Announcement: Revision of the Examination Guidelines related
to Multi-Multi Claims Restriction
As of April 1, 2022, “multi-multi claims” as they are called are no longer accepted in thepatent applications filed on or after given date. A multi-multi claim is a multiple dependentclaim that is dependent on at least one other multiple dependent claim.
•JP National Phase entry applications

The new rules on “multi-multi claim” restrictions apply to national phase entry applications withan international filing date of April 1, 2022 or later.
In matters meant for national phase entry, and where the new rule is to be applied, it isrecommended to make appropriate amendments eliminating the multiple-multiple
dependent relation in claims, after the entry into the national phase, but prior to or at
the time of requesting substantive examination. Since it is necessary to submit atranslation of the original claim set of the PCT application, the claim set cannot be modified in
the translation.
•Direct JP application with or without a priority claim under the Paris Convention

For applications claiming Paris Convention priority, determination will be made based on theactual filing date in Japan (not the priority date). In other words, this rule applies to all of thefuture applications.
It is recommended to modify the claims set at the time of filing so that the application
does not include multi-multi claims. Alternatively, after filing the application, amendments
may be submitted to eliminate the multiple-multiple dependent relationship.

Japanese Patent Office defines the purpose of this change in legal framework to be foremost
encouraging international harmonization, and to reduce the burden of examination workload.
All multi-multi dependent claims will be subject to rejection without exception, for lack of clarity
as a reason. Multi-multi claims are not to be examined in terms of requirements other than theministerial ordinance requirements on multi-multi claims. That is, for multi-multi claims, noexamination is performed in terms of other patent requirements, such as unity ofinvention, novelty, and inventive step.
A reason for rejection based on the multi-multi claims restrictions can be avoided by changing
a dependent claim so that it depends on a single claim. An invention that was excluded toresolve the multi-multi dependent claim can be claimed with an additional independent ordependent claim.
Since there are no restrictions on the total number of claims or the number of independentclaims in Japan, it is possible to significantly increase the number of claims as long as therequirements for the unity of invention are fulfilled.

Please see more details in the example:
Example Claim set:
Claim 1A device comprising __.
Claim 2The device according to claim 1, wherein __.
Claim 3The device according to claim 2, wherein __.
Claim 4The device according to any one of claims 1 to 3, wherein __.
Claim 5The device according to any one of claims 1 to 4, wherein __.
In this example claim 5 corresponds to a multi-multi claim. Claim 5 should be amended tosomething similar to “according to any one of claims 1 to 3” or “according to claim 4”.
However, although there is no restriction on the number of claims that could be filed, it isimportant to note that as the number of claims increases, the burden of examination fee andpatent fee increases. The reason behind this is that the examination fees and patent fees inJapan are determined by the number of claims to be examined, and number of claims to beregistered with the JPO.
The limitation on multi-multi claims also applies to utility models, and is added to the basic
requirements.
For more details regarding this matter, we recommend referring to the official site ofJPO at:
https://www.jpo.go.jp/e/system/laws/rule/guideline/patent/kaitei/rev_202204.html
If you have any additional questions, please do not hesitate to contact us.

Sincerely,

HIROE AND ASSOCIATES
patent professional corporation

SH/al