Determination Criteria for Product-by-Process Claims was Standardized by Intellectual Property High Court in Japan

On January 27, 2012, the Grand Panel of the Intellectual Property High Court of Japan rendered a decision in patent infringement litigation, formulating standardized determination criteria for the technical scope of product-by-process claims which define a product by a manufacturing process thereof.

Decision Summary

・As to the technical scope of a product-by-process claim, when it was possible or not difficult to directly define the product by structure or characteristics thereof at the time of patent filing, the technical scope is limited to products manufactured by the manufacturing process recited in the claim.
・When determining the invalidity of a product-by-process claim regarding a defense (patent invalidation defense in infringement litigation) based on Article 104ter of Japanese Patent Law, the claimed invention shall be limited to a product manufactured by the manufacturing process recited in the claim when it was possible or not difficult to directly define the product by structure or characteristics thereof at the time of patent filing.

Commentary

As to the technical scope of the product-by-process claims, doctrines and court decisions in patent infringement litigation have been divided into two theories: the product identity theory that “the technical scope should not be limited to a product defined by the manufacturing process and infringement shall be constituted when the products are identical”, and the manufacturing process limitation theory that “infringement shall not be constituted when the manufacturing processes are different”.

This IP High Court decision indicated the basic principle that the patent right of a product-by-process claim is limited to “products produced by the same process”. In addition, the decision indicated that when “there existed a circumstance where it was impossible or difficult to directly define the product by structure or characteristics thereof at the time of patent filing”, such patent right is not limited to the manufacturing process but is interpreted to cover the same “products” in general.

This decision refers not only to the determination criteria for interpretation of product-by-process claims in patent infringement litigation, but also to the determination criteria for interpretation of product-by-process claim when determining patentability by the Japan Patent Office (collegial body of appeal examiners). Similarly to the determination criteria mentioned above, determination criteria were indicated that the invention should be found to cover the “products” in general without being limited to the manufacturing process recited in the claim when “there existed a circumstance where it was impossible or difficult to directly define the product by structure or characteristics thereof at the time of patent filing”, but the invention should be limited to a product manufactured by the process recited in the claim when there was no such circumstance.

This decision is significant because the interpretation of claims in infringement litigation and the interpretation of claims when determining patentability by the Japan Patent Office are to be unified.

The Japan Patent Office has conducted examinations applying the “product identify theory” so far. At this point, it is unclear whether the Japan Patent Office will revise its examination guidelines for novelty and inventive step of product-by process claims in response to this decision of the Intellectual Property High Court.

This decision confirms that in a case where, for example, a certain compound A is patented from a prior application, it is possible for a product-by-process claim of the same “compound A” to be patented from a later application. Therefore, especially when filing a patent application for an invention of a “compound”, it is recommended to disclose plural manufacturing processes in the original specification so as to prevent a product-by-process claim of another applicant’s later application from being patented. In addition, it is recommended to claim these manufacturing processes in the patent application so that the compounds obtained by these plural manufacturing processes can be covered.