1. Great Change to JPO Examination on Product-by-Process Claims NOBUTAKA YOKOTA Japan Patent Attorneys Association International Activities Center October 20, 2015 AIPLA Annual Meeting 2015 IP Practice in Japan Committee Pre-Meeting Seminar

2. 2 Supreme Court Decision on June 5, 2015 JPO Interim Guidelines Examination under new Guidelines Impact on Existing Patents Further information Contents

3. 3 Infringement stage Identical Product Theory  IP High Court decision reversed Product-by-Process (PBP) claim construed broadly Examination stage Identical Product Theory  JPO standard unchanged Clarity requirement is met only when the application involves special circumstances  Strait gate to PBP claims! Supreme Court Decision on June 5, 2015

4. 4 JPO responded very quickly! June 5, 2015 Supreme Court Decision July 6, 2015 Interim Examination Guidelines announced October 1, 2015 New Examination Handbook came into effect Interim Guidelines About one month!

5. 5 1. No limitation to technical field Applicable not only to biotech and chemical cases but also to mechanical and electrical cases 2. Not limited to conventional PBP claims Claims having “process-like” expression would be treated as PBP claims 3. Retroactive Applicable to the pending applications as well as the existing patents Points to note

6. 6 Examination under new Guidelines [Examiner] PBP claim ? [Examiner] Lack of Clarity ! [Applicant] Special circumstances, Amendment, Counterargument Yes Great Change !!

7. 7 Example of PBP claim Claim including expression relating to time course (e.g., stepwise expression) JPO’s example –A polarizer formed by application to a supporting body, and irradiation at a temperature of alignment with the liquid crystal phase. What is a PBP claim? PBP claim !

8. 8 Example of PBP claim Claim including expression relating to specific conditions (e.g., reaction conditions) JPO’s example –A polymer C acquired by reacting a monomer A with a monomer B at 50 ˚ C. What is a PBP claim? PBP claim !

9. 9 Example of PBP claim Claim quoting a process for producing the product (e.g., product claim dependent of process claim) JPO’s example –A rubber composition which has been produced by a method according to any one of claims 1 to 8. What is a PBP claim? PBP claim !

10. 10 Example of non-PBP claim Claim just specifying the structure or characteristics by showing condition or state JPO’s example –Isolated cell –Extracted product –A tire which has been made by a rubber composition. What is a PBP claim? Non-PBP claims !

11. 11 You receive OA relating to PBP claim … If you wish PBP claim protection … Good news!?

12. 12 You should demonstrate that there were impossible circumstances or impractical circumstances! How should the applicant respond to clarity rejection?

13. 13 Technologically impossible to analyze structure or characteristics of the product at the filing date Utterly impractical to specify structure or characteristics of the product due to excessive costs or time What are special circumstances? Recommendation!

14. 14 You receive OA relating to PBP claim … If you have no interest in PBP claim protection … Bad news!?

15. 15 You should amend the claims and/or submit counterargument! How should the applicant respond to clarity rejection?

16. 16 Cancel the rejected claim Rewrite the rejected claim as a production process claim  Restriction of amendment relaxed Rewrite the rejected claim as a product claim not containing a process expression or a process-like expression  Next slide Counterargument that the claim is not a PBP claim How should the applicant respond to clarity rejection?

17. 17 Lacking clarity (JPO’s example) An apparatus having an anchorage formed by inserting a bolt provided with a convex portion into a hole provided with a concave portion so that the concave portion and the convex portion are engaged, and screwing a nut into an end portion of the bolt. How should the applicant amend the rejected claim?

18. 18 Meeting clarity requirement (JPO’s example) An apparatus having an anchorage formed such that, into a hole provided with a concave portion, a bolt provided with a convex portion is inserted in a state in which the concave portion and the convex portion are engaged, and a nut is screwed into an end portion of the bolt. How should the applicant amend the rejected claim?

19. 19 Lots of patents have product claims with process expressions or process-like expressions Lots of patens face risk of invalidation ! Options –Amendment –Special circumstances –Counterargument Impact on existing patents

20. 20 If your patent has only one independent claim that is a PBP claim … –Change of claim category possible? –Deletion of process or process-like expression(s) possible? Impact on existing patents

21. 21 Interim Guidelines (English) –http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/pro duct_process_C150706_e.htmhttp://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/pro duct_process_C150706_e.htm JPO Examination Handbook (English) –http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/file s_handbook_sinsa_e/all_e.pdf (See Part II, Chapter 2, Sections 2203-2205)http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/file s_handbook_sinsa_e/all_e.pdf Further information

22. THANK YOU FOR YOUR ATTENTION! NOBUTAKA YOKOTA FIELDS IP Attorneys nobutaka.yokota@fields-ip.jp