Examination Trends on “Excluding Claims”

In recent years, the Japan Patent Office (JPO) has received an increasing number of requests from users for appropriate examination of cases in which amendments introducing so-called “excluding claims” are made during examination. 　In response, the JPO has been making efforts to ensure the appropriateness of examination and to improve examination quality.

Against this background, the JPO has published an official notice organizing its approach to amendments introducing “excluding claims.” 　The notice explains important points to be considered when such amendments are made, particularly from the perspectives of novelty, inventive step, added matter, and clarity.

In addition, at the 18th Meeting of the Examination Standards Expert Committee Working Group (held on November 17, 2025), discussions were conducted regarding the assessment of amendments introducing “excluding claims,” and possible clarification of the examination standards was considered.

Links to the relevant JPO publications are provided below.　Please note that these materials are available in Japanese only.

Japan Patent Office, “Amendments Introducing ‘Excluding Claims’”
https://www.jpo.go.jp/system/patent/shinsa/letter/nozoku.html

Materials for the 18th Examination Standards Expert Committee Working Group
https://www.jpo.go.jp/resources/shingikai/sangyo-kouzou/shousai/kijun_wg/18-shiryou.html

Our firm continues to closely monitor examination trends concerning amendments introducing “excluding claims,” particularly in the context of Office Action responses, and will update information as appropriate based on JPO publications and related materials.

If you need further information, please feel free to contact us.