home > Topics > JPO’s Interim Guidelines on Product-by-Process Claims


JPO’s Interim Guidelines on Product-by-Process Claims

The JPO issued interim guidelines for handling so-called “Product-by-Process claim”, which is a claim specifying a product invention by a process for manufacturing the product (hereinafter, “PBP claims”), in view of Japanese Supreme Court decision dated June 5, 2015, Nos. Heisei 24 (ju) 1204 and 2658.

The Supreme Court decision provides a novel interpretation: a claim of a product invention that includes a process for manufacturing the product meets the clarity requirements under Patent Law Article 36(6)(ii) only when there are circumstances in which directly specifying the product by its structure or properties at the time of filing was impossible or impractical.

This leads to a possibility of allowing Correction of PBP claims, specifically, for example, changing a product invention to a method invention, in an opposition stage, which was previously not allowed before the Supreme Court decision.

<Summary of the JPO’s guideline, and possible actions>
Under Patent Law Article 126(1)(i)-(iv), Correction is limited to the following purposes:
 (i)  Restriction of scope of claim(s);
 (ii)  Correction of errors or incorrect translations;
 (iii) Clarification of an ambiguous statement; and
 (iv)  Rewriting claim(s) that refers to other claim(s) into independent form without referring to the other claim(s)
Additionally, under Patent Law Article 126(6), Correction shall not substantially extend or change the scope of claims.

Before the JPO’s interim guidelines, there was no clear interpretation provided as to which of the aforementioned (i)-(iv) Correction of PBP claims to specify a product by its structure or properties or Correction of PBP claims to change them to include a method for manufacturing the product would satisfy.

Now that the JPO’s interim guidelines were introduced, JPO has provided their view that the aforementioned Corrections of PBP claims satisfy Patent Law Article 126(1)(iii), i.e., “Clarification of an ambiguous statement”.

It should be noted that Correction must meet the above-explained requirement under Patent Law Article 126(6). Taking also into consideration of this requirement, in addition to the requirement under Patent Law Article 126(1)(i)-(iv), whether Correction of PBP claims are acceptable by JPO may be rather indefinite, or JPO does not explicitly provide their interpretation thereon.

In this regard, JPO announced that they will study and analyze opposition cases in which Correction of PBP claims is requested, and will provide JPO’s determination on acceptance of the Correction of PBP claims considering specific circumstances of each opposition case.

We will review such JPO’s determination and provide our proposals that would best suit our clients’ cases with PBP claims.


For more details, please refer to the JPO’s website, “Interim Handling Procedures for Examinations and Appeals/Trials involving Product-by-Process Claims”.

https://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/product_process_C150706_e.htm

If you have any inquiries concerning this matter, please feel free to contact us.

IP News-Patent/Utility Model

[ IP News-Patent/Utility Model ] JPO’s Interim Guidelines on Product-by-Process Claims
[ IP News-Patent/Utility Model ] Patent Opposition System
[ IP News-Patent/Utility Model ] Time Requirements for Filing Divisional Application
[ IP News-Patent/Utility Model ] Interrogation using Examination Report by the Examining Division

pagetop

home > Topics > JPO’s Interim Guidelines on Product-by-Process Claims