On March 30, 2016, the Japan Patent Office (JPO) published “Interim Handling Procedures for Examinations and Appeal/Trials involving Product-by-Process Claims” in response to decisions rendered by Japan’s Supreme Court on June 5, 2015.
The rulings concerned two cases relating to patent claims for inventions of products where the claims set forth the processes by which the products are manufactured, ie, product-by-process (PBP) claims.
That decision to publish the procedures, which seem to reflect the court’s intention to limit PBP claims, is likely to strongly influence the preparation of such claims in patent applications in Japan, reduce the number of PBP claims approved in this country, and increase the number of invalidations of previously approved PBP claims.
The JPO’s publication sets forth its revised procedures for PBP claims so as to conform to the Supreme Court’s decisions, and is supplemented by the following publications intended to clarify when a claim is PBP:
1. “Examples of Arguments and Verification Presented by Applicants involving ‘Impossible or Impractical Circumstances’ concerning Product-by-Process Claims” (published by the JPO on November 25, 2015); and
2. “Addition of Examples Not Considered to be Product-by-Process Claims” (published by the JPO on January 27, 2016).
Before the aforementioned Supreme Court decisions and the JPO’s publication of the interim handling procedures, the JPO handled PBP claims in accordance with the “Examination Handbook for Patent and Utility Model in Japan” (published by the JPO on September 16, 2015).
Under the procedures as currently revised, if a claim describes the process by which a product is manufactured, the JPO will issue a notification of reason(s) for refusal in accordance with the Supreme Court’s decisions, although not if the JPO examiner deems that the invention involves “impossible or impractical circumstances”.
"The JPO’s publication sets forth its revised procedures for PBP claims so as to conform to the Supreme Court’s decisions."
These are any circumstances that make it impossible or utterly impractical to directly define the product based on its structure or characteristics at the time that the subject application was filed with the JPO.
The applicant may then submit a response in which, among other things, the applicant may:
1. Assert, and provide support for, the existence of such “impossible or impractical circumstances”;
2. Delete the problematic claim(s);
3. Amend any problematic claim so that it will constitute a PBP claim;
4. Amend a subject claim into a claim that does not include the process of manufacturing the invention, apart from arguing and verifying the existence of “impossible or impractical circumstances” based on a written opinion; and
5. Contend that a subject claim does not include a method of manufacturing the product.
If an applicant argues and proves that “impossible or impractical circumstances” exist, the examiner will probably conclude that such is the case, but not if the examiner doubts, for good reason, the existence of such circumstances.
We accordingly recommend that all owners of patents that include PBP claims review such claims and consider submitting voluntary amendments as appropriate to change the claims so that they conform to the above-mentioned Supreme Court decisions.
Ryo Maruyama is a Japanese patent attorney and vice president and chief patent attorney of Kyosei International Patent Office. He can be contacted at: firstname.lastname@example.org
Ryo Maruyama, Kyosei International Patent Office, PBP, Supreme Court, patent, Japan Patent Office,