Supreme Court Decision (2015 (Ju) No.1204, 2658)
The Supreme Court reversed the Intellectual High Court Grand Panel’s decisions regarding a product-by-process claim.
There have been two conflicting interpretations of the scope of product-by-process claims in Japan. One interpretation is that the scope of the claim is limited to such products as manufactured by the process set forth in the claim while the other is that, regardless of whether a product is manufactured by the process set forth in the claim or not, it falls within the scope of the claim as long as it is the same as the claimed product in terms of its structure and character.
The Intellectual Property High Court Grand Panel, on January 27 and August 9, 2012, held that the scope of a product-by-process claim shall be limited to such products as manufactured by the process set forth in the claim unless there were circumstances where it was impossible or difficult for an applicant to identify the product by its structure or character.
However, the Supreme Court reversed these Intellectual Property High Court rulings, and held that the scope of a product-by-process claim is not limited to such products as manufactured by the process set forth in the claim and that, regardless of whether a product is manufactured by the process set forth in the claim or not, it falls within the scope of the claim as long as it is the same as the claimed product in terms of its structure and character. The Supreme Court also ruled that a product-by-process claim could satisfy the clarity requirement of a claim, that is “the invention for which a patent is sought is clear” (section 36 (6) ii of Patent Act), only when there are circumstances where it is impossible or totally impracticable for the product to be identified by the structure or character at the time of filing. The Supreme Court remanded the cases to the Intellectual Property High Court.
While the scope of the claim is interpreted more broadly based on these Supreme Court’s decisions, it is very likely that many of the granted patents and pending patent applications comprising the product-by-process claims will be invalid or rejected due to a claim’s lack of clarity. This will have a big impact on the enforcement of the patents and the filing practice.