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Shift amendments & unity – revisions to the examination guidelines in Japan


30th Aug 2013

Following a public consultation, as of 1st July 2013 the Japan Patent Office has revised the Patent and Utility Model Examination Guidelines in relation to the “Requirements of Unity of Invention” and the “Amendment that Changes a Special Technical Feature of an Invention”. The revised Examination Guidelines for “Requirements of Unity of Invention” (the Unity Guidelines) apply to applications filed on or after 1st January 2004. The revised Examination Guidelines for the “Amendment that Changes a Special Technical Feature of an Invention” (the Amendment Guidelines) apply to applications with a filing date on or after 1st April 2007.

The revised Unity Guidelines expand the scope of inventions to be examined in cases where the claims do not meet the criteria for unity of invention. In order to satisfy the requirement of unity of invention, the inventions recited in the claims of a Japanese application must have an identical or corresponding special technical feature (STF). An STF is a technical feature which expresses the contribution of an invention over the prior art; technical features that exist in the prior art are not deemed to be STFs.

When making an amendment in response to an Office Action in Japan, the inventions recited in the claims prior to amendment, i.e. the inventions examined for patentability in the Office Action, and the inventions recited in the claims as amended must satisfy the requirement of unity of invention. An amendment that changes the STF of the inventions and so does not satisfy this requirement is deemed a “shift amendment” and is prohibited.

The revised Amendment Guidelines have relaxed the criteria used to determine whether an amendment made in response to an Office Action is a “shift amendment”. In particular, prior to revision of the Examination Guidelines in relation to “Amendment that Changes a Special Technical Feature of an Invention”, where an invention with an STF existed in the claims prior to amendment, the invention recited in the claims after amendment had to include all of the features of the invention having the STF.

Following the revision of the Amendment Guidelines, if an invention with an STF exists in the claims prior to amendment, the invention recited in the claims after amendment need only have a feature identical or corresponding to the STF; it is no longer necessary for all of the features of the invention having the STF be included.

Further information concerning the revisions to the Patent and Utility Model Examination Guidelines is available on the Japanese Patent Office website here.

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.

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Julie Millburn
Partner
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