On June 6, 2015, the Japan Patent Office (JPO) announced interim examination guidelines for Product-by-Process (PBP) claims. The points of the announcement are as follows.
- PBP claims are being examined in accordance with the interim examination guidelines as of July 6, 2015.
- The interim examination guidelines apply not only to patent applications to be filed in the future, but also to patent applications currently pending with the JPO.
- The interim examination guidelines will also apply to invalidation trials and opposition cases for patents.
According to the interim examination guidelines, a claim will be rejected as failing to meet the clarity requirement if the Examiner considers that the claim is a PBP claim and that the claim does not represent an exception. Specifically, a rejection for lack of clarity will be notified to the applicant if a product claim contains a process for producing the product at least as a part of the claim, except for cases the JPO examiners can accept as involving "impossible or impractical circumstances."
The applicant who receives the notification of the rejection reason can take the following actions.
- Deletion of the rejected claim
- Amendment to rewrite the PBP claim as a production process claim
- Amendment to rewrite the PBP claim as a product claim which does not contain a production process
- Explanation that the PBP claim involves "impossible or impractical circumstances"
- Counterargument that the claim is not a PBP claim
If the claim is not considered to be a PBP claim, a lack-of-clarity issue will not be raised. Therefore, from the practitioner's view, it would be important to know what claim might be considered to be a PBP claim in the JPO examination. Further, if you would like to obtain patent protection by the PBP claim, it would also be important to know which is advantageous for the applicant to explain, impossible circumstances or impractical circumstances, as well as what facts should be presented before the Examiner.
For further information, please look at the JPO's announcement http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/product_process_C150706_e.htm .