News & Topics

On March 23, 2016, the Japan Patent Office announced an update of the Examination Guidelines.

One of the notable changes in the update is a revised standard for food inventions with an “intended use” limitation.  Under the new Guidelines, patentable weight will be given to an “intended use” recited in a claim to a food product if (a) the use is derived from discovering an unknown attribute of an ingredient of the food product and (b) the use derived from the attribute is different from any known uses.

In general, an “intended use” recited in a product claim will not be given patentable weight except (i)the “intended use” recited in the claim results in a structural difference or (ii) the invention lies in a provision of a new use based on a discovery of a new attribute of a substance.  The JPO used to take a position that such exceptions as above are not the case for food inventions.  For example, if a claim recites “a food product for decreasing blood pressure“, no patentable weight was given to the recitation, “for decreasing blood pressure,” under the old Guidelines.  Under the new Guidelines, an “intended use” recited in a claim to a food product will be treated as satisfying the above exceptional condition (ii) and will be given patentable weight.

This change is applied to a claim to a “processed” food product but not to a claim to an animal or plant itself with a specific use limitation.

This change is effective on April 1, 2016, regardless of filing dates.

-JPO Release

URL: http://www.jpo.go.jp/iken_e/back_20160323_guide.htm

-Examination Guidelines for Patent and Utility Model in Japan, Part III, Chapter 2, Section 4, “Claims Including Specific Expressions”.

Especially, please see page 6, 3. 1. 2. (1), Example 2.

URL: http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/1312-002_e.htm

-Examination Handbook for Patent and Utility Model in Japan, Annex A, 4. Novelty (Article 29(1)), and 5. Inventive Step (Article 29(2)).

Especially, please see cases 30 to 34 in Novelty and cases 21 to 25 in Inventive Step.

URL: http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/handbook_sinsa_e.htm

（Fumio INAI)