Korean Supreme Court’s En Banc Decision on Patentability of Product-by-Process Claims

1.  Summary of the Decision

On January 22, 2015, the Korean Supreme Court ruled that “patentability of product-by-process claims shall not be solely based upon the manufacturing process itself, but upon the product, in which the structural features or properties of the product are specified by the claim limitations including the manufacturing process of the product, in determining their novelty and inventive step over the prior art published before the filing of the subject application” (Korean Supreme Court Case No. 2011 Hu 927, En Banc Decision).  Accordingly, all the precedents for their reasoning which now has become contradictory to that of this decision are overruled.      

2. Changes on the Precedents

The Korean Supreme Court established its precedents holding that “the inventive step of product-by-process claims in patent applications shall be determined solely based upon the product claimed over the prior art, without any consideration of the manufacturing process, unless there is any special circumstance, or the claimed product can be specified only by its manufacturing process” (Korean Supreme Court Decision, Case No. 2007 Hu 4328, September 24, 2009).  That is, in the past, the Korean Supreme Court ruled that the manufacturing process itself shall not be considered in determining the inventive step of product-by-process (hereinafter, “PBP”) claims.  However, also through its precedents, the Korean Supreme Court set out some exceptions to this principle as follows: when recitation of the technical features of the product is difficult since the product is very new in the relevant industry, or when recitation of the manufacturing process can concisely specify the structural features or properties of the product, the manufacturing process itself shall be considered in determining the inventive step.

On the other hand, in this new decision of January 2015, the Korean Supreme Court held that, regardless of any special circumstances, patentability of PBP claims shall be determined based upon the claimed product, in which the structural features or properties of the product are specified by the claim limitations including the manufacturing process of the product, in determining their novelty and inventive step over the prior art.  Based upon the foregoing, all the precedents for their reasoning which now has become contradictory to that of this new decision are overruled.

3. Reasoning behind this New Decision

The Korean Supreme Court reasoned that 『the actual subject matter of the invention recited in PBP claims is the product itself, not the manufacturing process, and thus, the patent application with the PBP claims seeks for protection of “the product invention.”  The manufacturing process limited in PBP claims shall be construed only as the means to specify the structural features or properties of the product.  This interpretation of PBP claims also applies to the invention in the field of bio technology or chemistry, wherein the product cannot be directly specified by its structural features or properties; but it can rather be defined only by its manufacturing process.』  Based upon this reasoning, the Korean Supreme Court ruled that, in determining the novelty and inventive step of the invention over the prior art, patentability of PBP claims shall be determined based upon the claimed product, in which the structural features or properties of the product are specified by the claim limitations including the manufacturing process of the product, regardless of any special circumstances.  

4. Comparison between Precedents and New Decision by the Korean Supreme Court

5. Significance of the New Decision by the Korean Supreme Court

This aforementioned decision by the Korean Supreme Court has significance for products in the field of bio technology, pharmaceuticals industry, or food engineering, etc., since such products can usually be specified only through their manufacturing process.  Thus, applicants are expected to pay special attention in drafting PBP claims in patent applications, and in responding to the KIPO’s rejections raised due to lack of novelty and/or inventive step, etc.

First of all, in drafting a specification of the patent application, if possible, it seems desirable for an applicant to recite the product claims specified by its elements, structural features, characteristics, etc., if such a product can be limited by the elements, structural features, characteristics, etc.  Even in case that the product can be specified only through its manufacturing process, it is desirable for an applicant to draft a specification describing any distinctive features of the present invention expected over the prior art, by its unique structural features or characteristics resulted from the unique manufacturing process, not by the manufacturing process itself, in order to get the novelty and inventive step acknowledged during the patent examination.

If the Examiner issues any rejection on the PBP claims for lack of novelty and/or inventive step, in the past, the applicant was able to overcome such grounds of rejection by asserting/proving his/her special circumstances, such as, the product can be specified only by its manufacturing process, or the manufacturing process of the present invention describes distinctive features over the prior art.  However, following this new decision by the Korean Supreme Court, the applicant will be able to overcome the same grounds of rejection on the PBP claims only by asserting/proving distinctive features of the present invention over the prior art in its properties, characteristics, structural features, etc. limited by the manufacturing process.