Two recent Supreme Court decisions on Product-By-Process claim in Korea

The Korean Supreme Court rendered two decisions regarding Product-By-Process claims this year.

In the first Supreme Court decision that was rendered on January 22, 2015 (Supreme Court case No. 2011 Hu 927, en banc), the Supreme Court held that the patentability of product by process claims must be based on the product itself without considering the process recited in the claim. By the en banc decision, the standard of patentability of product by process claim was changed from the old practice that allowed some exceptions. The new standard does not allow any exception to product by process claims. Therefore, new process limitations can NOT save patents claiming known or obvious products.

Furthermore, in the second decision that the Supreme Court rendered on February 12, 2015, (Supreme Court case No. 2013 Hu 1726), the Court held that the same principles set forth in the first Supreme Court case No. 2011 Hu 927 shall be applied for constructing product by process claims; determining the claim scope of product-by-process claims and judging infringement of product-by-process claims. The process in claims shall not be any limitation and thus the product made by any different process may infringe the product by process claim.

However, the Supreme Court allowed an exception: in case the scope of claimed invention is clearly, overly broad and unreasonable (e.g., unduly exceeds the scope supported by the specification disclosure as a whole), the claim wordings of the process may be used as limitations to the scope of the product by process claim.

In summary, (1) the product itself in claims shall be a basis for the scope of claimed invention without considering the process limitations; but (2) the claim wordings of process may limiting the scope of claims in case the constructed scope of product by process claims is clearly and unreasonably broad considering the specification.

The old law is that always, without exception, every wording of clams shall be regarded as limitations of claimed inventions and thus the process recited in product by process claim must be considered to determine the scope of claims for infringement judgment. Under the old law, the same product made by any different process does not infringe the product by process claim. The recent Supreme Court decision changing the old law will benefit patent owners.