[Article / Patents] Research and proposals on lack of unity in inventions expressed as alternatives (Biotechnology and Life Sciences Committee, Patent, December 2025)
更新日：7 時間前
Article information
Article type: Publication review
Categories: Patents
Main topics: Examination and appeal practice / Divisional applications
First published on this website: October 1, 2026
Display and classification checked: October 1, 2026 (not a revalidation of the legal analysis)
[Article / Patents] Research and proposals on lack of unity in inventions expressed as alternatives (Biotechnology and Life Sciences Committee, Patent, December 2025)
1. The Japan Patent Office's (JPO) “first alternative” principle
In chemistry and biotechnology, compounds and sequences are commonly expressed as alternatives (Markush form), such as “R is A, B or C” or “any of SEQ ID NOs. 1–4.”
Under Japan's Examination Guidelines, the first-listed alternative is, in principle, selected for examination when assessing unity (Patent Act Article 37).
If the first-listed alternative is found to lack novelty, amendment to a later alternative is prohibited as a “shift amendment” (Article 17-2(4)), even if that is the alternative for which the applicant truly seeks rights. (The applicant is forced to file a divisional application at additional cost.)
2. Comparison of Japan, the US and Europe
There is a decisive difference in the practice of selecting what to examine between Japan and the US/Europe; the latter are user-friendly.
3. Responses to lack of unity
① Add a new STF: Add an unexamined, new special technical feature (STF) as a feature common to all alternatives, leading to examination of all alternatives together.
② Argue a common structure: Establish in written arguments that the first and other alternatives share a structure (STF) not recognized during examination.
③ Amend to an inclusion relationship: Make the first alternative an essential feature and the other alternatives additional features, thereby effectively including them in the subject of examination.
Original article: https://lnkd.in/g8MDbNQK
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Updates and corrections
Substantive corrections and additions are recorded separately from classification, related links and display changes.
October 1, 2026: First publication of the author's original LinkedIn text on this website. Article type, categories, topic tags, sources and consultation navigation added.
2026-10-01 | Display maintenance: added case references stated in the original or language-alternate metadata; not a revalidation of legal analysis.
