1. 1. OUTLINE

 The Japan Supreme Court Decision (2nd Petty Bench, June 5, 2015) on the scope of so called "Product-By-Process claim" (referred to as "PBP claim" hereinafter), that we introduced twice in our previous newsletters on June 23 and August 26, 2015, held that the PBP claim does not meet the claim's definiteness requirement (Japanese Patent Act, Article 36, Paragraph 6, Item 2), unless it was impossible or utterly impractical to directly define the product by its structure or characteristics at the time of filing the application.

 The Supreme Court Decision held as such on the ground that, in general cases, the PBP claim makes it indefinite what structure or characteristics of the product the claimed manufacturing method/process defines, which make it difficult for the third party to interpret or predict the scope of protection that could be covered by the PBP claim.

 In the subject case that we introduce hereinafter, the Japan Intellectual Property High Court held that "unlike the general cases, if the PBP claim is unambiguously definite as to what structure or characteristics of the product that the claimed manufacturing method/process refers to based on the Claims, Specification, Figures or technical common sense in the art, then the PBP claim is NOT against the statutory definiteness requirement, since any third parties' interests would not be unduly harmed." The holding clarifies an area outside the scope of the the Supreme Court Decision not to be in conflict therewith.

 Then, the Intellectual Property High Court decided that the subject case is exactly the case that is different from the "general cases" referred to by the Supreme Court.

2. 2. DECISION

 Trial Decision Cancelling Request Case No. 10083, 2017 (Administrative litigation case, first instance) (December 21, 2017, the Intellectual Property High Court, the fourth division)

 The subject case is a litigation for cancelling the invalidation trial decision by the Japan Patent Office (JPO) on March 24, 2017 in the invalidation trial case No. 2015-800173. In the invalidation trial, claim 1 as under in Japanese Patent No. 4708059 (referred to as "the subject patent" hereinafter) was deemed as a PBP claim; and then the invalidation request was accepted on the ground that the claimed invention (referred to as "the subject invention") does not meet the statutory definiteness requirement.

 [Claim 1]

 A wash-free rice holding an "umami (favorable taste)" component and a nutritional component, and produced from a brown/unpolished rice grain, said brown/unpolished rice grain comprising:

 a surface layer part including an epidermis (1); a peel (2); a seed coat (3); an aleuronat cell layer (4); and a layer of a yellow-brown substance that does not include starch and exhibits unsavory taste, in the stated order from the outside; and

 a semi-aleuronat cell layer (5) and a pure white starch cell layer (6) inside the surface layer part, the semi-aleuronat cell layer (5) contacting and extending one layer deeper than the aleuronat cell layer (4) to form a single light-yellow layer, and the pure white starch cell layer (6) being located further deeper than the semi-aleuronat cell layer (5);

characterized in that:

 among the aleuronat cell layer (4), the semi-aleuronat cell layer (5) and the starch cell layer (6) that constitute the brown/unpolished rice grain, the single semi-aleuronat cell layer (5) containing malt oligosaccharides, a dietary fiber and protein is exposed on the surface of the rice grain, after the brown/unpolished rice grain is rice-polished by a friction type rice-polishing machine to remove the surface layer part and the aleuronat cell layer (4); and ‘an embryo (8) resulted from shaving off the surface part of an embryo (7)' or 'a scutellum (9) that is a base part resulted from shaving off the surface layer part and a protrusion part of the embryo (7) with coarse texture' is left in 50% or more of the rice grain, and that

 a cell wall (4') of the aleurone cell layer (4) is further broken by using a wash-free rice machine (21); and only 'skin bran', adhered on the surface of the rice grain, is separated and removed while aleurone granules in the cell wall (4') are adhered to the rice skin.

 [Notes]  Underlines are added.  To "rice-polish" means by making polished rice from brown/unpolished rice.  Claim 1, stated in a single paragraph in its patent publication, is divided into plural lines to improve readability.  Primary figures of the subject patent are appended at end of the newsletter (Figs. 1, 6 and 7 quoted in the decision)]

3. 3. POINTS AT ISSUE

 Two points at issue (arguments) were raised by the plaintiff (patentee - defending party in the invalidation trial) as follow:

 [Argument 1] The JPO's trial decision that claim 1 includes a manufacturing method is incorrect.

 [Argument 2] The subject invention meets the statutory definiteness requirement (That is, the JPO's indefiniteness decision is an error).

 In these, [Argument 1] was dismissed on the ground that each of the phrases "rice-polished by a friction type rice-polishing machine" and "by using a wash-free rice machine" are deemed to be a "manufacturing method." In other words, claim 1 was deemed to be a PBP claim.

 Then, [Argument 2] was accepted on the grounds as under:

 [Grounds]

 There is no description in the Specification other than "rice-polished by a friction type rice-polishing machine" for manufacturing the rice, wherein (a) "the single semi-aleurone cell layer .. is exposed on the surface of the rice grain, ... to remove the surface layer part and the aleurone cell layer" and (b) " 'an embryo resulted from shaving off the surface part of an embryo ' or 'a scutellum ... resulted from shaving off the surface layer part and a protrusion part of the embryo' is left in 50% or more of the rice grain", which is the rice in the stage prior to manufacture of the wash-free rice of the subject invention. In other words, there is no description that implies or suggests any other structure or characteristics than (a) and (b) regarding the rice which is "rice-polished by a friction type rice-polishing machine."

 Besides, there is no description in the Specification other than "by using a wash-free rice machine" for manufacturing, from such a rice, the wash-free rice, wherein (c) "a cell wall of the aleurone cell layer is further broken ... ; and only 'skin bran', adhered on the surface of the rice grain, is separated and removed while aleurone granules in the cell wall are adhered to the rice skin." In other words, there is no description that implies or suggests any other structure or characteristics than (c) about the wash-free rice that is manufactured "by using a wash-free rice machine" from such a rice.

 Therefore, even if claim 1 includes manufacturing method phrases "rice-polished by a friction type rice-polishing machine" and "by using a wash-free rice machine", it is unambiguously definite that the structure or characteristics of the wash-free rice of the subject invention is (a), (b) and (c) from the claim and the Specification. Thus, these phrases are not against the definiteness requirement.

4. 4. OBSERVATION

 The Supreme Court decision held that it was against the statutory definiteness requirement, unless it was impossible or utterly impractical to directly define a product concerned by its structure or characteristics at the time of filing the application. The point is that the technical scope of a PBP claim is defined as the product equivalent to one manufactured by said manufacturing method in structure, characteristics or the like; and that, in general cases, however, the PBP claim makes it indefinite what structure or characteristics of the product the claimed manufacturing method/process defines, which makes it difficult for the third party to interpret or predict the scope of protection that could be covered by the PBP claim, so that the PBP claim should not be allowed without limitation – it should be accepted under limited circumstances.

 The plaintiff states in [Argument 2] that "even though the claim defines a manufacturing method, if it is unambiguously definite what structure or characteristics of the product the claimed manufacturing method/process refers to based on the Claims, Specification, Figures or technical common sense in the art, then it is not necessary to apply the PBP claim criterion with respect to the definiteness requirement." That is, the plaintiff argues that the PBP claim's definiteness requirement should be handled more generously than the Supreme Court Decision; and that, even if there is no impossible or impractical circumstance, the requirement should be satisfied as long as the structure or characteristics of the wash-free rice of the subject invention is unambiguously definite from the Claims, the Specification, etc. Then, the decision in the subject case accepted the argument by the plaintiff.

 The decision was given by the High Court, not by the Supreme Court. However, it is noteworthy that the invalidation trial decision (first instance) was issued later than July 6, 2015 when the JPO revised their guidelines for a PBP claim after the Supreme Court decision, and then the invalidation trial decision was dismissed by the Intellectual Property High Court. In other words, it is noteworthy that the Intellectual Property High Court showed their view different from the JPO after the JPO changed how to handle the PBP claim.

 The decision of the Intellectual Property High Court is based on the concept that "in some cases, the structure or characteristics of the invention is unambiguously definite from the Claims and Specification, even if the claims include a manufacturing method; and such a case is not against the definiteness requirement." Continued attention should be paid to whether the Intellectual Property High Court will issue another decision similar to the subject case that it is not true to "the general cases" in the Supreme Court Decision, as well as how the future trend of the invalidation trial before the JPO will be changed.

 Lastly, the subject case has been appealed to the Supreme Court.

 Should you have any question, please let us know.

[Fig. 1]  View in enlarged section showing a portion of a surface layer part of a brown/unpolished rice grain.

[Fig. 6]  View in vertical section showing “a wash-free rice with a scutellum 9 being left” according to the subject invention.

[Fig. 7]  Lateral side view showing “a wash-free rice with a surface part of an embryo 8 removed” according to the subject invention.