
1

Method of conducting the domestic
user survey(1) Selection of survey targets
Domestic questionnaire survey
We received answers from 138 respondents
in total, comprising 77 applicants (chemical,material, and medicine manufacturing/machinery/electricequipment
andtelecommunications/other) and 61 patent firms.
The response rate was 68%.
Domestic interview survey
We selected 14 applicants and 16 patentfirms from among the respondents of thequestionnaire survey and conducted interviews
with them.
(2) Content of the survey
Domestic questionnaire survey
The outline of the questionnaire survey is asfollows.
・ Devices made at the time of filingcorresponding to the requirements of unity ofinvention and the requirements for a shiftamendment
・ Changes in the tendency toward divisional
applications, etc. corresponding to therequirements of unity of invention and therequirements for a shift amendment
・ Examination concerning the requirements ofunity of invention and the requirements for ashift amendment
・ Examination Guidelines concerning therequirements of unity of invention and therequirements for a shift amendment
・ International harmonization of examination
practice concerning the requirements of unityof invention and the requirements for a shiftamendment
・ Fee opinions concerning the requirements ofunity of invention and the requirements for ashift amendment, and so on
Domestic interview survey
The interview survey was conducted fromthe following perspectives.
・ Examination
practice
concerning
therequirements of unity of invention in cases
where the invention claimed in claim 1 does nothave any STF
・ Examination practice concerning shift●amendment in cases where the invention
claimed in claim 1 before the amendment does
not have any STF
・ Assessment concerning STF
・ Examination
practice
concerning
therequirements of unity of invention and shiftamendment in consideration of applicants'
benefits and examiners' burden・ Responses made by overseas applicants(3) Results of the domestic questionnaire
survey(i) Regarding the requirements of unity ofinvention
73% and 74% of all respondents answered thatthey were "dissatisfied with" examination practiceand the Examination Guidelines, respectively.
Comparingreasons
forwhichtherespondents are dissatisfied with examination
practice and the Examination Guidelines, mostrespondents
answeredthat
theywere"dissatisfied with" them for the reason that "thescope subject to examination is narrow in cases
where claim 1 has been found to lack novelty" andthat "the scope subject to examination is narrowin cases where the invention first mentioned in
the claims does not have any special technicalfeature," accounting for 90% and 89% of all
dissatisfied respondents, respectively.
(ii) Regarding the requirements for a shiftamendment
63% and 75% of all respondents answered thatthey were "dissatisfied with" examination practiceand the Examination Guidelines, respectively.
Comparingreasonsfor
which
therespondents are dissatisfied with examination
practice and the Examination Guidelines, mostrespondents
answeredthat
theywere"dissatisfied with" them for the reason that "theconditions for an amendment are excessively
strict in cases where the invention in claim 1
before the amendment has been found to lacknovelty" and that "the scope that becomes subject
to examination without questioning therequirement set forth in Article 17-2(4) is narrowin cases where the invention first mentioned in
the claims before the amendment does not haveany special technical feature," accounting for 96%
and 85% of all dissatisfied respondents,respectively.
(iii) Regarding international harmonization
Although 24% of all respondents answeredthat the requirements of unity of invention were

4 ●IIP Bulletin 2012 Vol.21

in harmony with the examination practice of othercountries, 48% thereof answered that therequirements were severer compared to theexamination practice of other countries. In
addition, regarding the requirements for a shiftamendment, 63% of all respondents answeredthat the requirements were severer compared tothe examination practice of other countries.
(4) Freeanswers
inthe
domesticquestionnaire survey and the results of
the interview survey(i) Regarding the entire system
There are many opinions that point out
problems with the entire system.
Problems have been pointed out from theperspective of protection of rights, burden ofconsideration, international harmonization, etc.
Although there are opinions that value thepoint that the current practice has brought aboutcertain effect, such positive opinions are only afew.
With regard to the future direction, there are
significant requests for relaxation from theperspective of the purpose of the system, thecurrent status of filing in Japan, international
harmonization, etc. Flexible practice is desired.

an STF before the amendment or an invention in
the same category that includes all mattersspecifying the invention before the amendment
for which the existence of an STF has beenassessed last.
There are great many requests for relaxationof the requirements for an amendment based on
an invention "in the same category that includes
all matters specifying the invention." Such
requests were especially numerous in freeanswers in the questionnaire survey and in theinterview survey.

(ii) Unity
・ Examination when the invention firstmentioned in the claims does not have anySTF
Under the current practice, when theinvention first mentioned in the claims does nothave any STF, it is construed that lack of unity
occurs in relation with other inventions, andexceptionally, the inventions in the first serial
dependent sequence are examined. Regarding
this examination, there were opinions pointing
out severity of the construction of lack of unity,
which is a premise of the examination, andrelevant practice.
(iii) Shift amendment
・ Examination when the invention firstmentioned in the claims does not have any
STF
An applicant can make an amendment only
based on an invention in the same category that
includes all matters specifying the invention with●IIP Bulletin 2012 Vol.21

5 ●Ⅳ Systems in Other Countries
1

Provisions of other countries(1) Requirement of unity
Requirements of unity
Provisions on "a single general inventive Provisions on the "same or corresponding
concept"
special technical feature"
Japan
Article 25-8 of the Ordinance
Article 25-8 of the Ordinance
PCT
Rule 13.1
Rule 13.2
EuropeArticle 82 of the Convention
Rule 44
China
Article 31 of the Patent Law
Rule 34 of the Implementing Regulations
South
Article 45 of the Patent Act
Article 6 of the Enforcement Ordinance
Korea
UnitedThe standard for requirement for restriction is inclusion of independent and distinct
Statesinventions in one application, and there are no laws or regulations that provide for asingle general inventive concept or the same or corresponding special technical feature.
Laws and regulations concerning requirement for restriction: Section 121 of the patentlaw and Sections 1.141 and 1.142 of the Patent Rules(2) Amendment that changes a special technical feature
Amendment that changes a special technical feature
Japan
Article 17-2(4) of the Patent Act
PCT－Europe
Rule 137(5)China
No provisions; there are operational guidelines
based on the examination standards.
SouthNo provisions
Korea
UnitedSection 1.145 of the Patent Rules
States2Comparison between practice in Japanand that in other countries(1) Examination concerning unity in cases
where the invention first mentioned in theclaims does not have any STF
In Japan, where the invention first mentioned inthe claims does not have any STF, it is understoodthat "it cannot be said that the requirement ofunity of invention is met," and "the requirement ofunity of invention will not be questioned
exceptionally for inventions that become thesubject of the examination through the followingprocedure" (hereinafter the procedure is referred
to as the "exceptional examination"). In the
exceptional examination, inventions in the first
serial dependent sequence and other inventions
for which examination has substantively been
completed as a result of examination of said

●inventions become subject to the examination.
In Europe, China, and South Korea,
fulfillment of the requirements of unity isexamined in terms of two or more inventions thatare in a parallel relationship (hereinafter referred
to as "parallel examination"), irrespective ofwhether the invention claimed in claim 1 has an
STF. For example, where there are two or more
independent claims, examination concerning unity
based on the same or corresponding STF is
conducted between those independent claims
while where two or more dependent claims
directly depend on an independent claim thatlacks novelty, such examination is conducted
between those dependent claims.
Where an independent claim does not haveany STF and it is necessary to examine its
dependent claims in terms of the requirementsfor patentability, including novelty, in both theexceptional and parallel examinations, the scope

6 ●IIP Bulletin 2012 Vol.21

of examination could be changed according to theextent of the inventive link among parallel andserial claims.
Given this factor, we consider the link among
two or more inventions in the exceptional
examination in Japan and the parallel examination
overseas.
In the exceptional examination in Japan, theserial examination of claim 1 and subsequentclaims is discontinued "where (the invention in aclaim for which the existence of a specialtechnical feature is to be assessed next) is aninvention that was made by adding a technicalfeature that has little technical relationship (to theinvention for which the existence of a special
technical feature has been just assessed), and thespecific problem to be solved by the invention,
which is understood from said technical feature,also has little relevance."
That is, where a claim that serially depends
on a claim falls under the aforementioned
conditions, this dependant claim may not become
subject to examination in some cases.
It cannot also be said that lack of unity is notat all pointed out among serial claims that are in adependent-depended relationship in Europe,
China, and South Korea. However, thesecountries adopt a practice in which a dependentclaim with novelty substitutes for an independentclaim, and even where a depended claim lacks
novelty, the procedure whereby a claim dependingon said depended claim substitutes for thedepended independent claim is repeated in series,
and the serial examination is continued inprinciple.
In the exceptional examination in Japan, theparallel examination covers "inventions in thesame category that include all matters specifying
the invention …" and "other inventions for which
examination has substantially been completed…."
The scope of examination is narrower than thescope based on the same or corresponding STF.
In the case of Europe, China, and South
Korea, the subject of said examination is based on
the same or corresponding STF in the samemanner as where an invention has an STF.
Therefore, the scope of the subject-matter of said
examination in Japan is highly likely to be
narrower than that in those countries.

questioning the requirement set forth in Article
17-2(4) are amendments based on an invention inthe same category that includes all mattersspecifying the invention with an STF before theamendment or an invention in the same categorythat includes all matters specifying the invention
before the amendment for which the existence ofan STF has been assessed last.
In Europe and China, amendments are notrequired to be "amendments based on aninvention in the same category that includes all
matters specifying the invention with an STF
before the amendment or an invention in thesame category that includes all matters specifying
the invention before the amendment for which
the existence of an STF has been assessed last."

Ⅴ Conclusion
1(1) Examination burden
Examination burden related to finding of an
STF is increasing under the present
circumstances.
(2) International harmonization
In particular, the practice in Japan is not in
harmony with the practice in other countries interms of cases where the invention firstmentioned in the claims does not have any STF.
At the same time, according to the userquestionnaire survey in Chapter II, only 15% of all
respondents answered that the examination
practice for shift amendment in Japan was inharmony with that in other countries (24%answered in this manner for the practice forunity).
In light of the aforementioned actual
conditions concerning the purpose of legal
revision and user opinions, we consider it
necessary to review the practice in considerationof the original purpose.
2

Examination concerning unity

The current examination practice in Japan isa cause of narrow scope of the subject-matter ofexamination. In addition, it can hardly be said tobe in harmony with the practice in other countries.
We consider it necessary to hold discussions tohave examination conducted based on the same orcorresponding STF even in cases where the(2) Amendment that changes a special
technical feature
Amendments which becomes subject to the
exceptional examination in Japanwithout●IIP Bulletin 2012 Vol.21

Regarding the entire system

7 ●invention first mentioned in the claims does nothave any STF, in conformity with the practice inother countries.
3

Examination concerning an amendmentthat changes a special technical feature

Under the current examination practice inJapan for the case where the invention firstmentioned in the claims before the amendment
does not have any special technical feature,amendments are required to be based on aninvention in the same category that includes all
matters specifying the invention with an STF
before the amendment or an invention in thesame category that includes all matters specifying
the invention before the amendment for which theexistence of an STF has been assessed last. Thisis a cause of the evaluation that restrictions onamendments in Japan are severe. In addition, thispractice can hardly be said to be in harmony withthe practice in other countries. We consider it
necessary to review the practice concerning"inventions in the same category that include all
matters specifying the invention…."
It is important to improve the practice in thefuture in consideration of applicants' benefits andexaminers' burden.
(Senior Researcher: Hidetake NISHIZAWA)●8 ●
IIP Bulletin 2012 Vol.21