1. 1. Introduction

  In our previous newsletters of June 23, 2015, October 21, 2015 and January 24, 2016, we reported the Supreme Court decision on the scope of product-by-process claims (PBP claims) issued on June 5, 2015 (No. H24 (Ju)-1024 and 2658), and the handling of PBP claims in examination procedure by Japanese Patent Office (JPO) after the issuance of this Supreme Court decision. In the present newsletter, we will report further movement of the JPO regarding their handling of PBP claims.

  Briefly, in accordance with the above-mentioned Supreme Court decision, the JPO has been handling PBP claims during the examination in the following manner:

(1) When a PBP claim is found in a set of claims, the Examiner determines that the invention according to the PBP claim is not clear, and notifies a rejection, except for the case where it can be determined that "there is a circumstance that makes it impossible or too impractical at the time of filing to directly define or specify the product in terms of its structure or property (referred to thereinafter as 'circumstance for impossibility or impracticality')".

(2) For overcoming this rejection, the applicant can take any of the following measures:

  (a) Making a rebuttal that the claim in question is not a PBP claim

  (b) Cancelling the PBP claim

  (c) Rewriting the subject matter of the PBP claim into a method for manufacturing a product

  (d) Rewriting the subject matter of the PBP claim into a product from which the manufacturing method is excluded

  (e) Arguing or proving the "circumstance for impossibility or impracticality" in Written Opinion or the like

(3) When there is no reasonable doubt about the circumstance for impossibility or impracticality argued or evidenced by the applicant, the Examiner determines that there is a circumstance for impossibility or impracticality.

2. 2. The JPO published examples of arguments and verification involving circumstance for impossibility or impracticality" concerning PBP claims

  On November 25, 2015, the JPO published reference examples which could be considered to show the existence of "circumstance for impossibility or impracticality" during the examination. The operative examples are omitted herein due to the limitation of the space.

3. 3. The JPO has published addition of examples not considered to be PBP claims

  In the Examination Standards/Examination Handbook, Part II, Chapter 2, Section 2204, "Determination Regarding Whether or Not 'When a Claim concerning an Invention of a Product Includes a Manufacturing Method for a Product' is Relevant", there is a paragraph "3. Types/operative examples not corresponding to a 'case in which a manufacturing method for a product is described'". This paragraph includes the item "Type (2) Case in which, by indicating simply a state, a structure or a feature is merely identified", which lists twelve operative examples:

"an item in which a resin composition has been cured";

"an article in which an affixed chip is bonded to a sensor chip"

"an item in which A is formed to be of a different thickness from B"

"a composition formed by combining A with B"

"a tire created using a rubber composition"

"a laminated film formed by placing a layer C between a layer A and a layer B"

"isolated cell", "extract", "threshed rice", "spirits", "plating layer", "removably configured".

  On January 27, 2016, the JPO has published further examples to be added to the twelve operative examples, which are as follows:

"a member B welded to a member A";

"a chamfered member";

"a lid caulked to a body";

"spun twisted yarn using roving A and roving B";

"a pigment coated with a polymer A";

"a PEGylated protein";

"a humanized antibody";

"a protein having an amino acid sequence represented by SEQ. NO. X in which at least one amino acid is deleted, substituted or added";

"a casting", "a casing product", "a forging";

"a welded part", "a brazed part", "soldered part", "a fusion-spliced part";

"a machined part", "a cut off part", "a ground surface", "a press-fitted part", "press-fit structure";

"a sintered object", "a pressurized powder body (green compact)"

"an oriented film", "blown film"; and the like.

4. 4. The JPO's future movement

  According to the JPO, they continue to review handling procedures of PBP claims, and will revise the Examination Handbook for Patent and Utility Model around the beginning of April 2016, with further addition of examples deemed as the existence of "circumstance for impossibility or impracticality" and further addition of examples not considered to be PBP claim, based on the result of the review.