The decision of the Boards of Appeal T0642/14 of May 7, 2018 gave some clarification and explanations as to the significance of product-by-process definitions in a manufacturing process claim (“Process-by-product-by-process”).
It is obviously a well-recognized principle within the European Patent law that a product-by-process claim is not limited, as to its scope, to the specific process mentioned. Rather, the product-by-process is covering any product, which is simply obtainable by the process. In other words, any product having “fingerprints” of the specified process falls under this definition.
This principle finds a basis in that a claim of the category “product” shall protect the product independently of its manufacturing process (and for any application). Therefore, the product-by-process definition can only be an indirect description of a product specification.
Now, the decision T0642/14 had to deal with a scenario where the product-by-process feature was not part of a product claim, but of a producing process claim. Obviously, the above background for product claims i.e. that products claims shall cover the product independently of its manufacturing matter, does at least not directly apply when the product-by-process definition is part of a process claim. The decision T0642/14 had to specifically deal with a production process for chemical compound, wherein the starting material had been characterized by a process for its production.
The Board decided that the steps for the preparation of the starting material are not technical features of the claimed process. The product-by-process definition is not to be equated with a multi-step process with consecutive steps starting from the preparation process for the starting material. The method steps for the production of the starting material are set to solely define the specific starting material to be used in the claim process and can be taken into account in the assessment of novelty only to the extent that they inevitably result in a structural feature or a characterizing property of said starting material.
Thus, the following messages can be taken from this decision T0642/14:
- A product-by-process definition (i.e. of a starting material) in a production process has to be construed in the same manner as a product-by-process definition in a claim of the product category.
- The Board has defined the significance of a product by process definition in that it has to be determined as which structural feature or characterizing property inevitably results from the defined process.