<IP Practice Online> “The umbrella theory has also returned! But should claims with disclaimers really be so unrestricted? A horizontal and vertical overview of amendment practice” (Kazuo Shibata)
Updated: Oct 9
Article information
Content type: Lectures and videos
Categories: Patents
Issues: Disclaimer claims / Added matter / Inventive step
First published on this site: 2026-10-03
Display and classification checked: 2026-10-03
<IP Practice Online> “The umbrella theory has also returned! But should claims with disclaimers really be so unrestricted? A horizontal and vertical overview of amendment practice” (Kazuo Shibata)
In current Japanese practice, disclaimers are frequently used as a de facto “standard technique” for easily avoiding prior-art-based grounds for refusal, such as lack of novelty or inventive step.
Drawing on experience as an examiner and appeal examiner, the speaker questioned whether they should really be so unrestricted.
Revival of the “umbrella theory” and the risk of changing the invention's nature
The so-called “umbrella theory”—that if the original claim is comprehensive as a broader concept (like a wide umbrella), later carving out and excluding part of it does not add new technical matter—has recently been re-emerging and attracting attention in practice and IP debate.
Japan's permissive practice of allowing free subsequent exclusion of matters not originally disclosed entails a risk that the invention will, in substance, change its nature before and after amendment (the umbrella-theory concern).
The speaker explains, from an original perspective, court cases both recognizing and denying inventive step for claims with disclaimers.
Original article: https://lnkd.in/gFXUX87j
Original source shown in the LinkedIn preview: https://www.youtube.com/watch?v=nsDZxujMcak
Originally posted on LinkedIn: https://www.linkedin.com/feed/update/urn:li:activity:7511582120964927488/
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Update and correction history
Dated entries are added for corrections, supplements, classification, display, and related-article changes, separately from the first publication date.
2026-10-03: First publication on this site from the LinkedIn original.
Consultation guide by purpose: https://www.takaishihideki.com/en/single-post/consultation-guide-en
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