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Product by Process Claim – Japan Supreme Court Judgment dated June 5, 2015 (2012 (Ju) No. 1204)

Japan Patent Information Committee
ARAI, Noriyuki 
Patent Attorney of Patent Division

1. Summary
Regarding a product by process claim (“PBP claim”), there have been two considerations to define scope and there continue to be opposing opinions as to which consideration should be taken.  One of them is referred to as “product identity theory,” according to which the scope of the PBP claim should be considered as the product per se, and the other is referred to as “process restriction theory,” which states that the scope of the PBP claim should be restricted by the process.

In an infringement suit based on a PBP claim-patent, the Intellectual Property High Court (IPHC) made a judgment that there is a case where “product identity theory” should be taken and there is a case where “process restriction theory” should be taken; and in this suit, “process restriction theory” is taken and the patent is judged not to be infringed.  However, recently, the Supreme Court of Japan has made a judgment that the PBP claim should be considered according to “product identity theory,” and has reversed the judgment, ordering that the suit be reexamined by the IPHC.

2. Outline of the judgment
The Supreme Court has made a judgment that the PBP claim should be considered according to “product identity theory.”

Additionally, the judgment states that, under “product identity theory,” since it is unclear what structure or property of the product the process specifies, it is impossible to understand the invention clearly.  The judgment also teaches that this problem should be solved by the Clarity Requirement (Art. 36, Par. 6, item 2 of the Japanese patent law).  Thus, the judgment states that only when there exists a condition that it is impossible to determine structure or property of the product at the filing date (“impossible and impractical condition”), the PBP claim satisfies the Clarity Requirement.  However, in other conditions, the PBP claim would have an invalidation reason based on lack of Clarity.

Accordingly, the Supreme Court has ordered the suit sent back to the IPHC to have the IPHC judge the scope of the claims and the Clarity Requirement, completely.

The judgment by the IPHC
Jan. 27, 2012
The judgment by the Supreme Court
(2012 (Ju) No. 1204)
・If there is a condition that it is impossible to determine structure or property of the product at the filing date, a PBP claim is “Correct PBP claim” whose scope is considered according to product identity theory.
・If there is no said condition, a PBP claim is “Incorrect PBP claim” whose scope is considered according to process restriction theory.
・“The scope of the claims is considered to be a product that has the same structure or properties as those of a product produced by the process set forth in the claim” (product identity theory).
・It is unclear what structure or properties of the product the process set forth in the PBP claim specifies,…and it is unpredictable for what scope the patentee claims the exclusive right.”
・Only when there is a condition that it is impossible or impractical to determine structure or property of the product as of the filing date, the PBP claim satisfies the requirements stipulated in Art. 36, Par. 6, item 2 of the Japanese patent law.”
The subject claim is Incorrect PBP claim, and the patent is not infringed. The original judgment has been reversed and sent back to the IPHC.

3. Impact on a patent practice
It is highly likely that the PBP claim would be considered as unclear unless the “impossible and impractical condition” exists.  The standard of the “impossible and impractical condition” will be studied soon.  As a result, the PBP claim may be less accessible than before

In the separate suit (2012 (Ju) No.2658), the Supreme Court also made a judgment on an interpretation of the PBP claim in studying patentability on the same date.  The judgment states that the PBP claim should be considered according to “product identity theory” in studying patentability, and the Clarity should be determined in view of the “impossible and impractical condition.”

In view of the judgment, the JPO has decided that an examination of PBP claims is suspended.

Authors

Patent Division, Chemical SectionPartners Patent Attorneys

ARAI, Noriyuki

[Practices]

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Patent Division

Japan Patent Information Committee

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