1. Introduction

In our previous newsletter dated June 23, 2015, we have reported the Supreme Court’s Decision on the scope of product-by-process claims (“PBP claims”) issued on June 5, 2015.  The contents of the Supreme Court decision are summarized again in the following chart.

Following this Supreme Court decision, the Japan Patent Office announced on June 10, 2015 that the JPO would start studying “Revision in the Examination Standards” and "Handling of PBP claims in Examination and Appellate Procedures”, and that in the examinations and appeal trials, the JPO would not make a determination on the contents of the court decision for the time being.  On July 6, 2015, the JPO released the result of their study.  In the present article as a follow-up report of the Supreme Court’s decision, we report the future handling of PBP claims in examination and appellate procedures by the JPO, and the comparison of the PBP claim interpretations in various countries.

2. Handling of PBP claims in examination and appellate procedures by the Japan Patent Office

(1)    Handling in examination and appellate procedures

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 under Article 36(6)(ii), 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’)” (*).

For overcoming this rejection, the applicant can take any of the following measures, other than making a rebuttal:

(i)     Cancelling the PBP claim;

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

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

(iv)    Arguing or proving the circumstance for impossibility or impracticality in Written Opinion or the like.

The above-mentioned amendments (ii) and (iii), which are typically made when amendment is restricted, such as when responding to a final notice of reasons for rejection and when filing a request for a trial against an Examiner’s final decision of rejection, will be accepted as amendments falling under “clarification of the ambiguous description (Article 17-2 (5)(iv))”.

In the case of the item (iv), 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.  In this case, the rejection due to violation of clarity requirement is overcome.

(*) Even when there is a circumstance for impossibility or impracticality, if it is determined under the current Examination Standards that the invention according to the PBP claim is not clear, a rejection for violation of clarity requirement will be notified.

(2)    Examination Standards / Examination handbook

Examination Standards / Examination handbook are currently under revision, and the revised edition thereof is planned to be put into practice by early October, 2015.

3. PBP claim interpretations in various countries

The following chart summarizes PBP claim interpretations in Japan and various countries.

As described above, in all countries, PBP claims are deemed as “not being limited by the manufacturing method” during examination.  With this, in the case of the PBP claims, it is understood that patentability is sought in the structure or property thereof as a product, while the manufacturing method is not taken into consideration for patentability.  On the other hand, there are two types of countries that differ in the PBP claim interpretation during infringement lawsuit: where the interpretation of the PBP claim is “limited by the manufacturing method” and where it is not.  During infringement lawsuit in the countries of the former type (US, UK and China), a patent right does not have effect on a product whose structure is the same but whose manufacturing method is different.  In other words, in these countries, the PBP claims are interpreted to have a broader scope during examination, while a narrower scope during infringement lawsuit, and thus the interpretation works disadvantageously for the patentee.  Hence, it is desirable to specify a product invention by means of its structure or property, and specifying the product with the use of a manufacturing method should be avoided as much as possible.

Please do not hesitate to contact us with any questions or comments, or if you would like us to clarify any of the points discussed above.