Field of Endeavor

The present article relates to a claim type, and more particularly to one having been extensively discussed in last two issues of this firm, regarding the same.

Background Statement

At the first glance, it is logical to doubt whether or not we are inadvertently disseminating old issues regarding this topic.  In an immediate second thought, it should be readily clear that such doubt is false since a law firm cannot be careless to such extent.  If this reasoning is true, the ensuing question is whether this topic has not been comprehensively dealt with in last two issues.  The answer appears to be negative in order that the logical world remains intact.  If such reasoning is natural, the outcome of the subsequent metal activity should be what else one can add to last two issues.

In this wonderful world, people are born equal or indifferent in theoretical opportunity, legal standpoint and thought creation, but different or even discriminative in practical chance, launching standpoint and idea conception.  Different thoughts, ideas or conceptions normally provide a good means to introspectively inspect oneself or extrinsically examine whether last two issues have exhaustively discussed all aspects of the product-by-process claim.

A friend from Europe, Dr. Maximilian Engelhard reminded the author, after reading last two issues of the same theme, that the Europe would have different views to the same produce-by-process.  In view of the philosophy revealed in the preceding paragraph, such different viewpoint is spectacular.  Nevertheless, in the physical world, this might not be so sweet in that:

1.      It means a further work needs to be done in order to clarify and/or rectify something by which we are not inferring that we hate unbillable works.  Rather, we would like to mention two truths that the average work hour wins for Taiwan the number 1 place all over the world and that many a professors here have an overwork death;

2.      This world has been full of diversities, we do not feel like that the product-by-process claim comes in the same way since it will consume the brain power or energies to so memorize and practice for a patent practitioner as we are;

3.      As is known, the product-by-process claim category originates from the US so that if last two issues really have exhaustively reasoned metes and bounds thereof, we should introspectively interrogate ourselves why we cannot so ascertain those different views while making a self-presumedly rooty research thereon, regardless of how the originating US will feel about this; and

4.      It appears necessary to cost the life of many brain cells before we can get known to the rough outlines as to what impacts the reminder from Mr. Engelhard will have on the analyses or conclusion of last two issues.

Even it is clear that to clarify this issue needs hardworking, we still find it sweet to assume this painstaking task since:

1.      Due to potential enough elderliness, it always comes that fully devoted indulgence in a work, in intermediate procedures, might impart to the one engaging in even a hard work some kinds of pleasures or rejoicings despite of the resulting outcome;

2.      We are old enough to recognize that physical hardworking normally might bring forth meditative happiness for compensating therefor;

3.      Except being desperately hopeless or diverted into the wrong way, it appears to be true that every one wants to reap a feeling of responsibility.  Such desire shall be met if we could properly respond to the challenge or question to what we have said or written;

4.      Further, comparative studies, questioning interrogatories and mutual discussions often play important roles in digging the matter into its core substances.  Thanks to the kind patience of Mr. Engelhard, we are trying now to derive the issue to its essence.  Although we are not certain whether we will succeed finally, we could raise to the least extent some issues open for discussions by experts in this respect all over the world.

Although we have not had concrete idea as to what contents and reasoning should be put in this article, it might be optimistic for us to predict that this article will not be boring with the above beliefs and thoughts in mind and head.  If the above is a bit too abstract to be readily reckoned as to the intimate nature of the subject matter we are referring to now, we will make it concrete by revealing the comments Mr. Engelhard made, which reflects a popular viewpoint of product-by-process claim to a certain extent under European practices:

1.      That “so far it seems to have been a common sense that the extent of protection of a product-by-process claim does not depend on the explicit wording of the product-by-process claim”: By this European practice, it might spark a looming possibility that the explicit wording of a claim is not mandatory in construing the protecting scope the claim can be conferred to.  While this might be a great idea, it might have significant import in claim interpretation in that the claim scope might depend no more on what the claim has been recited, which might in turn be serious since we need to set up a set of rules and criteria for judging what situations are respectively yes and no to the questions we would raise.  If this is true, it might be fortunate that such uncertainty only exists in the aspect of product-by-process claim.  If we are to be serious in this respect, a queer theory being discussed to some extent for claim categorization in Taiwan might be interesting to be introduced here.  Specifically, there are two ways for defining a claim, i.e. the central definition type and the peripheral definition type.  By the central definition type, it means the claim scope needs not necessarily depend on what the claim is recited.  In other words, the claim language only recites the central spirit thereof so that the real or final scope of a claim shall be decided only after the central spirit of the claim has been determined.  Whereas, by the peripheral definition type, it means that the metes and bounds of the claim have been accurately fixed by means of the claim language.  Nevertheless, it remains not very clear at what situation a claim is regarded as the central definition type or the peripheral definition type.  Accordingly, such categorization might be not so lovely since it might involve so many theories to be created in order to solve all issues which might ensue therefrom.  In sum, the potential criticality for adoption for such categorization or looming possibility of such European practice might depend on whether or not a claim scope can be decided independently of the claim language;

2.      That the above sentence “means that a product-by-process claim defined as ‘product obtained by the following process’ has the same extent of protection as a product-by-process claim worded as ‘product which may be obtained by the following process’”: Under the US patent practices, alternative or probable wording or phrases are normally regarded as indefinite.  For a claim drafter, such practice is not welcome or is hated since it limits or serves as an obstacle to the imagination of the drafter.  Under the might-be arguable European product-by-process practice, if a claim is drafted in a manner that a product “may” be obtained by a process, which would barely mean that the drafter feels like not to have the drafted claim to be accorded with the limitation of the process being only exemplary for an illustrative purpose, and more importantly that this intention is fully lawful and legally supportive.  As a result, such patented product will receive a protection just like the claim language does not contain the limitation or feature of the relevant process.  It would appear that there is something related to magic because some clearly written or recited claim language is to be regarded not existent in the claim.  Notwithstanding this, with the obviation of the probable phrase “which may be,” the European practice recognizes that a product-by-process claim defined by the concrete recitation, ‘obtained by a specific process,’ can have the same protecting scope of a product claim.  A readily apparent paradox here is that while the product-by-process might only be sought patented because of containing the limitative feature of being produced by a specific process, after its issuance, such limitative feature will play no more weight in ascertaining or delimiting what scope is conferred to the claim in issue.

With the initial outlines of the European product-by-process claim practice above-described, we would like to list all potential possibilities as to why such unique practice comes to this world as follows:

1.      The product-by-process is so special that it deserves people in this world to treat it in different ways in different territories.  As such, we want and need to find out what is really happening under the European product-by-process practice and make it clear and conclude what principles and rules the European product-by-process practice is following and running;

2.      If the above is not the case, it would mean that the product-by-process is too much special such that while the last two issues of this publication we dealt with are correct on the one hand when the product-by-process practice is to be applied in a first instance, the European product-by-process above-described is also righteous on the other hand when the product-by-process practice is to be applied in a second instance; and

3.      If neither of the above cases applies, it might mean there is some kind of misunderstanding about the European product-by-process practice.  If this is the case, theoretically, there might be the following possibilities:

A.     The European Patent Office deliberately defines a product-by-process differently from other parts of the world (and imparts thereto a different legal effectiveness);

B.     The European Patent Office does not define and/or interpret a product-by-process differently but practitioners in Europe differently define and/or interpret the product-by-process claim; and/or

C.     The European Patent Office has not defined and/or interpreted a product-by-process in the way the product-by-process is presumed to be.

Although we have not had in mind what the answer is or should be until now, we are trying now and optimistic to get the desired answer once this article is completed through the kindness of Mr. Engelhard providing three cases, i.e. T205/83, T423/89 and T20/94, from the EPO Boards of Appeal dealing with the product-by-process issue.

Summary of Developments

There are two headnotes in the Case Number T 0020/94, as quoted as follows:

1.      Where the granted claims are solely process claims, a change from a process claim for preparing a product to a product-by-process claim by way of amendment extends the protection conferred by the European patent to the same product obtained by a process for its preparation different to that defined in the granted process claim, contrary to the requirement of Article 123(3) EPC (point 4.3 of the reasons): By this headnote, it appears that the European Patent Office (EPO) would like to make it clears that:

A.     Even if the granted claims are solely process claims, a change from a process claim for preparing a product to a product-by-process claim may be made;

B.     Such change could be made by way of amendment;

C.     After the change has been made, the protection conferred by the European patent will be extended to a product;

D.     The above extended protection is obtained as long as the product is same as that obtained by the involved process claim; and

E.      The above conclusion will not be altered even if a later same product was produced by a preparing process different from that defined in the granted process claim, as contrary to the requirement of Article 123(3) EP.

2.      Despite the fact that a product-by-process claim is characterized by the process for its preparation, it nevertheless belongs to the category of claim directed to the product per se.  Irrespective of whether the terms “directly obtained”, “obtained” or “obtainable” are used in the product-by-process claim, it is still directed to the product per se and confers absolute protection upon the product (point 4.4 of the reasons): By this headnote, it appears that the EPO would like to make it clears that:

A.     It (EPO) knows very clearly that a product-by-process claim is characterized by the process for its preparation;

B.     Nevertheless, EPO takes that a product-by-process belongs to the category of claim directed to the product per se;

C.     Irrespective of whether the terms “directly obtained”, “obtained” or “obtainable” are used in the product-by-process claim, EPO takes that it is still directed to the product per se; and

D.     Once a product-by-process claim is prosecuted to be patented, EPO takes that such claim will be conferred with an absolute protection upon the product.

It would appear that this case has introduced a brand new logic into the patent field since it makes it possible that a broader (protecting) scope than the one recited in the claim is possible and legal.  It is believed that if some day in the future, it is made possible that a narrower protecting scope than the one recited in a legally viable claim is also possible and legal, although it might bring forth diversifications to this world and show varieties in meeting up with the trend in this finer division practice of the current world, our lives might become even harder since it would mean that it is never easy for us to find out what standards are in a specific situation and what rules are to be followed even if we could seldom find it wrong that different situations should apply different sub-rules.

In order to ascertain what is really happening in Europe, we would like to go into further few details of the above-mentioned case as follows.

European Patent No. 255 743 was granted with four claims having an independent one as follows:

“1. Process for preparing the amorphous tetrakis[3-(3,5-di-tert.butyl-4-hydroxyphenyl) -propionyl-oxymethyl]methane having a glass transition temperature (T_g) of from 40^oC to 50^oC, and exhibiting no endothermic melting peaks from a temperature higher than 50^oC to 200^oC, comprising the step of subjecting a crystalline form of the compound aforementioned, having a melting point higher than 100^oC and a purity of more than 95% by weight, to a melting step, whereupon the molten compound is solidified by sudden cooling.”

In the opposition, the applicant amended the claims in three alternative sets with the main request exclusively directed to product claims claiming an amorphous tetrakis[3-(3,5-di-tert.butyl-4-hydroxyphenyl)-propionyl-oxymethyl]methane and the other two auxiliary requests exclusively directed to the process for preparing that compound.

The Opposition Division of EPO held that the product claims of the main request extended the protection conferred by the patent as granted where the only claims were process claims.  Therefore the patent as amended according to that request offended Article 123(3) EPC (stipulating that “the claims of the European patent may not be amended during opposition proceedings in such a way as to extend the protection conferred”).  From this holding, we could find that while the Opposition Division regularly noted that a product claim has a protection scope different from that of a process claim, the Opposition Division did not mention whether a product-by-process claim will be conferred to have a protection scope just like that of a product claim.  We would like to put some words in discussing whether the scope can be extended in the opposition stage somewhere below.

The Opposition Division also noted that the amended process claims according to the first and second auxiliary requests lacked either novelty or an inventive step.

On 7 January 1994, the Applicant lodged an appeal against the decision of the Opposition Division.  The main request consisted of a single product claim as follows:

“1. Tetrakis[3-(3,5-di-tert.butyl-4-hydroxyphenyl)-propionyl-oxymethyl]methane having an amorphous structure directly obtained by subjecting a crystalline form of tetrakis[3-(3,5-di-tert.butyl-4-hydroxyphenyl)-propionyl-oxymethyl]methane having a melting point higher than 100^oC and a purity of more than 95% by weight, to a melting step, whereupon the molten compound is solidified by sudden cooling, said obtained tetrakis[3-(3,5-di-tert.butyl-4-hydroxyphenyl)-propionyl-oxymethyl]methane having the following characteristics:

(a)    a glass transition temperature (T_g) of from 40^oC to 50^oC, and

(b)   no endothermic melting peaks from a temperature higher than 50^oC to 200^oC.”

The first auxiliary request includes a set of four process claims with the single independent claim 1 differing from the granted claim 1 through the incorporation of the additional feature that “wherein the mass is completely molten” in the melting step.  The second auxiliary request includes a set of four claims with the single independent claim 1 reading as follows:

“1. Process for preparing the amorphous tetrakis[3-(3,5-di-tert.butyl-4-hydroxyphenyl) -propionyl-oxymethyl]methane having a glass transition temperature (T_g) of from 40^oC to 50^oC, and exhibiting no endothermic melting peaks from a temperature higher than 50^oC to 200^oC, comprising the step of subjecting a crystalline form of the compound aforementioned, having a melting point higher than 100^oC and a purity of more than 95% by weight, to a melting step, whereupon the molten compound is solidified by sudden cooling.”

“1. Process for preparing the an amorphous tetrakis[3-(3,5-di-tert.butyl-4-hydroxyphenyl)-propionyl-oxymethyl]methane having a glass transition temperature (T_g) of from 40^oC to 50^oC, and exhibiting no endothermic melting peaks from a temperature higher than 50^oC to 200^oC, [wherein] said features are maintained during at least four heating and cooling cycles between the temperatures of -100^oC and +100^oC on DSC, said process comprising the step of subjecting a crystalline form of the compound aforementioned, having a melting point of 122.5^oC and a purity of more than 98.5% by weight, to a melting step under nitrogen atmosphere at a temperature of 140^oC and until the crystalline form is completely molten, whereupon the molten compound is solidified by sudden cooling.” (emphasis added)

The applicant or appellant submitted that the product claim according to the main request defined the title compound as being “directly obtained” by the given process.  This wording corresponds to Article 64(2) EPC (stipulating that “if the subject matter of the European patent is a process, the protection conferred by the patent shall extend to the products directly obtained by such process.”)  That formulation of the claim restricted the protection conferred to compounds obtained by the process of process claim 1 as granted.  Claim 1 worded in this way could not confer absolute product protection regardless of how the products were obtained.  All such recognitions from the appellant are not different from the viewpoints discussed in the last two issues except leaving unclear the following that:

1.      Presenting a product incorporating therein a process feature for examination under the product-by-process practice is not normally permissible except there is a critical situation; and

2.      If there is not a critical case for the amended product claim 1 in issue to be qualified as a product-by-process claim while such amended product claim 1 is to be allowable, it must be a hybrid type claim mixing therein features or limitations of product elements and process elements.  Such claim, however, can only be allowed or patented when either the product elements or the process elements thereof are independently allowable or patentable.

The Respondent 1 submitted inter alia as follows “the product claim according to the main request was a product-by-process claim, irrespective of whether formulated by using the term “obtained” or the term “obtainable”, the scope of such product claims remained the same, namely that of a claim to the product itself.  The scope of protection conferred by a product claim exceeded the scope of protection conferred by a process claim governed by Article 64(2) EPC, since the latter encompassed exclusively the products directly obtained by that process.  The switch from process claims in the patent as granted to a product claim according to the main request extended the scope of protection violating Article 123(3) EPC”: With regard to this passage made by Respondent 1, we have the following annotations:

1.      This passage appears reflecting the common viewpoints, Mr. Engelhard made as above-described, about product-by-process claim in Europe.  Nevertheless, it is not very clear when, how and at which situation a claim can be drafted or qualified for the product-by-process type.  Specifically, needs it be that a product-by-process claim is permissible only when a pure process or product claim has been proved infeasible?

2.      If concerns to violation of Article 123(3) EPC are so critical, this issue can be easily circumvented by making it clear or proving that a product with the limitation of the process features will have a protection scope smaller than that of a pure process claim based on the reasoning above-described;

3.      Accordingly, the core issues we have about such common European product-by-process might be as follows:

A.     Is a process limitation or feature necessitated in a European product-by-process claim?

B.     Is such process limitation or feature essential to the patentability of such European product-by-process claim?

C.     Is an essential limitation or feature of a claim can be disregarded after the claim has been granted?

D.     Is the product under a European product-by-process claim must be new by itself?  If this is the case, why the product cannot be put in a conventional product claim?

E.      Alternatively, if, although the product under a European product-by-process claim in itself is not new and is normally produced by a conventional method, what a European product-by-process claim in fact wants to protect or encourage the patentee, or declares to the public are how great the relevant applicant has taught this world that such product needs not be conventionally made and that the applicant deserves a big prize by being conferred with a scope to be construed irrespective of what process, except the conventional one, is used to produce the product in a product-by-process claim.  If this is the case, in order to make it clear that a product-by-process claim cannot be optionally used by an applicant at its own wish for the purpose of securing a broader claim scope where its invention shall be drafted or protected in a conventional product or process claim, we need to define and regulate:

a.       At what situations, an invention can only be protected in a process claim rather than a product-by-process claim; and

b.      Only at what circumstances of product or process features or difficulties, an invention can be protected under the product-by-process claim type.

The Respondent 2 withdrew his opposition on 7 May 1998 without having made any submission as to the substance.  The Respondent 3 submitted on 12 March 1994 that he was no longer interested to proceed with the appeal procedure.  He was informed in writing that he was therefore presumed to wish to cease to be a party to the appeal proceedings.

Reasons inter alia for the Appeal Decision from EPO are as follows:

1.      “There are basically two different types of claim, namely a claim to a physical entity, e.g. a product, and a claim to a physical activity, e.g. a process for preparing a product (see decisions G 2/88, OJ EPO 1990, 93, point 2.2. of the reasons; T 150/82, OJ EPO 1984, 309, point 7 of the reasons).  These two basic types of claim are referred to as the two possible categories of claim.  Therefore, the proposed amendment of the patent in suit as granted according to the main request consists in a change of the category of the claims, i.e. a switch from the category of a physical activity to the category of a physical entity”: From this passage, it appears that EPO takes that basically, there are two different types of claims, i.e. a product one and a process one.  In last two issues, we largely regard the product-by-process a third category independent of the product type and the process type.  It would appear that EPO takes the position that the product-by-process claim must fall into one of the two basic types.  As such, the type into which the product-by-process is regarding to be falling will govern the construction or interpretation of its protecting scope;

2.      “Article 123(3) EPC requires that the claims of a patent may not be amended during opposition proceedings in such a way as to extend the protection conferred.  This applies to all amendments including the change of the category of claim.  In order to decide whether or not the change of the category in the patent in suit satisfies that requirement, it is necessary to compare the protection conferred by the category of claim before amendment, i.e. as granted, with that of the new category of claim after amendment (see decision G 2/88, loc cit., points 3.2. and 4.1 of the reasons)”: With regard to this passage, we have comments as follows:

A.     Since the opposition will initiate a new examination procedure, it might be a good idea to allow extension of protection conferred as long as the invention or the applicant is so deserved since it is not far from the time the granted claim set is put in publication in the opposition proceedings and no rights from the public have been deprived without the creation of the opposed invention;

B.     What are the problems if we take the product-by-process a third category independent of the two basic ones?

C.     If we interpret a product-by-process claim only protects a product which is produced by the process recited in the product-by-process claim, a switch from the process type into the product one is narrowing the protection rather than broadening since the process one will additionally protect the process per se.

3.      “The protection conferred by a claim directed to a process for preparing a product covers that process.  Pursuant to Article 64(2) EPC, the product insofar as it is directly obtained by that process, is also protected.  Hence, the same product, when obtained by any other process for preparing the product, is not within the scope of protection conferred by the process claim.  In the present case, the process claim as granted, i.e. before the amendment to a product claim, confers protection to the process claimed and, exclusively, to the particular tetrakis[3-(3,5-di-tert.butyl-4-hydroxyphenyl)-propionyl-oxymethyl]methane directly obtained by the claimed process; that particular tetrakis[3-(3,5-di-tert.butyl-4-hydroxyphenyl)-propionyl-oxymethyl]methane, when obtained by any other process, is not protected by the claims as granted”: We fully agree with this passage.

4.      “The protection conferred by a claim directed to a product per se, however, is absolute upon such product.  The product claim, thus, confers protection to that product regardless of the process by which it is prepared (see decisions G 2/88, loc cit., point 5 of the reasons; T 402/89 of 12 August 1991, point 2 of the reasons; T 73/92 of 25 March 1996, point 7 of the reasons; the latter neither published in OJ EPO).  Hence, the product, when obtained by any process of preparation, is also within the scope of protection conferred by the product claim.  In the present case, the product claim of the patent in suit after amendment confers absolute protection to the particular tetrakis[3-(3,5-di-tert.butyl-4-hydroxyphenyl)-propionyl-oxymethyl]methane as defined therein.  Thus, that particular tetrakis[3-(3,5-di-tert.butyl-4-hydroxyphenyl)-propionyl-oxymethyl]methane, obtained by any preparation process other than that defined in the process claims as granted, is also protected by the product claim as amended”: With regard to this passage, we have comments or questions as follows:

A.     Although it has not been made clear as to whether tetrakis[3-(3,5-di-tert.butyl-4-hydroxyphenyl)-propionyl-oxymethyl]methane (hereinafter referred to as Compound) per se is novel, it would appear the answer thereto is negative since if Compound is novel, the appellant would like to claim it as a product;

B.     If an absolute protection is to be conferred thereto, the claim should be directed to Compound itself without the process feature or limitation in order to obviate the logic paradox that a feature or limitation imparting to a claim the essential patentability in the prosecution stage will no more be a limitation upon construing what the scope the claim is really embracing in the enforcement stage;

C.     If an absolute protection can be available through the adoption of a product-by-process claim, is there any applicant who will not change a process claim into a product-by-process claim in order to both secure a process claim protection and an Article 64(2) EPC protection?

5.      “In the present case, when comparing the protection conferred by the categories of claim before (point 3) and after (point 4) amendment, it is clear that the protection conferred after amendment extends beyond that conferred before, contrary to the requirements of Article 123(3) EPC: the particular tetrakis[3-(3,5-di-tert.butyl-4-hydroxyphenyl)-propionyl-oxymethyl]methane, when obtained by a process of preparation which is different to that of the claims as granted, is not protected before the amendment of the claims of the patent in suit, but is now protected a s a result of the amendment”: With regard to this passage, we have the following annotations:

A.     It is clear the EPO takes that a product-by-process claim will confer an absolute protection to the product in the product-by-process claim; and

B.     It is unclear how the EPO will take its position if it is convinced that a product-by-process claim can only protect a product which is produced by the process recited therein so that it has a protection scope smaller than that of a process claim additionally protecting the process per se.

6.      “The Appellant attempts to overcome this objection in formulating the product claim as amended in the form of a product-by-process claim using the term “directly obtained”.  He argued that this formulation of the claim, borrowed from Article 64(2) EPC, restricted the protection conferred exclusively to that product which is directly obtained by the process of the claims as granted.  The product claim as amended, thus, would not confer absolute product protection regardless of how the product was obtained, and did not extend the protection conferred by the claims as granted, a view which the Board does not share”: With regard to this passage, we have the following comments:

A.     While it is not strange that the Board will not share the view of the Appellant, it would appear that the view of the Appellant that a product-by-process claim will restrict the protection of the product to one that is directly obtained by the process of the claims as granted might be reasonable;

B.     It would appear that the process per se is unpatentable since if yes, the Appellant needed not try to change the claim type;

C.     What is remaining critical, from our viewpoint, is that if, while the process per se might be not patentable, it does make the production of Compound to bear some kind of inventiveness, e.g. being easier or cost-effective, should we and/or how we should protect such efforts of an inventor?

7.      “In the present case the claim as amended is a claim to a product even if the product is defined in terms of a process for its preparation.  Thus, despite the fact that this product is characterized by the process for its preparation, the claim nevertheless belongs to the category of claim directed to a physical entity, i.e. a product (cf. point 1 above).  A product-by-process claim is interpreted according to the jurisprudence of the Boards of Appeal as a claim directed to the product per se, since the reference to a process for its preparation serves only the purpose of defining the subject-matter for which protection is sought, which is a product.  Whether or not the term ‘directly obtained’ or any other term, such as ‘obtained’ or ‘obtainable’, is used in a product-by-process claim, the category of that claim does not change as it is directed to a physical entity and the subject-matter of that claim, for which protection is sought, remains the product per se (see decisions T 411/89 of 20 December 1990, point 2.2 of the reasons; T 407/90 of 3 November 1997, point 2.5.3 of the reasons; neither published in OJ EPO; T 19/90, OJ EPO 1990, 476, point 4.9.2 of the reasons).  Therefore, irrespective of how a product-by-process claim is worded, it is still directed to the product per se and confers absolute protection upon the product, precisely as any other claim to a product per se.  That product claim, hence, confers protection upon the product regardless of the process by which it is prepared.  In the present case, irrespective of the wording of the product-by-process claim of the patent in suit as amended, that claim is directed to a physical entity, i.e. the particular tetrakis[3-(3,5-di-tert.butyl-4-hydroxyphenyl)-propionyl-oxymethyl]methane, regardless of the process by which it is in fact prepared.  Thus, the product-by-process claim as amended does extend the protection conferred by the process claims as granted”:

A.     From this passage, we can know clearly that the Board of Appeals of EPO does take the position that despite the fact that this product is characterized by the process for its preparation, the claim nevertheless belongs to the category of claim directed to a physical entity, i.e. a product.  Our ensuing question is that if such product is so great as to be qualified for the absolute protection, why can we not require such product per se satisfy requirements of patentability by itself, without resorting to the feature of the process for its preparation?

B.     Although it might be possible that different jurisprudences should have different features and outstanding aspects peculiar to the world in order that this world can be diversified and colorful, so far as the product-by-process claim is concerned or is to be interpreted, it might be greater that this world has a standardized or uniform definition and practice.

C.     Nevertheless, we will definitely share the same opinions of the Board of Appeals of EPO if the situation is that a new product is found but one cannot define such product without reference to a process for its preparation.  While under such situation, our feelings would like to commit that the process element serves only the purpose of defining the subject-matter for which protection is sought, as the Board takes, we are worrying how we could convince others that a process constituent in a claim shall not be taken into consideration when the claim is to be construed in an infringement case. 

D.     It would appear that as soon as the above issues are solved, the issue whether the term ‘directly obtained’ or any other term, such as ‘obtained’ or ‘obtainable’, is used, or what role they are playing in a product-by-process claim will never trouble us again.  Further, to which category a product-by-process claim belongs might never have any weight, either.  Also, the issue as to whether the absolute protection is to be conferred is confirmed accordingly.  Certainly, a switch or change between the product-directed and the process-containing claims needs not cause an inspection as to whether there is an ensuing extended protection issue.

8.      For the reasons above-described, we do not agree with the Board’s judgment made in this case with regard to the main request since the amended claim does not extend the conferred protection due to the fact that the amended claim is restricted to the limitations of the process recited in the claim.