As I have already reported here (http://www.kellerpatent.ch/de/s/news/news-detail/article/japan-gueltigkeit-und-schutzbereich-von-erzeugnisanspruechen-mit-verfahrensschritten.html), the Japanese Supreme Court has ruled that product-by-process claims are unclear and therefore invalid if another product definition is possible. The Japan Patent Office has now amended its examination guidelines. It has provided examples of when such claims are admissible. This concerns the criteria for when a subject matter definition without process features is “impossible” or “practically unrealizable”.
According to the amended examination guidelines, the Japan Patent Office will reject product claims with process features as inadmissible by default.
The Applicant may respond to such a rejection in one of the following ways:
a) Deletion of the disputed claim,
b) Reformulation of the claim into a method claim,
c) Reformulation of the claim into a product claim,
d) Proof of the “impossibility” or “lack of practical feasibility” of an alternative formulation of the claim.
Which of these options is available in each individual case depends on the circumstances. It is of course interesting to see how the criteria under option d) are to be understood. To illustrate how “impossibility” or “lack of practical feasibility” can be demonstrated, the Patent Office has provided the following examples, among others.
Example 1:
The object of the invention is a fragrance dispenser in which a fragrance source is deposited in a layer of activated carbon. The special feature is that the fragrance is not deposited on the surface, but deep inside the activated carbon body. The new fragrance dispenser is thus defined in the patent claim with the following process step: The fragrance dispenser is produced by heating an activated carbon body which is impregnated with a solution containing the fragrance.
This product-by-process claim could be defended with the following arguments: Each activated carbon body has a different structure. It is therefore not possible to specify a minimum depth for the fragrance in the activated carbon body. It would also not be possible to detect the internal state of the activated carbon body using existing methods such as SEM (secondary electron microscopy) or XRD (X-ray diffraction). SEM only detects the surface state and the fragrance would evaporate during the XRD measurement. If the activated carbon body were to be cut, it would only be possible to determine the depth of this single cut. You would have to produce and measure an extremely large number of sections according to the “trial and error” principle, which would not be practically feasible.
Example 2:
The claim is directed to a creamy oil-in-water emulsion for a food product. The special feature is that an oily solution with emulsifiers, a component A and a component B are added to a water phase and that the whole is emulsified.
This product-by-process claim could be defended with the following argument: Due to the claimed versatile manufacturing processes, the structures of the products covered by the claim are so differently designed that they cannot be defined in a concise manner in any other way. It is therefore impossible, or at least impractical, to define the structure of the claimed product without specifying process steps.
Note: Even if it is not impossible that product-by-process claims can be granted in Japan, it is important to think carefully about how such a claim can be defended in the future. It is best to explain the “impossibility” or “lack of practical feasibility” of a product definition without process features in the description for new Patent Applications with product-by-process claims.
Left: https://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/product_process_C151125_e.htm