20 May 2016Jurisdiction reportsRyo Maruyama

Japan: New rules for product-by-process claims

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”.

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