A recent decision of a European Patent Office (EPO) Technical Board of Appeal has shed a little more light on the EPO’s approach to assessing the clarity of claims including product-by-process features.
The EPO considers a product-by-process claim allowable if the product itself is novel and inventive and if there is no other way of clearly defining the product. This means that a new process cannot itself confer novelty/inventive step on a known product, and if the product can be clearly defined by structural features, a product-by-process claim will not be allowed – the EPO will object under Article 84 (clarity).
In T 0081/14, the Technical Board of Appeal considered the clarity of a use claim, which includes product-by-process features. The claim in question is set out below.
“8. Use of the sintered cemented carbide body obtained according to the method of any one of claims 1 to 7 for the production of a cutting tool.”
The opponent argued that claim 8 did not satisfy Art 84 EPC because it would have been possible to define the carbide body in terms of compositional, microstructural and mechanical properties.
The patentee made two key arguments in response: first, that the EPO jurisprudence on product-by-process claims did not apply to use claims such as claim 8. Secondly, although the claim did not cover the production of the sintered carbide body, an infringement court would consider that use of a sintered carbide body not produced by a method according to claims 1 to 7 would not infringe claim 8, so the EPO should not treat the claim as a product-by-process claim.
Clarity is not one of the grounds of opposition, but the product-by-process feature of claim 8 was introduced after grant, so the Board of Appeal could consider the opponent’s objection under Article 84 (clarity). For more information on clarity in opposition proceedings see our recent article here.
The Board of Appeal set out that the method step (obtained according to the method of any one of claims 1 to 7) does not define a process feature, but solely the feature of the product (sintered body) recited in the use claim. Accordingly, it must be established whether this product feature meets the requirements of Article 84 EPC.
The Board confirmed the well-established principle that a product-by-process definition is reserved only for cases where a product cannot be defined by its structural features. The Board concluded that it did not matter that the claim was a use claim; the established EPO principles for assessing clarity of product-by-process claims still applied.
Addressing the patentee’s second argument, the board confirmed that the EPO is only concerned with validity, and highlighted that different national (infringement) courts may apply different approaches to interpreting product-by-process claims.
Hospira v Genentech
The Board went on to explain that although in general, interpretation of claims should be the same for assessing infringement and validity; this is not always the case. The board cited a recent UK Patents Court decision: Hospira v Genentech ( EWHC 3857, paragraphs 143-147).
Hospira v Genentech is an important decision because it provides some guidance on how product-by-process claims should be construed when assessing infringement. The court followed the approach of the EPO for assessing validity, but held that to infringe a claim reciting a product obtained by a process, the infringing product must be obtained by that process.
This UK court decision did not help the patentee because it highlights the patentee’s argument on interpreting claim 8 is not specific to that particular type of use claim, but also applies to the usual product-by-process claims. Thus, the Board of Appeal was not dissuaded from applying the EPO’s well established principles for assessing product-by-process claims.
The Board’s Conclusion
The Board of Appeal concluded that the EPO’s established approach for assessing product-by-process claims applies to a use claim including product-by-process features. As the patentee had not indicated in concrete terms why it would not be possible to define the carbide body in terms of its structural features, the Board of Appeal concluded the claim lacked clarity.
This case provides further guidance on how the EPO assesses claims having product-by-process features. The decision also conveniently references an important UK court decision, which is significant for demystifying how product-by-process claims should be construed in infringement proceedings. Hospira v Genentech is under appeal, so we shall wait and see whether this guidance is confirmed by the Court of Appeal.
The EPO seems to have a clear approach for assessing the clarity, novelty and inventive step of claims having product-by-process features, and the UK courts seem happy to follow this. With guidance now emerging from UK courts on how product-by-process claims should be construed for assessing infringement, this once murky area of patent law is now looking increasingly clear.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.