Status of Applications filed after Restriction on Multi-Multi Claims
Toshihiro IGARI

As we previously reported on June 13, 2022, a restriction on multi-multi claims has come into effect for applications filed on or after April 1, 2022 (see our previous article: https://www.aiklaw.co.jp/en/whatsnewip/2022/06/13/3572/).

On April 28, 2023, the JPO updated the status of Japanese patent applications filed after commencement of the restriction on multi-multi claims.  The percentages of Japanese patent applications containing multi-multi claims were as follows:

Percentages of Japanese Patent Applications Containing Multi-Multi Claims

filed in April 2022:          6.0%

filed in May, 2022:          4.5%

filed in February 2023:     2.9% (updated)

filed in March 2023:         3.1% (updated)

As can be seen from the above results, a trend toward avoiding multi-multi claims in Japanese Patent Applications is apparent.

However, Japanese PCT national phase applications filed on or after April 1, 2022 may still contain multi-multi claims.  Therefore, it is recommended to submit a voluntary amendment when filing a request for examination to eliminate multi-multi claims from such applications.

Please note that if an application contains a multi-multi claim, the Examiner will notify the reason for rejection based on Article 36, Paragraph 6 (iv) (Ministerial Ordinance) with respect to the multi-multi claim format in the 1st Office Action; and the patentability of the multi-multi claim will not be examined, and the 2nd Office Action can be a final one where the scope and extent of allowable amendment will be limited to narrowing the scope of the claimed invention without introducing a new issue, which is unfavorable for the applicant.

https://www.jpo.go.jp/e/system/patent/shinsa/multimulticlaims.html