EP 3 071 045 B1 relates to a method of extraction of pea proteins
Brief outline of the case
The patent was maintained according to AR6.
Both proprietor and both opponents appealed. Later, opponent 1 withdrew its appeal.
The patent was eventually maintained according to AR1 filed and admitted in appeal.
The case is interesting in that opponent 2 considered that claim 10 as granted was not allowable due to its form.
Claim 10 as granted reads:
“Pea protein extract obtainable by the method according to any one of claims 1 to 9″.
The opponent’s point of view
The product-by-process format of claim 10 was not allowable because the product could be described by specific features defining e.g. its properties.
Citing decision T 150/82 and the Guidelines F-IV, 4.12, opponent 2 submitted that the product-by-process format could only be used “if it is IMPOSSIBLE to claim/define the product other than in terms of a process of manufacture”.
It argued that, assuming that the product obtainable by the method of claim 1 had low solubility, gel strength and viscosity, these parameters could and should have been used to define that product.
Hence, the criteria for drafting a product-by-process claim were not fulfilled, and claim 10 should not be allowed.
The board’s decision
The mere fact that claim 10 is drafted as a product-by-process, despite the fact that the claimed product could be satisfactorily defined by reference to its composition, structure or other testable parameter, is not a ground for opposition set out in Art 100.
The issue could be, at most, one of a lack of clarity. Guidelines F-IV, 4.12 mentioned by opponent 2 relate indeed to the requirement of clarity.
Furthermore, T 150/82, cited by opponent 2, relates to an appeal against the refusal of a patent application and not to an appeal concerning an opposition filed against a granted patent. Consequently, T 150/82 is not applicable.
Considering that claim 10 is a granted claim, its format cannot be objected to on the ground that it is drafted in the product-by-process format or that it lacks clarity in view of G 3/14.
Comments
It can be agreed with the board that the format of a granted claim is not a ground of opposition, and that claim 10 as granted sould not be subject of a clarity objection.
However, to say the least, the objection of opponent 2 is certainly surprising. What is important for the proprietor is to sell a pea extract. The is no reason to deprive the proprietor of this possibility.
It is to be noted that claim 10 does not relate to a product “obtained” by the process of claim 1-9, but merely “obtainable” by such a process. It could therefore be inferred that the condition set in Art 64(2) is not fulfilled here, as Art 64(2) requires that the product is “obtained” by the process. “Obtainable” could thus be considered much broader. As the process of claim 1 is, according to the board, new and inventive, the pertinence of the argument is not prima facie manifest.
It should not be forgotten that, any amendment of a granted claim, has to answer a ground of opposition, cf. R 80. As claims 1-9 are new and inventive, there was no ground of opposition , which could have forced the proprietor to amend claim 10 from “obtainable” to “obtained“, unless it was shown that the product was already know as such.
The ED should have queried “obtainable” before grant, but it did not do so. It most probably did not realise the difference between “obtainable” and “obtained”.
However, dismissing T 150/82 as only applicable in examination is not really convincing.
Headnote II of T 150/82 says:
Claims for products defined in terms of processes for their preparation (known as “product-by-process” claims) are admissible only if the products themselves fulfil the requirements for patentability and there is no other information available in the application which could enable the applicant to define the product satisfactorily by reference to its composition, structure or some other testable parameter.
One could well envisage a situation in opposition when the proprietor, in reply to a ground of opposition, files a product-by-process claim. Irrespective of either a possible clarity problem under G 3/14, or conformity with R 80, I have doubts that headnote II of T 150/82 would not be applicable.
Comments
2 replies on “T 1065/23 – A product-by-process claim is not a ground of opposition”
Hi Daniel, I think “obtained” and “obtainable” are considered having the same meaning before the EPO. See Guidelines F-IV 4.12, 4th para. But I do agree that they have different meanings.
Hi Panda grosso.
Thanks for your comment,
I agree that Guidelines F-IV 4.12 (I confess, I did not check) allow various formulations, but they deal with clarity and explain that “obtainable”, “obtained”, “directly obtained” or an equivalent wording can be used in a product-by-process claim. Strictly speaking, in view of Art 64(2), it should be “directly obtained”.
It remains that the claim is still directed to the product per se, which has to be new as such. Guidelines F-IV 4.12 say “Claims for products defined in terms of a process of manufacture are allowable only if the products as such fulfil the requirements for patentability, i.e. inter alia that they are new and inventive, and it is impossible to define the claimed product other than in terms of a process of manufacture.”
The interesting thing is that Guidelines F-IV 4.12 adds that “The burden of proof for an allegedly distinguishing “product-by-process” feature lies with the applicant, who has to provide evidence that the modification of the process parameters results in another product, for example by showing that distinct differences exist in the properties of the products.” Looking at the file, the ED had no reason to doubt that the process itself new and inventive would not impart to the product capabilities which were not known in the prior art.
As we are in opposition, the onus of proof lies with the opponent to show that the product is known as such. The opponent could manifestly not fulfil its onus of proof, and hence complained in opposition that the product should have been defined with different process parameters like low solubility, gel strength and viscosity, This would most probably have helped the opponent.
I allowed myself to delete the double comment.