1. Excerpts from the Judgement (Clarity requirement for product by process claims (PBP claims))
“Even in the case where a manufacturing method of a thing is described in the claims of a patent for an invention of a thing, unlike the above general case, if it is unambiguously clear at the time of filing from the claims, specification, drawings, or technical common sense what structure or characteristics the things manufactured by the said manufacturing method represents, it is considered that the third party’s interest is not unjustly prejudiced. Therefore, even in the absence of impossible or impractical circumstances, it is concluded that there is no violation of the clarity requirement.
The specification does not describe or suggest anything about the accuracy of the inner surface of electroformed tubes produced by the manufacturing method of this invention 6 and the corrected invention 9. It cannot be said that the structure or characteristics of electroformed tube produced by the manufacturing method of this invention 6 and the invention 9 are unambiguously clear.
In order for this invention to be considered clear, it must be impossible or impractical to specify the electroformed tube by its structure or characteristics at the time of filing the application, and the defendant admits that such circumstances do not exist.”
2. Supreme Court Case on PBP Claims in case No. 1204 (Ju) 2012 […Pravastatin Sodium…]
Even a method of manufacturing a product is described in the claims of a patent for a product invention, it is reasonable to conclude that the technical scope of the patented invention is determined as a product having the same structure, characteristics, etc. as the thing manufactured by the said method of manufacturing.
It is reasonable to conclude that where a method of manufacturing the product is recited in the claims to a patent for a product invention, the case in which the description of the claims conforms to the requirement of “the invention being clear” as defined in Article 36, Paragraph 6, section 2 of the Patent Act is limited to the circumstances where it is impossible or impractical to directly identify the subject matter by its structure or characteristics at the time of filing.
3. Some considerations
The Supreme Court’s decision in case No. 1204 No. 1204 (Ju) 2012 […Pravastatin Sodium…], which held on the clarity requirement for PBP claims (product by process claims) required the so-called “impossible and impractical circumstances” for the distinctiveness of the invention of the product specified by the method of manufacture. There was concern that simply applying this standard would result in numerous existing patents violating the clarity requirement, but a subsequent decision of Intellectual Property Hight Court affirmed the clarity requirement based on the logic that the “impossible or impractical circumstances” indicated by the Supreme Court decision were unnecessary for inventions of products specified ty a manufacturing method since these were not PBP claims as referred to in the Supreme Court decision.
Among the cases, this decision [the electroformed tube case] has attracted attention because it is the first and only lower court case to require “impossible and impractical circumstances” with regard to the requirement of clarity of a product invention specified by a manufacturing method, and to hold that the requirement of definiteness and the requirement of definiteness was violated.
The previous decision of the Intellectual Property High Court and this [electroformed tube] case decision are the same as the norm that if “it is unambiguously clear from the claims, specification, drawings, and technical common sense that the structure or characteristics of the product to be manufactured by the said manufacturing method are represented at the time of filing,” “the interest of a third party is not unreasonably impaired, so even if there are no impossible or impractical circumstances, this is not a violation of the clarity requirement,” thus, they differ in the application of whether or not it is “unambiguously clear from the claims, specification, drawings, or technical common sense.”
However, the [electroformed tube case] judgment in this case required impossible and impractical circumstances because it is not unambiguously clear that there is no description in this invention of any technical relationship between these methods and the inner surface accuracy of the electroformed tubes manufactured, and there is no description or suggestion that the manufacturing method of this invention (included in the method described in (iii) above) … even implies a specific inner surface accuracy that is different from electroformed tubes manufactured by other methods; on the other hand, in each of the cases decided by the Intellectual Property High Court, such technical matters were not described in the specification nor was such a specific finding made. Considering the above, it is not necessarily clear why each invention in the previous IP High Court decisions is unambiguously clear, while the invention in this [electroformed tube] case decision is distinguished as not unambiguously clear, and the clarity requirement for PBP claims seems to have become muddled.
Writer: Hideki TAKAISHI
Supervising editor: Kazuhiko YOSHIDA
Hideki TAKAISHI
Attorney at Law & Patent Attorney
Nakamura & Partners
Room No. 616, Shin-Tokyo Building,
3-3-1 Marunouchi, Chiyoda-ku,
Tokyo 100-8355, JAPAN