The Intellectual Property High Court of Japan (the "IP High Court") recently issued multiple judgments regarding product-by-process ("PBP") claims, which all held that a PBP claim is not indefinite just because a production method is included in the claim. This could be viewed as a trend towards limiting the applicability of the Supreme Court's so-called PBP claim judgment in 2015, which has been criticized for being too strict on PBP claims.
Background
On June 5, 2015, the Supreme Court of Japan issued the so-called PBP claim judgment, which decided on the issue of the scope and validity of PBP claims. The Supreme Court held that, when assessing the scope of a PBP claim for the purpose of deciding infringement/non-infringement, the PBP claim should be construed as covering all products that are identical in structure or property to products that have been produced by the method claimed in the PBP claim, rather than as merely covering products that have been actually produced by the said method.
At the same time, however, the Supreme Court also held that a PBP claim should be found as indefinite, unless the patent owner proves that it was impossible or impractical to identify the claimed product by its structure or property at the time of filing of the patent application (the impossibility/impracticability requirement).
The Supreme Court judgment was criticized that, under the criteria established by the Supreme Court judgment, any patent claim that claims a product could become invalid for indefiniteness just because a method of production (or a portion thereof) is included in the claim. After the Supreme Court judgment, several attempts were made to avoid such a drastic conclusion.
One attempt was to allow amendment of a claim from a product claim to a production method claim. The Japan Patent Office (the "JPO") allowed such an amendment in the Trial Case No. 2016-390005.
Another attempt was to limit the applicability of the Supreme Court judgment by construing a claim as not including a method of production, even though the claim seemingly includes a method of production at first glance. Such an approach was adopted by the JPO's Revised Patent Examination Guidelines issued on March 30, 2016.
Recently, the IP High Court issued multiple judgments that found a patent claim not invalid for indefiniteness, even though the claim seemingly included a method of production. The judgments are explained in detail below.
September 20, 2016 Judgment
In the IP High Court's judgment issued on September 20, 2016 (Case No. 2015 (gyoke) 10242), the claim at issue was, in relevant part, "a tape configured by ... applying an adhesive compound on a thin tape-shaped component."
The IP High Court first admitted that the above claim language could be viewed as involving an elapse of time, and thus could be viewed as a PBP claim at first glance. However, the IP High Court went on to say that, if the structure or the property of the product becomes clear and unambiguous by taking into account the disclosure of the specification and the technical common sense, such a claim should not be viewed as a PBP claim for the purpose of assessing whether the claim is indefinite.
Based on the above criteria, the IP High Court found that the above claim language merely identifies a condition of a tape to which an adhesive compound is applied, and thus is not a PBP claim. Accordingly, the IP High Court held that the claim is not indefinite.
September 29, 2016 Judgment
In the IP High Court's judgment issued on September 29, 2016 (Case No. 2015 (gyoke) 10184), the claim at issue was, in relevant part, "a candle characterized in that ... a wick is exposed by removing a wax so that the remaining wax becomes 19~33%."
The IP High Court held that, if the method of production clearly identifies the structure or the property of the product, the patent owner is not required to prove that the impossibility/impracticability requirement is met.
Based on the above criteria, the IP High Court found that the above claim language merely identifies a condition of a candle in which a wax was removed and the remaining wax became 19~33%. Accordingly, the IP High Court held that the claim is not indefinite, even though the patent owner did not prove that the impossibility/impracticability requirement is met.
November 8, 2016 Judgment
In the IP High Court's judgment issued on November 8, 2016 (Case No. 2016 (gyoke) 10025), the claim at issue was a rolled plant seeding produced by multiple steps, including rolling a seeding mat together with a sheet and making it into a cylinder shape.
The IP High Court held that, if the structure or the property of the product becomes clear and unambiguous by taking into account the disclosure of the specification and the technical common sense, such a claim should not be viewed as a PBP claim for the purpose of assessing whether the claim is indefinite or not.
Based on the above criteria, the IP High Court found that the steps stated in the claim can be understood as identifying the structure or the property of the rolled plant seeding, and thus that the claim is not a PBP claim.
Comment
The criteria adopted by the three IP High Court judgments are essentially identical to each other, although there is a slight difference in the reasoning.
In the first case, it seems possible to adopt a construction that the claim does not include a production method in the first place. However, in the second and third cases, the claims clearly include production methods. Thus, if we simply apply the criteria established by the Supreme Court judgment, it seems difficult to avoid the conclusion that the claims are indefinite. Nevertheless, the IP High Court held that these claims are not indefinite, as long as the structure or the property of the product is clear and unambiguous.
It is quite interesting to see whether this trend will continue in the future.
Written by: Mr. Yusuke Inui (Attorney at Law, Patent Attorney)