Examination on Product-by-Process (PBP) Claim｜IP Laws & Practices

The Supreme Court handed down a leading decision relating to the construction of the scope of a PBP claim on June 5, 2015, which ruled that a PBP claim covers all the products having the same structure or properties as a product produced by the process defined in the claim even if the actual process for producing the product is different from the process in the claim, and that in the case of a PBP claim, clarity requirement (provided in Art. 36(6)(ii) of Patent Law) is satisfied only when there is a reason that makes it impossible or entirely impractical to directly define the claimed product by its structure or properties at the filing of a patent application.

Following the Supreme Court's decision, the JPO has just announced on July 6, 2015, that the examination on PBP claim will be made as follows:

(1) The Examiner will regard a PBP claim as being unclear to issue an office action except that she/he can recognize that there is a reason that makes it impossible or entirely impractical to directly define the claimed product by its structure or properties at the filing of a patent application.
(2) In order to overcome the above office action, the Applicant may address it as follows:
(a) Cancelling the objected PBP claim;
(b) Converting the objected PBP claim to a method claim for manufacturing the product;
(c) Modifying the objected PBP claim to a product claim including no process; or
(d) Arguing and proving that there is the reason.
(3) In the above case (d), the Examiner will decide that there is the reason unless the Examiner can find any reasonable doubt on the argument and the proof.

This applies to patent applications to be filed hereafter, pending patent applications, and granted patents to be examined in an invalidation trial and/or an opposition, as well.

The Examination Guideline is now under the revision and will be officially revised around October, 2015.

Kawaguti & Partners