On June 10, 2015, the Japan Patent Office (JPO) announced that it started looking into revising the Examination Guidelines regarding the Product-by-Process claim (PBPC) in light of the Supreme Court decision made on June 5, 2015.
The Supreme Court ruled that the PBPC is considered to be satisfying the clarity requirement only when it is impossible or totally impractical to directly identify the product by its structure or properties. On the other hand, in connection to the clarity requirement, the JPO Examination Guidelines are rather relaxed with regard to the manner PBPCs are defined and treated. Further, the Supreme Court and Chief Judge Chiba commented in the decision that the PBPCs will satisfy the clarity requirement under the exceptional circumstances. Therefore, there is a high probability that the Examination Guidelines will be revised so that the clarity requirement will be applied to the PBPCs in a more rigorous manner.
Since the result of the study will be announced by the beginning of July, the examination of patent applications containing PBPCs is suspended until then. Should a revision become necessary, the JPO will need to collect public comments on the proposed Examination Guidelines thus extending the suspension.
Therefore, if your applications or your clients' applications include PBPCs, you should be aware of the possibility that the clarity requirement will be applied to such applications more strictly and that their examination may be delayed.