Author(s)

Kotaro Kageyama

Kageyama International Law & Patent Firm, Tokyo, Japan.

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.

Product-by-Process Claims, Process Limitation Theory & Identical Product Theory, An Inventions Formed through Experiments, Formation Stages of an Invention, Abbott Laboratories v. Sandoz, Inc., 566 F.3d 1282 (Fed. Cir. 2009)

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.