Handling Procedures for Examinations involving Product-by-process Claims

September 28, 2016
Japan Patent Office

1. Overview

On June 5, 2015, the Supreme Court entered judgments on two cases (2012 (Ju) 1204 and 2012 (Ju) 2658) involving product-by-process claims, i.e., claims for inventions of products reciting manufacturing processes of the products. The Japan Patent Office (JPO) has published handling procedures in accordance with the Supreme Court decisions as described below.

○ When a claim concerning an invention of a product recites a manufacturing process of the product, the examiner will notify a reason for refusal in accordance with the Supreme Court decisions. 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 directly based on its structure or characteristics at the time of the filing of the application.
  
  
• ● The reasons for refusal will be notified to provide applicants with opportunities to argue and verify the existence of "impossible or impractical circumstances" and/or amend claim(s) (see below). These opportunities will be given in view of avoiding situations in which granted patents could include grounds for invalidation, or in which interests of third parties could be unfairly harmed.

○ The applicant can also respond to a notice of reasons for refusal by

• (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 recite a manufacturing process,
  apart from arguing and verifying the existence of "impossible or impractical circumstances" based on a written opinion.
• (iv) asserting and proving the existence of "impossible or impractical circumstances" based on a written argument, and/or
• (v) arguing to the effect that any claim concerned does not fall under a "case where a claim concerning an invention of a product includes a manufacturing method for a product ".

○ When the applicant argues and verifies 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".

Regarding the details of handling procedures for examinations, the JPO has published documents successively as shown in the following item 2. Then, the JPO reviewed the handling procedures along the document “Background and essential point of revision of the relevant parts in Examination Handbook on Clarity Requirement for Product-by-process claims (published on March 30, 2016）（PDF:50KB）”, and renewed Examination Handbook for Patent and Utility Model accordingly on April 1, 2016. Please refer to the revised Examination Handbook regarding the details of handling procedures for examinations on or after that date.

2. Document

●Interim Handling Procedures for Examinations and Appeal/Trials involving Product-by-process Claims (published on July 6, 2015)

● Examination Handbook for Patent and Utility Model in Japan （published on September 16, 2015）

※The details of the Interim Handling Procedures have been reflected in the revised “Examination Handbook for Patent and Utility Model” (see 2203-2205) on October 1, 2015 (published on September 16, 2015）

• ○（Archived version）2203 Points to Note in Examination When a Claim Concerning an Invention of a Product Includes a Manufacturing Method for a Product
• ○（Archived version）2204 Determination Regarding Whether or Not “When a Claim Concerning an Invention of a Product Includes a Manufacturing Method for a Product” is Relevant
• ○（Archived version）2205 Determination Regarding “Impossible/Impractical Circumstances” in An Examination When a Claim Concerning an Invention of a Product Includes a Manufacturing Method for a Product

● Examples of arguments and verification presented by applicants involving “impossible or impractical circumstances” concerning product-by-process claims (published on November 25, 2015) (PDF:137KB)

※The Examination Handbook did not yet contain any example of arguments and verification which could be considered to show the existence of “impossible or impractical circumstances”. On November 25, 2015, the JPO has now prepared and hereby publishes reference examples of arguments and verification which can be considered, in patent examination, to show the existence of “impossible or impractical circumstances”, in light of the cases in which arguments and verification for such circumstances were presented.

● Addition of examples not considered to be product-by-process claims (published on January 27, 2016) (PDF:65KB)

※While Section 2204 of the Examination Handbook shows types of examples considered to be PBP claims and those not considered to be PBP claims, the JPO has identified, and hereby publishes (January 27, 2016), further examples to be added to the Section as those not considered to be PBP claims, in light of terms used relatively frequently in actual patent applications as well as expressions requested by users for inquiry.

● Background and essential point of revision of the relevant parts in Examination Handbook on Clarity Requirement for Product-by-process claims (published on March 30, 2016）（PDF:50KB）

※After due consideration of the backgrounds described above, the Examination Handbook, sections 2203-2205 will be revised on April 1, 2016 as shown below.

● Examination Handbook for Patent and Utility Model in Japan （published on March 30, 2016）

※The JPO has reviewed its examination practices as explained in the aforementioned document “Background and summary of the revision of relevant parts in Examination Handbook on Clarity Requirement for Product-by-process Claims published on March 30, 2016. The review is reflected in the revised Examination Handbook for Patent and Utility Model also published on that date. The revised Examination Handbook is to be applied to examinations on or after April 1, 2016.

※On September 28, 2016, added an operative example (Animal and plant obtained by the breeding method such as crossbreeding（Reference Decision: Appeal 2014-10863）) to the Examination Handbook, sections 2205.

• ○（The latest version）2203 Points to Note in Examination When a Claim for an Invention of a Product Recites the Manufacturing Process of the Product
• ○（The latest version）2204 Determination on Whether or Not “When a Claim for an Invention of a Product Recites the Manufacturing Process of the Product” is Relevant
• ○（The latest version）2205 Determination on “Impossible/Impractical Circumstances” in Examination When a Claim for an Invention of a Product Recites the Manufacturing Process of the Product

[Last updated 28 September 2016]

Contacts

(Examination, Examination Guidelines) Examination Standards Office Administrative Affairs Division Japan Patent Office E-mail: PA2A10@jpo.go.jp