TITLE:
Necessity, Criteria (Requirements or Limits) and Acknowledgement of Product Identity of Claims for Product Described by Its Manufacturing Process (Product-by-Process Claims)
AUTHORS:
Kotaro Kageyama
KEYWORDS:
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)
JOURNAL NAME:
Beijing Law Review,
Vol.5 No.2,
June
23,
2014
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.