Interim Handling Procedures for Examinations and Appeals/Trials involving Product-by-process Claims

July 6, 2015
Japan Patent Office

On June 5, 2015, the Supreme Court entered judgments on two cases (Nos. 2012(ju)1204 and 2012(ju)2658) involving product-by-process claims, i.e., ?claims concerning inventions of products reciting manufacturing processes of the products.

The JPO refrained from making its own judgment on the opinion of these decisions by the Supreme Court, while it was still in the process of reviewing how to handle this issue for examinations and appeals/trials.

At this time, the JPO would like to inform you that as of today, it has made a decision on how to handle product-by-process claims for the time-being for examinations and appeals/trials. Accordingly, the interim handling procedures are described below.

The interim handling procedures apply to examinations on patent applications which either have already been filed or which will be filed at a future date. In the same manner, the interim procedures apply to currently pending cases or cases which will be requested and pending at a future date. (Pending cases refer to appeals/trials, oppositions, cases for advisory opinion on the technical scope of a patented invention, etc.; and hereinafter are referred to as "Appeals/trials, etc.") Therefore, Appeals/trials, etc. in which patents have already been granted are subject to these interim handling procedures.

1. Interim Handling of Examinations

Based on the opinion of the judgments by the Supreme Court on the above-mentioned cases, an outline of the interim handling of examinations is provided below:

○ When a claim concerning an invention of a product recites a manufacturing process of the product, the examiner will notify any reasons for refusal whenever the invention of that product is not clear. However, this will not be the case when the examiner can find that the invention involves "impossible or impractical circumstances".

• ● The term "impossible or impractical circumstances" means any circumstances in which it is impossible or utterly impractical to define the product based on its structure or characteristics at the time the subject application for such product was filed.
  
  
• ● The reasons for refusal will be notified to give the applicant an opportunity to assert and prove the existence of "impossible or impractical circumstances", and also an opportunity to make an argument and/or an amendment thereof. These opportunities are given in order to avoid situations in which an already granted patent could include grounds for invalidation, or in which interests of third parties could be unfairly harmed.

○ The applicant can file other responses as arguments against a notice of reasons for refusal in order to resolve such reasons, including:

• (i) deleting any claim concerned,
• (ii) amending any claim concerned into a claim concerning an invention of a process for producing a product,
• (iii) amending any claim concerned into a claim concerning an invention of a product which does not include a manufacturing process, and/or
• (iv) asserting and proving the existence of "impossible or impractical circumstances" based on a written argument.

○ When the applicant asserts and proves the existence of "impossible or impractical circumstances", the examiner will, normally, conclude that "impossible or impractical circumstances" do exist. However, this will not be the case when the examiner has doubts, based on a tangible reason, about the existence of "impossible or impractical circumstances".

2. Interim Handling of Appeals and Trials

○ Appeals/trials, etc. involving product-by-process claims will be examined based on the opinion of the judgments by the Supreme Court, in the same manner as "1. Interim Handling of Examinations".

○ Regarding appeals against any examiner's decision of refusal, when a claim concerning an invention of a product recites a manufacturing process of the product, the appeal examiners will notify the reasons for refusal whenever the invention of a product is not clear. However, this will not be the case when the appeals panel can clearly find, even without inquiring to the subject demandant of an appeal, that "impossible or impractical circumstances" do exist.

3. Revisions to the Examination Guidelines and Examination Handbook

The JPO currently is in the process of revising its Examination Guidelines and Examination Handbook, based on discussions being held by the Working Group on the Patent Examination Standards supervised by the Patent System Subcommittee under the Intellectual Property Committee of the Industrial Structure Council. Accordingly, the issue of product-by-process claims will also be included in the revised Examination Guidelines and Examination Handbook, when they are released.

The revised Examination Guidelines and Examination Handbook are scheduled to be released around the beginning of October 2015. After that time, the issue of product-by-process claims will be determined based on the final provisions stipulated in the revised Examination Guidelines and Examination Handbook.

[Last updated 7 July 2015]

Contacts

(Examination, Examination Guidelines) Examination Standards Office Administrative Affairs Division Japan Patent Office E-mail: PA2A10@jpo.go.jp   (Appeals/trials, etc.) Trial and Appeal Policy Planning Office Trial and Appeal Division Japan Patent Office E-mail : PA6B00@jpo.go.jp