News & Topics

Overview

On March 30, 2016, the Japanese Patent Office (“the JPO”) has amended the Examination Handbook to revise a standard for examining Product-by-process claims (“PBP claims”).

This revision is the latest part of a series of announcements made by the JPO after a significant Supreme Court decision on June 5, 2015, in which the Supreme Court stated that PBP claims satisfy a clarity requirement only if there exists a circumstance that it is impossible or impractical to directly specify a final product with its structure or characteristics at the time of filing an application (“impossible or impractical circumstances”).

In the revised Examination Handbook, the JPO has (i) clarified a case where a claim is regarded as a PBP claim and (ii) supplemented examples of “impossible or impractical circumstances.”

History of Claim Interpretation for PBP Claims

With regard to an interpretation of a PBP claim, i.e., a product claim defined by a process of its manufacture, there are two conflicting approaches: The first is to construe a PBP claim as meaning the product as such regardless of whether a process recited in the claim is identical or not (“Product-Identity Approach”).  The second is to construe a PBP claim as meaning a product manufactured by the same process as recited in the claim (“Process-Limitation Approach”).

In former precedents, a different approach was taken between a validity and infringement assessment – novelty and inventive step of PBP claims was decided under the “Product-Identity Approach” whereas an infringement of PBP claims was decided under the “Process-Limitation Approach.”  Namely, if a product in the PBP claim was the same as or obvious from a product of the prior art, the claim was regarded as lacking novelty or inventive step.  However, a PBP claim was only infringed by a product made by the process recited in the claim.  (Heisei 17(gyoke)10775 on Dec. 7th, 2006 (IP High Court), Heisei 18(ne)10081 on April 25, 2007 (IP High Court), etc.)

Such inconsistency in a claim construction was corrected by an en banc decision by the IP High Court on January 27, 2014 (Heisei 22(ne) 10043).  The IP High Court decided that: (a) if there exists a circumstance that it is impossible or difficult to directly specify a final product with its structure or characteristics, a PBP claim should be construed under the “Product-Identity Approach” and (b) if such circumstance does not exist, the PBP claim should be construed under the “Process-Limitation Approach” for both validity and infringement assessments.

In an appeal against the en-banc decision, the Supreme Court has partly changed the decision by the IP High Court.  Namely, the Supreme Court has revoked the en-banc decision and decided that (a) if there exists a circumstance that it is impossible or impractical to directly specify a final product with its structure or characteristics, a PBP claim should be construed under the “Product-Identity Approach” and (b) if such circumstance does not exist, a PBP claim violates the article 36(6)(ii) of the Patent Law (i.e., a clarity requirement of claim).

Examination of PBP Claims by the JPO

The Supreme Court Decision had a big impact on the examination of PBP claims by the JPO.  Although an examination of novelty and inventive step is the same as before, i.e., a PBP claim is construed under the “Product-Identity Approach,” the JPO needs to decide whether the claim satisfies a clarity requirement before examining novelty/inventive step of the claim.

An assessment of a clarity of a claim includes two tests: (i) The first test is to decide whether the claim is a PBP claim.  If a result of the first test is “yes,” (ii) the second test is to decide whether there is an “impossible or impractical circumstance.”  Unless there is such circumstance, the claim is unclear.

The JPO has made a series of announcements regarding a standard for the two tests.  The latest standard is described in the Examination Handbook revised on March 30, 2016.

(1) Test as to whether a claim is PBP

The latest Examination Handbook presents three typical cases where a claim is regarded as a PBP and one typical case where a claim is not regarded as a PBP.

(Typical PBP claims)

Type (1-1): Case in which, pertaining to manufacturing, a description of chronological elements exits in a product claim

Type (1-2): Case in which, pertaining to manufacturing, a description of a technical feature or condition exists in a product claim

Type (1-3): Case in which a product claim refers to a process claim for producing the product

(Typical non PBP claim)

Type (2): Case in which, by indicating simply a state of the product, a claim recites the structure or characteristics of the product subject of the invention

A key change for the first test in the March 30 announcement is that some examples are excluded from PBP claims.  Namely, even in a case where a claim has a limitation that formally falls in either of Types (1-1) to (1-3) above, the claim is not regarded as PBP if a structure or characteristic is clear from the limitation.  For example, the following claim is not regarded as PBP:  “A device having a fixed portion wherein a bolt having a convex portion is inserted into a hole having a concave portion so that the convex portion and the concave portion can be engaged, and a nut is screwed with the end of the bolt.”

For a more detail, see attachment 1 (2204, Chapter 2, Part II of the Examination Handbook) (http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/files_handbook_sinsa_e/02_e.pdf)

(2) Test as to whether there is “impossible/impractical circumstance”

The Examination Handbook presents two typical cases where the “impossible or impractical circumstances” exist.

(Typical case of “impossible/impractical circumstances”)

Type (i): Case in which a structure or characteristics of the product cannot be technically analyzed at the time of the application

Type (ii): Case that significantly excessive financial expenditure or time is necessary to identify the structure or characteristics in spite of a requirement of an early filing of the application

The JPO has supplemented examples of these two types in the March 30 announcement.  For a more detail, see attachment 2 (2205, Chapter 2, Part II of the Examination Handbook). (http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/files_handbook_sinsa_e/02_e.pdf)

Our Suggestions

(1) Try obtaining PBP claims?

The first important question is whether there exists a circumstance that it is impossible or impractical to directly specify a final product with its structure or characteristics.  Although the meaning of “impossible or impractical circumstance” is not crystal clear yet, the examples in 2205, Chapter 2, Part II of the Examination Handbook may provide a better understanding of the requirement.

If the answer to the question is apparently “no,” there is no choice but to obtain other types of claims – a manufacturing method claim or a typical product claim limited by a structure or characteristics.  In preparing product claims, it is important to carefully avoid writing a claim in a way that falls in Types (1-1) to (1-3) in 2204, Chapter 2, Part II of the Examination Handbook.

On the other hand, if the answer to the question is arguably “yes,” it may be worth trying to obtain a PBP claim because a coverage of the PBP claim, which is construed under the “Product-Identity Approach,” is broader than that of a manufacturing method claim.  That said, it is sensible to also obtain a corresponding method claim at the same time.  Since it is still not clear how the courts will treat a requirement of “impossible or impractical circumstance”, there is a risk that a granted PBP claim is invalidated as lacking a clarity in the future.

(2) How to deal with PBP claims in examination proceedings

If a PBP claim is objected by the examiner, an applicant can (i) argue an existence of “impossible or impractical circumstance,” (ii) rewrite to a manufacturing method claim, (iii) rewrite to a product claim without a process limitation, or (iv) remove the PBP claim.  Please note that amendments in options (ii) and (iii) are admissible even after a final rejection or in appeal against a rejection (See, 2203, Chapter 2, Part II of the Examination Handbook).

(3) How to deal with PBP claims in previously granted patents?

If the validity of a PBP claim is disputed in an invalidation trial or in a lawsuit, a patentee basically has the same four options as in (2) above.  However, what should be noted is that there is an additional requirement for an amendment after a grant – an amendment that substantially broadens or changes the subject matter of a claim is not admissible under the article 126 (4) of the Patent Law.  Normally, an amendment of the options (ii) (rewrite to a manufacturing method claim) and (iii) (rewrite to a product claim without a process limitation) are treated as violating the article 126 (4).  However, the JPO recently published a Board Decision where an amendment from a PBP claim to a manufacturing method claim was decided as being admissible.  The JPO also commented that an admissibility of an amendment from a product to process claim is examined on a case-by-case basis.

(Ken TAKAOKA, Masayuki KISHIMOTO, Hiroshi TAMURA)