Korean Supreme Court Sets Up New Standard for Claim Construction of Product-by-Process Claims
|
THE KOREAN SUPREME COURT PROVIDES CLARITY ON PRODUCT-BY PROCESS CLAIMS
| 1. Patentability of Product-by-process claims |
| A. |
Summary of Decision |
| |
Patentability of product-by-process claims shall be based solely upon the product itself, in which the structure or characteristics/property of the product is specified by the claim limitations including the process to make the product. (Korean Supreme Court Case No. 2011 Hu 927 (January 22, 2015) En Banc Decision) |
| |
Prior to the present Supreme Court decision, the Korean Supreme Court precedent ruled that the inventiveness of product-by process claims should be determined based on the product claimed over the prior art without considering the process, unless the claimed product can only be defined by the process steps by which the product is made, or where the process steps can impart distinctive structural characteristics of the product. See Korean Supreme Court Case No. 2004 Hu 3416 (June 29, 2006) |
| B. |
Implications of the Present Decision |
| |
In the en banc decision, the Korean Supreme Court held explicitly that the novelty and inventiveness of product-by-process claims shall be determined based solely upon the claimed product over the prior art, in which the structure or characteristics/property of the product is specified by claim limitations including the process to make the product. The Korean Supreme Court clarified that the patentability of the product in product-by-process claims does not depend on its process to make the product and process limitations are construed only as means to specify the structural features or the characteristics/property of the product.
By overruling previous contradictory precedent, the Korean Supreme Court removed ambiguity and announced the universal rule for determining the patentability of product-by-process claims, stating that the process steps in product-by process claims do not serve as claim limitations even though the invention could not otherwise be adequately defined or the product could only be defined by reference to the process which the product is made. In light of the present Supreme Court en banc decision, the Korean Intellectual Property Office (KIPO) is expected to apply same Examination Guidelines for determining the novelty and inventiveness of product-by-process claims, regardless of special circumstance where the invention could not otherwise be adequately defined or the product could only be defined by reference to the process which the product is made.
Afterward, the patent applicants should be aware that the patentability of product-by-process claims cannot be asserted based on the novelty/inventiveness of the process because the process limitations are only construed as means to specify the structure or characteristics/property of the product, unless the structure or characteristics/property of the product specified by the process limitations are novel/inventive over the prior art. In this regard, whether the novel/inventive structure or characteristics/property of the product can be drawn by the unique process will be key factors to determine the patentability of product-by-process claims. |
| 2. Infringement of Product-by-process claims |
| A. |
Summary of Decision |
| |
Product-by-process claims in claim interpretation should be construed the same way for patentability and for infringement. (Korean Supreme Court Case No. 2013 Hu 1726 (February 12, 2015))
Prior to the present decision, the Korean Supreme Court did not rule on how product-by-process claims should be construed for purposes of infringement.
|
| B. |
Implications of the Present Decision |
| |
The present decision has significance in that the Korean Supreme Court has established a rule of claim construction to determine the scope of product-by-process claims for the purposes of infringement in patent infringement trial and patent scope confirmation trial
In the present decision, the Korean Supreme Court states that product-by-process claims must be construed the same way for determining patentability and infringement. (See Korean Supreme Court Case No. 2011 Hu 927 (January 22, 2015) en banc Decision) Accordingly, determining the scope of product-by-process claims for the purposes of infringement shall be based solely upon the claimed product, in which the structure or characteristics/property of the product is specified by claim limitations including the process to make the product and process limitations are construed only as means to specify the structure or characteristics/property of the product.
However, the Korean Supreme Court left room for different interpretations, stating that product-by process claims may be construed to be limited by process recited in the patent claims if the scope of claims construed is clearly overbroad and unreasonable in view of the invention disclosed in the specification.
Consequently, for patent infringement cases with product-by-process claims, it is now even more important to identify the product specified by claim limitations including the process to make the product in view of the patent claims and disclosure in the specification.
|
|
|
|
