Case Number: 2017(Gyo-Ke)No.10182 and No.10184
Date of the Judgement: April 13, 2018

With respect to a cited invention disclosed in a prior art document to deny novelty or an 
inventive step, the IP high court held as follows. When the prior art document discloses
compounds in the form of a general formula which includes enormous number of
options, a concrete technical idea involved with a specific option cannot be extracted
and thus cannot be employed as the cited invention to deny the novelty or inventive step, unless there is any context to choose the specific option proactively or preferentially. (In this case, the secondary prior art document submitted to destroy the inventive step
describes more than twenty million options of substituents.) 

The Japan Patent Office (the JPO) has revised the Manual of Patent Examining Procedure with respect to product claims directed to food products, which are "characterized by use."
Formerly, the JPO rejected novelty of such claims, because a food or a food product normally provides no "new use" except use as food, and cannot be distinguished, as a product, from
already-known foods. On and after April 1, 2016, an invention directed to a food product characterized by use may be allowed in the form of a product claim. To meet the novelty 
requirement, discovery of a new property and new use based on the new property need to
be identified. Animals and plants per se are not covered by this revision, and thus are examined as before.

The JPO has made this revision because the market for so-called functional food products,
such as those suitable for health conditions, supplements, and additives, has recently grown
largely and relevant parties such as food manufacturers kept requesting strongly for
protection of these products in the form of product claims.   

With respect to claim construction of product-by-process claims, the Supreme Court
denied the decision of the Special Division consisting of five judges in the Intellectual
Property High Court and remanded the case to the Intellectual Property High Court.
The Supreme Court held that a product-by-process claim encompasses a product (A)
that has the same structure and properties as a product (B) manufactured by the
method specified in the claim, regardless of a method of manufacturing the product (A).
The Supreme Court demanded that the Intellectual Property High Court should review
the present claim in the light of the requirement of clearness of claims (Patent Act
Article 36(6)(ii)). The present claim is directed to pravastatin sodium, which is a
medicine, and includes manufacturing steps.