Interim Guidelines of “Product-by-Process Claim” in Examination and Trial Procedures

Japan Patent Information Committee

On July 6, 2015, the Japanese Patent Office announced the Interim Guidelines for “Product-by-Process Claim (hereinafter, referred to as “PBP claim”)” in examination and trial procedures, under the Japanese Supreme Court decision on the validity of a PBP claim (H24, (ju), No. 1204 and 2658).

The decision states that a PBP claim meets clarity requirements only in the case where there is a circumstance of not being able to directly specify a product by the structures or properties at the filing or the like (“impossible/impractical circumstance”), and does not meet clarity requirements in other cases (please refer to the article of Noriyuki ARAI (Patent Attorney of Patent Division), “Product by Process Claim – Japan Supreme Court Judgment dated June 5, 2015 (2015 (Ju) No. 1204)” for details). The Interim Guidelines show judgment procedures for PBP claim in examination and trial procedures, according to the gist of the decision.

1. Interim Guidelines for PBP Claim in Examination
During an examination procedure, a PBP claim is examined as follows:
(1) First, an examiner judges whether a product claim under examination falls under a PBP claim, namely whether the product claim “specifies a process for producing the product.  In the judgement, common technical knowledge in the art is considered.
(2) If the examiner recognizes that the claim falls under a PBP claim, then he/she judges whether there is an “impossible/impractical circumstance.”   The Interim Guidelines list (i) analyzing structures or properties of the product is technically impossible at the filing, and (ii) unduly excessive economic costs or time is needed to specify the structures or properties, as examples of the “impossible/impractical circumstance.”  In the judgment, common technical knowledge in the art is also considered.  The judgment is made based on assertions and proofs by applicant.
(3) If the examiner recognizes there is an “impossible/impractical circumstance,” the product claim is judged as meeting the clarity requirements.  On the other hand, if an applicant’s assertions or proofs are unsuccessful or the examiner has a reasonable doubt that there is such a circumstance, he/she issues a notification of reason for rejection due to violation of clarity requirements.

2. Response to Notification of Reason for Rejection due to Violation of Clarity Requirements
When an applicant receives the above notification of reason for rejection due to violation of clarity requirements, the applicant can respond as follows:
(1) Deletion of the claim;
(2) Amending the claim to a claim of a method for producing a product;
(3) Amending the claim to a product claim not including the manufacturing method; or
(4) Asserting and proving the existence of the “impossible/impractical circumstance” in an argument or the like.

The amendment recited in (2) or (3) above can be filed even if it is against a final notification of reason for rejection, since such an amendment is regarded as falling under clarification of an ambiguous statement (Japanese Patent Act Article 17^bis (5) (iv)) in the examination procedure.

3. Scope of Application
The gist of the above decision and Interim Guidelines are referred to also in examinations of trial cases, patent opposition cases and the like.  Interim Guidelines apply to examination procedures of patent applications already filed, and trial cases against patents that are already granted.

4. Effect to Practice
Interim Guidelines show a claim including the description of the chronological elements on manufacturing method, “a device … inserting a bolt to engage with … screwing a nut together …” as an example of a PBP claim, and explains that the claim should be amended to use an expression besides the chronological description (for example, “a device … a bolt is inserted …”) or to use an expression showing states of the device in order to resolve the reason for rejection.

With regard to an invention recited in a PBP claim already patented, Interim Guidelines do not clearly describe, but at least the “impossible/impractical circumstance” would become an option to assert fulfillment of the clarity requirements, as well as in the examination procedure.

Currently the Japanese Patent Office advances revising the works of the “Examination Guidelines for Patent and Utility Model” and “Examination Handbook for Patent and Utility Model” by about early October, and once revised, a PBP claim is going to be examined under the guidelines and the handbook.