When filing international patent applications, a clear understanding of the procedural differences among jurisdictions can greatly affect both overall costs and the ultimate strength of the granted rights. One of the most striking differences lies in the treatment of multiple dependent claims, which varies significantly between Japan and the United States and directly impacts filing strategies.
Positioning of Multiple Dependent Claims in Each Jurisdiction
• Japan (JPO)
Multiple dependent claims are permitted, and no extra fees are charged simply because a claim is multiple dependent.
However, if the total number of claims is large, costs such as filing fees, examination fees, and annuities increase accordingly.
If U.S.-style simple dependencies are translated directly into Japanese practice, costs can balloon from filing through post-grant maintenance.
• Korea (KIPO)
Similar to Japan, multiple dependent claims are permitted without additional surcharges.
Since official fees are based on the number of claims, utilizing multiple dependencies to consolidate claims can result in cost savings.
• China (CNIPA)
Multiple dependent claims are also broadly allowed, with fees based on the claim count.
As in Korea, the use of multiple dependencies can reduce the number of claims and lower costs.
• United States (USPTO)
Multiple dependent claims are permitted, but each dependency is counted as a separate claim for fee purposes.
As a result, costs can increase sharply if a claim depends on many others.
In practice, this leads to the common U.S. style of filing numerous simple dependent claims instead.
Note: “Multiple-multiple dependency” (a multiple dependent claim depending on another multiple dependent claim) is prohibited in all jurisdictions, as it creates ambiguity.
Risks of “Literal Translation”
Because U.S. claims are often drafted with numerous simple dependencies to avoid multiple dependent claim fees, directly translating them for Japanese national phase entry creates problems:
• An unnecessarily high number of claims, driving up filing, examination, and annuity costs.
• Reduced cost-efficiency for applicants.
In short, failing to account for system differences and simply importing U.S.-style claims into Japan can disadvantage applicants.
APA’s Approach — Adding Strategy to Translation
At Tsubame (APA, Asia Patent Alliance), we help applicants avoid these pitfalls by tailoring claims to the Japanese system and beyond:
• Proposing optimized use of multiple dependent claims in Japan, Korea, and China, where they do not incur extra charges.
• Suggesting multiple dependent claims while preserving the original claim set in the specification, ensuring no loss of scope.
Benefits for Applicants
• Cost Reduction
Rationalizing the claim set with multiple dependencies reduces not only filing and examination fees but also long-term annuities.
• Strengthened Rights
Streamlined dependencies lead to a clearer, more logical claim structure, enhancing the persuasiveness of granted rights.
Strategic Deployment in Japan, Korea, and China
Unlike in the United States, Japan, Korea, and China offer flexible environments for multiple dependent claims.
By understanding these differences and optimizing claim sets jurisdiction by jurisdiction, applicants can control patenting costs more effectively across Asia.
For smooth and strategic national phase entry into Japan, Korea, and China, trust Tsubame (APA) to handle your filings.