[:en]On June 5, 2015, the Supreme Court of Japan made an important decision regarding product-by-process claims, i.e., a claim which claims a product with claim recitations defining a manufacturing method of that product. The decision has announced for the first time two standard rules as follows:
- A patented product-by-process claim covers any product which is identical to the claimed product in its structure, properties, etc., even if that product was actually made through a manufacturing method which is different from the one recited in the claim.
- On the other hand, a product-by-process claim is recognized to satisfy the clarity requirement prescribed in Article 36(6)(ii) of the Japanese Patent Law, only when it is considered to have been “impossible” or “utterly impractical” on the filing date of the patent application to define the claimed product directly by its structure or properties.
Hereafter, based on the above decision made by the Supreme Court, Office Actions (Notice of Grounds for Rejection) will be issued when an Examiner judges any claim in a pending patent application as not satisfying the clarity requirement in the sense of rule (2) above. Also, a product-by-process claim in a registered patent which does not satisfy the clarity requirement in the sense of rule (2) above may be invalidated, even if the patent was registered before the issuance of the above Supreme Court decision.
When an applicant receives an Office Action including a lack-of-clarity rejection based on rule (2) above, the applicant may take any one of the following approaches to overcome the rejection:
- cancel the rejected product-by-process (PBP) claim;
- rewrite the rejected PBP claim into a method claim defining a manufacturing method (* Note: Under the Japanese patent practice, a manufacturing-method claim covers not only (i) the claimed manufacturing method but also (ii) products actually manufactured by the claimed manufacturing method.);
- amend the rejected PBP claim so that the amended claim does not include any recitation defining a manufacturing method;
- present an argument against the Examiner’s technical rationale based on which the Examiner alleges to find no special reason that made it “impossible” or “utterly impractical” on the filing date of the application to define the claimed product directly by its structure or properties;
- argue/prove that it was “impossible” or “utterly impractical” on the filing date of the application to define the claimed product directly by its structure or properties.