Supreme Court’s Decision Relating to Product-By-Process Claims

　On June 5, 2015, the Supreme Court of Japan reversed the decision of the Grand Panel of the Intellectual Property High Court regarding a case in which the determination of the technical scope of a patented invention of a product the claim of which recites a method for manufacturing the product was in dispute, and remanded the case to the Intellectual Property High Court [1].

　Regarding the technical scope of the product-by-process claim, the Supreme Court held that the technical scope of a product-by-process claim should be determined as covering a product having the same structure, property, or the like as a product manufactured by the manufacturing method recited in the claim, reversing the decision of the Intellectual Property High Court, which is the appellate court, which had previously held that the technical scope of a product-by-process claim should be limitedly determined, in principle, as covering a product manufactured by the manufacturing method recited in the claim (Grand Panel Decision [2]).

　The Supreme Court also held that a product invention shall usually be directly defined by explicitly describing its structure or property; however, only when there is a reason that it is not possible, or is entirely impractical to directly define the product by its structure or property at the time of filing of the application, do product-by-process claims satisfy the clarity requirement.

　On June 10, 2015, the Japan Patent Office announced that a decision relating to the Supreme Court Decision will not be made in examinations or appeal examinations for the time being until early July, as they are discussing how to conduct examinations based on the Supreme Court Decision.

[1] Supreme Court Decision
Case No. 2012(Jyu)1204
Case of Seeking Injunction against Patent Infringement
http://www.courts.go.jp/app/files/hanrei_jp/145/085145_hanrei.pdf (Japanese)

[2] Intellectual Property High Court Grand Panel Decision
Case No. 2010(Ne)10043
Appeal Case of Seeking Injunction against Patent Infringement
http://www.ip.courts.go.jp/vcms_lf/10043_1.pdf (Japanese)
http://www.ip.courts.go.jp/eng/vcms_lf/2010_10043.pdf (English)

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