BLR> Vol.5 No.2, June 2014

Necessity, Criteria (Requirements or Limits) and Acknowledgement of Product Identity of Claims for Product Described by Its Manufacturing Process (Product-by-Process Claims)

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ABSTRACT

It is inevitably necessary to admit Product-by-Process claims (PBP claims). To make them effective, their requirements and limits should be clarified, and the methods to define the product and acknowledge the identity of the product in their practical exercise should be studied. The author has suggested the following two view points to examine inventions, 1) considering the difficulty to predict an invention from the tentative principles and 2) categorizing inventions into the physicalobject type and the material type. Based on these two viewpoints, this paper will show the case where the PBP claims are inevitable. From the above and its opposite side, the criteria for the PBP claims will be proposed by analyzing the category of inventions, requirements of manufacturing process steps and the limits of admitting the PBP claims. The following theory will be composed of: the scope of the PBP claims should include their identical product to the product described in the claim through the process of the patent applications and infringement cases because of the legal stability. Then, the methods of determining the time to define the product by way of structure or properties and acknowledging the identity of the product, in the practical exercise of the claims will be suggested.

Cite this paper

Kageyama, K. (2014). Necessity, Criteria (Requirements or Limits) and Acknowledgement of Product Identity of Claims for Product Described by Its Manufacturing Process (Product-by-Process Claims). Beijing Law Review, 5, 114-129. doi: 10.4236/blr.2014.52011.

References

[1] Abbott Laboratories v. Sandoz, Inc. (2009). 566F.3d1282 (Fed.Cir.2009); 90U.S.P.Q. 2d1769.
[2] Grant, G., & Smyth, D. (2010). The Protection Conferred by Product-by-Process Claim. European Intellectual Property Review, 32, 635-642.
[3] HanreiJiho (1999). No. 1671, 137-144. (“HanreiJiho” and “Hanrei Times” Are the Names of a Japanese Case Law Journal).
[4] Hanrei Times (1999). No. 990, 244-251. (“HanreiJiho” and “Hanrei Times” Are the Names of a Japanese Case Law Journal).
[5] HanreiJiho (2012). No. 2144, 51-80 (“HanreiJiho” and “Hanrei Times” Are the Names of a Japanese Case Law Journal).
[6] Kageyama, K. (2012). The Practice of Recognizing an Inventor/Joint Inventors and Calculation of Contribution Ratios among Joint Inventors. Journal of Intellectual Property Law & Practice, 7, 590-603.
http://dx.doi.org/10.1093/jiplp/jps090
[7] Kirin-Amgen Inc v. Hoechst Marion Roussel Ltd. (2004). UKHL 46. Japanese Translation in “December 2004 edition of European IP News”.
[8] Macedo, C. R. (2009). Infringement of Product-by-Process Claims in US Clarified. Journal of Intellectual Property Law & Practice, 4, 608-611.
http://dx.doi.org/10.1093/jiplp/jpp119
[9] Nanjo, M. (2002). Construction of Rights Based on Product-by-Process Claims. Patent, 55, 21-28.
[10] Shitara, R. (2013). Studies on Acknowledgment of Content and Claim Construction of Product-by-Process Claim—In Response to the Decision of Intellectual Property High Court Special Division on January 27, 2012. Legal Principles and Proposal on Intellectual Properties; Memoirs of Celebration in Honor of Former Judge Toshiaki Makino’s Eightieth Birthday. (Nobuhiro Nakayama, Hiroshi Saito, and Toshiaki Imuraed. Seirinshoin), 295.

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