The JPO tentatively decided how to handle product-by-process claims during examinations and appeals/trials.
On June 5, 2015, the Supreme Court entered judgments in two cases (Nos. 2012(ju)1204 and 2012(ju)2658) involving product-by-process claims, i.e., product claims reciting manufacturing processes of the products.
Based on the judgements of the Supreme Court of July 6, 2015, the JPO decided how to handle product-by-process claims for the time-being for examinations and appeals/trials. The interim handling procedures are as follows:
1. Interim Handling of Examinations
(1) When a claim concerning an invention of a product recites a manufacturing process of the product, the examiner will issue a rejection whenever the claim is not clear. However, this will not be the case when the examiner finds that the product-by-process form is necessary because 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.
– When the claim is rejected for lack of clarity, the applicant will be given an opportunity to assert and prove the existence of “impossible or impractical circumstances” and an opportunity to make an argument and/or an amendment. 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.
(2) The applicant can file responses other than arguments against a notice of reasons for rejection to resolve the rejection, including:
(i) delete any claim concerned,
(ii) amend any claim concerned into a process claim for producing the product,
(iii) amend any claim concerned into a product claim that does not include a manufacturing process, and/or
(iv) assert and prove the existence of “impossible or impractical circumstances” based on a written argument.
(3) When the applicant asserts and proves the existence of “impossible or impractical circumstances”, the examiner normally will 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
(1) Appeals, trials and other procedures involving product-by-process claims will be examined based on the opinion of the judgments by the Supreme Court, in the same manner as the above “Interim Handling of Examinations.”
(2) Regarding appeals against an examiner’s decision of rejection, when a product claim recites a manufacturing process of the product, the appeal examiners will reject the claim based on lack of clarity. However, this will be not the case when the appeals panel can clearly finds, even without inquiring to the subject of the appeal, that “impossible or impractical circumstances” exist.
Please also refer to the following JPO’s article: