Shifting Amendment & Unity of the Inventions

Aki Ryuka
Japan Patent Attorney, Certified for IP Litigation
Attorney at law, California, USA

1. Shifting Amendments
Claims amended in response to an office action (OA) must satisfy “Unity of the Invention” with the examined claims. Otherwise, new claims are rejected if they were presented before the final OA, and not entered if they were presented after the final OA.

2. Unity of the Invention
The inventions satisfy the unity if:
 (1) The invention contains all elements of the examined claim 1 and the objects or technologies of the inventions are relevant;
 (2) The invention contains a special technical feature (STF), which is searched only in the first dependent chain of claims in the examination; OR
 (3) The claim can be examined without any additional search.

3. Our Suggestions
(1) When filing a patent application in Japan
a. For the above 2 (1) reason
List the most important independent claim first.
Make dependent claims directly or indirectly depend form claim 1 as well.
b. For the above 2 (2) reason
List the dependent claims in the order of importance.
Make dependent claims depend from as many claims as possible.
(2) When responding to an Office Action in Japan
a. Try to incorporate all features of original claim 1 into the amended claims.
b. If the examiner may find that the amended claims do not have objects or features relevant to those of original claim 1, explain the same in the remarks.

(3) When responding to an Office Action in a foreign country
If the first independent claim is deleted or limited by incorporating a claim that is outside the first dependent chain of claims, change the order of the claims in Japan, because the same amendment might be denied after the examination. (Above 2(1), 2(2))

Should you have any questions, please feel free to contact us.

This is provided as general informational, and is not intended as legal advice. Because every case is unique, readers should not take any action, or refrain from acting based on this information without first consulting their own attorneys. The presentation of this information does not create an attorney-client relationship with RYUKA IP Law Firm. RYUKA IP Law Firm specifically and wholly disclaims liability for this information.