Practical Tips for Handling Multiple Dependent Claims in Japan
Introduction
Japan's patent system has specific restrictions regarding multiple dependent claims. Unlike the practice in the EPO where both multiple and multiple-multiple dependent claims are generally accepted, Japan prohibits multiple dependent claims that depend on other multiple dependent claims. This creates unique challenges for applicants entering the Japanese national phase from a PCT application.
Why It Matters for PCT Applicants
Many PCT applications are originally drafted with claim formats acceptable under USPTO or EPO practice. If these claim sets include multiple dependent claims that cross-reference other multiple dependent claims (i.e., "multi-multi" format), they will likely receive a rejection under Japanese practice (Article 36(6)(iv) of the Patent Act).
How to Detect Problematic Claims
Carefully examine claim dependencies during national phase entry. Japan considers the following formats compliant and non-compliant:
- Compliant Example: Claim 3 depends on any one of Claims 1 or 2.
- Non-Compliant Example (multi-multi): Claim 4 depends on Claim 2 or 3, and both Claims 2 and 3 are also multiple dependent claims. This structure is not acceptable in Japan.
Reference: See the JPO’s Multi-Multi Claim Checker Guide and our Japanese article here for further clarification.
Strategies to Address Compliance
- Rewriting Claims Before Entry: Amend claim sets at national phase entry by breaking multi-multi dependencies into independent singly dependent claims.
Example: Instead of "Claim 5 depends on Claims 2 or 3," rewrite as: "Claim 5 depends on Claim 2." and add a separate "Claim 6 depends on Claim 3." - Using Single Dependency: Even if a claim is intended to capture multiple embodiments, split it into multiple singly dependent claims to remain compliant.
Example: Replace one claim with two or three simpler claims that each depend only on a single earlier claim. - Divisional Filings: In cases where restructuring would reduce claim scope excessively, consider filing a divisional application to preserve subject matter breadth without violating formalities.
Timing and Formal Requirements
Claim amendments can be filed at the time of national entry. Japan allows early amendments, which are reviewed only after the examination request is submitted and taken up. A proactive amendment strategy can avoid delays and reduce communication(office action) rounds with the examiner.
Origami's Expert Support
Origami International Patent Firm supports smooth entry into the Japanese national phase, including expert assistance in amending complex claim sets, especially for issues like multiple dependencies. We aim to maximize compliance while minimizing the number of claims and costs.
FAQs
Q1. Are multiple dependent claims completely disallowed in Japan?
A1. No. They are allowed as long as they do not depend on other multiple dependent claims (i.e., no multi-multi dependency).
Q2. Is it necessary to amend before entering Japan?
A2. Not always. But early amendment helps avoid unnecessary office actions and delays.
Q3. How does JPO treat non-compliant multiple dependent claims?
A3. The examiner will issue a rejection under formal requirements. Amendments will be required.
Q4. Will amending claims affect the claim fee?
A4. Yes. Japan charges per claim. We help optimize your claims to stay cost-effective.
Contact Information
FYI: Competitive Fee Schedule
Compared to a typical Japanese patent firm, Origami International Patent Firm offers highly competitive and transparent pricing tailored to overseas applicants.
This means that applicants working with Origami can typically expect 50–70% total cost savings compared to conventional Japanese firms, without compromising on quality, responsiveness, or technical accuracy.
| Item For Patent Application | Typical Firm (Service Fee) | Origami Firm (Service Fee) |
|---|---|---|
|
PCT or Paris Extension into JP or Regular Filing in JP |
100,000 JPY |
All-inclusive price 43,000 JPY (about 300 USD) |
| Filing an amendment based on Art. 19 | 30,000 JPY | |
| Filing an amendment based on Art. 34 | 30,000 JPY | |
| Filing a voluntary amendment | 30,000 JPY | |
| Claiming priority to one or more prior applications | 10,000- JPY | |
| Filing a request for examination | 20,000 JPY |
15,000 JPY (about 100 USD) |
| PPH (excluding a request for examination) | 80,000 JPY |
60,000 JPY (about 400 USD) |
| Filing a priority certificate in the absense of DAS code (*1) | 20,000 JPY |
15,000 JPY (about 100 USD) |
| Translation of each procedural document (*2) | 40 JPY/EN Word | 30 JPY/EN Word |
| Response to an Office action (*3) | 200,000 or more JPY |
Workload A: 40,000 JPY (*4) Workload B: 80,000 JPY (*4) Workload C: 120,000 JPY (*4) Workload D: 160,000 JPY (*4) Workload E: 180,000- JPY (*4) |
| Filing a Divisional Application | 80,000 JPY |
60,000 JPY (about 400 USD) |
| Reporting a notice of allowance and paying the registration fee (1st to 3rd year in lump sum as registration fee) | 50,000 JPY |
28,000 JPY (about 180 USD) |
| Payment of annuity | 30,000 JPY |
15,000 JPY (about 100 USD) |
*1. Regarding "Filing a priority certificate in the absence of DAS code", the certificate and DAS code are issued by the Patent Office after a precedent application was filed. Furthermore, one of them is required only when you claim a priority based on the precedent application in Japan. In other words, they are not required if there is no precedent application.
*2. Regarding "Translation of each procedural document", we will charge a translation fee regarding specifications including a description, claims, abstract, and drawings which are needed to file with the JPO. Regarding an office action, we will charge the translation fee thereof if you request us to translate it from Japanese to English for studying it on your side. In other words, we do not charge when you prefer not to translate the office action.
*3. Response to an office action issued by the JPO, an amendment and argument are prepared for responding to it and for arguing that the concerned application should be registered. Please note that the office action is not necessarily issued, it is issued only when there is the reason for rejection regarding a registration of a Patent/Design/Trademark application, the reason being Novelty, Inventive Step, and the like. In other words, we do not charge when there is no office action or when you prefer not to respond to the issued office action.
*4. Regarding our service fee for responding to the office action, it is specified based on from "Workload A" to "Workload E". These workloads depend on degree of difficulty for overcoming the reason for rejection and/or the number of the reasons described therein.
The "Workload A" is, for example, a task of deleting a part of claims;
The "Workload B" is, for example, a task of preparing a comment for overcoming the office action;
The "Workload C" is, for example, a task of preparing and filing a response to the office action;
The "Workload D" is, for example, a task of preparing a comment for overcoming the office action and filing a response thereto; and
The "Workload E" is, for example, an additional or extra task in addition to the "Workload D".
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Patent Filing in Japan for Foreign Applicants: A Complete Guide
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