The Examination Handbook for Patent and Utility Model of the Japan Patent Office (JPO) was updated on March 14, 2018. The update includes the introduction of case law (court decisions) related to the clarity of a product-by-process (PBP) claim, the disclosure of prior art documents, and the grace period.
In the case law regarding the disclosure of prior art documents (2017 (Gyo-ke) 10072), newly added in Annex D, Section 4 of the Examination Handbook of the JPO, and allotted the case number (52)-6, the issue at stake was whether a polymethylsilsesquioxane (PMSQ) particle obtained by the process of Example 1 of D1 has features stated in Claim 1 of the opposed patent, also directed to a PMSQ particle.
The Opponent submitted results of an alleged reproduction of this process to show that the thusly obtained particle indeed has these features; however, the Patentee counterargued that this should not be regarded as a reproduction, since the disclosure of this process in D1 allows for a certain degree of freedom, and a specific choice in this regard was made in the Opponent’s experiment. The Opponent argued that filling such a gap in D1 with something within common technical knowledge should not be a reason to not regard this as a reproduction.
The IP High Court decided that the Opponent’s experiment should not be regarded as a reproduction, in view of their determination that due to a specific choice in regards to the above-mentioned degree of freedom, it is unclear whether the same starting material as that of D1 was used in this experiment.
For more information, please visit the JPO website at the following link:
http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/handbook_sinsa_e.htm