The Supreme Court decision on interpretation of Product-by-process claims (Case No. 2012 (ju) 1204; Date of judgement: June 5, 2015)
December 16,2016
1. In Japan, a product invention can be identified in a claim by its production process (product-by-process claim). In this case, the Supreme Court judged an interpretation of a technical scope of the product-by-process claim in patent-infringement litigation. Furthermore, the Supreme court decision had an important impact on the prosecution of the product-by-process claim.
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6. Our comments
(1) The Supreme Court judged that a product-by-process claim is interpreted as covering an accused product that is indistinguishable from the patented product as a product, although the accused product was produced by a production process that is different from the claimed production process.
It is worth noting that the Supreme Court newly judged the Clarity Description Requirement for the product-by-process claim, despite that the Clarity Description Requirement of the product-by-process claim was not the point in dispute in the past court procedures.
(2) The point at issue in this case is an interpretation of a technical scope of a product-by-process claim in patent-infringement litigation. In another case (Case No. 2012 (ju) 2658) relating to the validity of the same patent as that of the present case, the Supreme Court judged that, in terms of determining the validity of a product-by-process claim, the claim should be interpreted in the same manner as in determining the technical scope of the product-by-process claim.
※本稿の内容は，一般的な情報を提供するものであり，法律上の助言を含みません。
執筆：弁護士・弁理士 高石秀樹（第二東京弁護士会）
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