Influences of the Supreme Court Decisions in June 2015 on the Practice of Product-by-Process (PBP) Claims

ABSTRACT
Almost two years have passed since the Supreme Court of Japan (SCJ) rendered controversial decisions concerning the claim construction and clarity requirement of product-by-process (PBP) claims (2012 (ju) No.1204 and No.2658, both handed down on June 5, 2016; so-called “Pravastatin” cases), which have radically altered the environments surrounding PBP claims in Japan. This article summarizes changes in the JPO’s examination practice after the SCJ decisions, and explains important points for the patent applicants/holders to remember in terms of patent prosecution and litigation practice relating to PBP claims.