IP Newsletter | Spring 2015
	PATENT
	Recent Korean Supreme Court Decisions Clarify Standard for Patentability & Claim Construction of Product-By-Process Claims
	Traditionally, the Korean Supreme Court has held that the patentability of a product-by-process claim should generally be determined in view of the specific structure of the claimed product, without considering the recited process itself, unless there are special circumstances where the product can only be defined by the process by which it is made (Supreme Court Decision 2004 Hu 3416, rendered on June 29, 2006). However, in a recent Korean Supreme Court decision (Supreme Court Decision 2011 Hu 927, rendered on January 22, 2015, en banc), the Court modified its previous approach to evaluating product-by-process claims by indicating that it is the structure and properties of the product alone, and not the process, that is relevant to the patentability inquiry, without exception. However, since the Court also states that all descriptions in the patent, including regarding the process recited in a product claim, are relevant to defining the structure, properties, etc., of the final product, it appears under the Court's new guidance that the process must still be considered when assessing the novelty and inventiveness of a product-by-process claim, even if the process itself is not a claimed element. The Supreme Court's decision resolves a number of inconsistent decisions from the Patent Court regarding how to construe product-by-process claims "without considering the recited process itself." In some decisions the Patent Court has ignored process features altogether, while in other decisions the Patent Court appears to treat them as a way to determine the claimed product's structure or properties. Due to the unpredictability of inventions in the biotechnology or chemical arts (e.g., claims directed to polymers, mixtures, metals, etc.), it is often impossible or impractical to define the structure or properties of such products directly, but only by reference to the process by which they are made. Under the Supreme Court's previous jurisprudence, if such a product was claimed using a product-by-process format claim, this would be a "special circumstance" in which the specific process of manufacture used would be construed as an element of the invention, and would limit the invention accordingly. Now, the Supreme Court has indicated that process features are merely one way to specify the structure or properties of the final product. Thus, if it becomes possible after the filing date to directly determine the structure or properties of the product through means other than the process specifically recited in the claim, any products determined to have the same structure and properties as the claimed product through such new means would still be within the scope of the claim. Further, another recent Supreme Court decision (Supreme Court Decision 2013 Hu 1726, rendered on February 12, 2015) held that the same principles set forth in the Supreme Court Decision 2011 Hu 927 discussed above generally apply in determining the claim scope of product-by-process claims for infringement purposes. That is, the process steps are not to be treated as additional limitations that must be present in an accused product for infringement to occur, unless "the claim scope drawn from such an interpretation is clearly unreasonable (e.g., unduly exceeds the scope supported by the specification disclosure as a whole), [in which case] the claim scope may be limited to the process features recited in the claims." In view of the above, patent applicants should take care when describing the process of manufacture of a claimed product in a patent, since even if they are not specifically claimed, such process features may be considered to affect the structure or properties of the claimed product.
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