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Post the Japanese Supreme Court Decisions on PBP Claims

by Hirohito Katsunuma (Katsunuma International Patent Office - Japan)

After issuances of Japanese Supreme Court Decisions (2012 (Ju) 1204 and 2012 (Ju) 2658; in Japanese), reciting manufacturing processes in product claims is only allowed where it is impossible or utterly impractical to directly define the product by its structure or characteristics. However, JPO examination guidelines and Japanese IP High Court decisions have relaxed this strict standard.

On June 5, 2015, the Supreme Court of Japan issued two decisions on so-called product-by-process claims (“Pravastatin Sodium Case”; Supreme Court Decisions 2012 (Ju) 1204, 2658). As the judgments in these Supreme Court Decisions are similar, they are collectively referred to as “the Supreme Court Decisions” hereinafter.

The Supreme Court Decisions held that:

1. When a product claim includes manufacturing processes, the technical scope of the patented invention should be limited to products manufactured by the manufacturing process (Product Identity Theory), and

2. A product claim including manufacturing processes (referred to as “PBP Claim” hereinafter) should be held to meet the requirement of Article 36, Paragraph (6), item (ii) of the Japanese Patent Act (clearness requirements), only if there were circumstances where it was impossible or utterly impractical to directly define the product by its structure or characteristics at the time of the filing.

The Supreme Court Decisions confirmed that the right scope of the PBP Claim extends to the same product regardless of the manufacturing processes. By taking this approach, the right scope of the PBP Claim becomes broader. In order to prevent third parties from suffering unexpected disadvantages, the Supreme Court only allows recitation of manufacturing processes when impossible or impractical circumstances exist.

However, as it is difficult to define all products only by structure or characteristics, the interpretation of “the existence of the impossible or impractical circumstances” or “PBP Claim” has been gradually relaxed.

On July 6, 2015 immediately after the issuance of the Supreme Court Decisions, the Japanese Patent Office (JPO) published a notification “About the handling of immediate examination concerning product-by-process claims” saying that it would issue Rejection Reasons to all PBP Claims to encourage the applicants to assert the existence of the impossible or impractical circumstances.

On the other hand, JPO left room for expanding the coverage of “the existence of the impossible or impractical circumstances”. That is, JPO said if manufacturing processes are recited in a product claim to specify the structure or characteristic of the product, such a recitation is not a case which needs proofs of “existence of impossible or impractical circumstances”. JPO also said that the Examiner would admit the existence of impossible or impractical circumstances when the applicant asserts or proves it.

On November 25, 2015, JPO published examples of the applicant’s assertions or proofs of the existence of impossible or impractical circumstances. On January 27, 2016, JPO increased examples of Non-PBP Claims.

On March 30, 2016, JPO incorporated the above mentioned publications into the Examination Handbook, paragraphs 2204 and 2205.

Thereafter, on September 20, 2016, the Japanese IP High Court issued a decision (2015 (Gyo-Ke) 10242; in Japanese) holding that a claim of a tape for forming eyelids-with-a-fold including a recitation “… applying a pressure-sensitive adhesive on a thin tape-like member…” does not fall within the scope of a PBP claim because it merely specified the structure or characteristics of the product.

On September 29, 2016, the Japanese IP High Court issued another decision (2015 (Gyo-Ke) 10184; in Japanese) holding that a recitation of a claim of a candle “…exposing the wick of a candle by slicing-off or melting-off the wax…” is a recitation of a manufacturing process, however, as this manufacturing process is clear to define the structure or characteristics of the product, it is not necessary to assert or prove the existence of the impossible or impractical circumstances.

Furthermore, on November 8, 2016, the Japanese IP High Court issued a decision (2016 (Gyo-Ke) 10025; in Japanese) holding that when it is clear that the manufacturing processes describe the structure or characteristics of a product, the claim does not fall within the scope of the PBP Claims.

The right scope of the PBP Claims may be broadened if the product identity theory is strictly applied. The accumulation of future judgments is awaited.