So far as the first auxiliary request is concerned, we will comment on the comments made by the Board of Appeals of EPO as follows:

1.      “The incorporation of the additional feature ‘wherein the mass is completely molten’ into claim 1 as granted brings about a restriction of the scope of the claims and, therefore, of the protection conferred thereby, which is in keeping with the requirements of Article 123(3) EPC”: We agree with the Board.

2.      “Claim 1 of the patent in suit as amended defines the product tetrakis[3-(3,5-di-tert.butyl-4-hydroxyphenyl)-propionyl-oxymethyl]methane, prepared according to the process claimed, as being amorphous, as having a glass-transition temperature of from 40^oC to 50^oC, and as exhibiting no endothermic melting peaks from a temperature higher than 50^oC to 200^oC.  All these product features specify that the product excluding even the presence of small amounts of crystals”: We would like to comment on this passage as follows:

A.     It would appear that the Appellant has further amended the claim to characterize the product as amorphous.  If not, it would mean that the Board has interpreted that the incorporated additional feature ‘wherein the mass is completely molten’ equals the product in issue to be ‘amorphous’.

B.     Since the claim set under the first auxiliary request is a process one with an incorporation of additional product feature, can or should we define such claim a process-by-product claim in order to be distinguishable over the product-by-process, pure product or pure process claim types so that the opinions of Board of Appeals can be sustained for serving as an guidance?  In order to clarify this issue, potential answers to be provided later to the following questions might be helpful:

a.       Can a product feature in a process claim augment into a patentable weight for a process claim?

b.      While a product claim can be fully delimited by product features, is it possible, appropriate or permissible that a process claim can include a product feature?

3.      “To support his submission, the Respondent 1 argued that the low melting point of the product in document (2) of 49^oC (page 11, paragraph 3), which was very similar to the glass transition temperature of the product in Example 1 of the patent in suit of 48^oC, indicated both products to be identical.  However, the product tetrakis[3-(3,5-di-tert.butyl-4-hydroxyphenyl)-propionyl-oxymethyl]methane is polymorphous, existing in various allotropic forms (see page 2, line 44 of the patent in suit), which was never contested by the parties.  Therefore, the quasi identity of the melting point in document (2) with the glass-transition temperature specified in the patent in suit, on its own, does not necessarily result in the conclusion that both products do have identical morphology too.  The explicit teaching of a crystal structure in document (2) on the one hand and of an amorphous structure in the patent in suit on the other hand, shows that, on the contrary, the morphologies of both products are different”: As is clearly illustrated in this passage, although two products have the same name, i.e. tetrakis[3-(3,5-di-tert.butyl-4-hydroxyphenyl)-propionyl-oxymethyl]methane, these same products in fact are different because of different morphologies.  Accordingly, we could find as follows:

A.     The deviating situation among various parties might be alleviated or harmonized since the patent in suit discloses in fact a new product having an old name, i.e. tetrakis[3-(3,5-di-tert.butyl-4-hydroxyphenyl)-propionyl-oxymethyl]methane, it deserves an absolute protection on this new product;

B.     This new product, however, is not a product directed to one covered under its generic, old or primitive name, i.e. tetrakis[3-(3,5-di-tert.butyl-4-hydroxyphenyl)-propionyl-oxymethyl]methane.  Rather, this new product is referred only to a product having the generic, old or primitive name with a specific morphology as defined in the amended claim;

C.     A conventional product having been so researched and developed to have a new morphology is sound enough to be protected under a product claim to be conferred with an absolute protection on the product with such new morphology;

D.     Since such product with new morphology is to be conferred with an absolute protection, such protecting scope certainly is free from being limited to a specific process because such product with such new morphology is first invented by the patent in suit;

E.      However, such absolute protection should be conferred to an application which is properly claiming under a conventional product claim type limited to such new morphology;

F.      If the application is claiming the new product invention under an apparent product-by-process claim, which means that a mixed type claim is in fact claimed, it is blamable for the applicant in adopting such claim type as to be conferred with a scope limited or restricted to a specific process;

G.     As a matter of fact, since such new product invention is eligible for protection under the conventional product claim type, it is ineligible for being put in a product-by-process claim according to the discussions, or original definitions of product-by-process, made in last two Issues.  In this regard, we have further comments to be discussed later as follows: Shall the Patent Office warn the applicant it is claiming a narrower scope under the product-by-process type upon examination than what it deserves?

H.     If the applicant intentionally puts its invention in a product-by-process claim, its scope can only be conferred with one limited to the specific process since it should have known that its invention can be protected under a conventional product claim to obtain a broader protecting scope.  On the contrary, if the applicant inadvertently has a product-by-process claim or even a process claim, the law shall provide the possibility for conversion into a product claim whenever possible since the applicant is not depriving any rights from the public or any other third party and is not seeking a protection scope beyond what it is deserving thereby.

4.      “The Board considers, in agreement with the Appellant, that this state of the art (Document (1)) represents the closest one, since it aims at preparing a product with precisely the characteristics as indicated in the patent in suit, i.e. amorphous and a low softening point of 50oC.  The Board observes that in the present case, where the invention lies in a process for preparing a tetrakis[3-(3,5-di-tert.butyl-4-hydroxyphenyl)-propionyl-oxymethyl]methane having known characteristics, the closest prior art is that document which discloses said product having precisely those characteristics together with a process for the preparation thereof.  This assessment reflects objectively the factual situation of the person skilled in the art at the priority date of the patent in suit”: From this passage, we know:

A.     The Board considered the resulting product is not new;

B.     The Board considered that the invention lies in a process for preparing the Compound with which we agree.  Accordingly, this invention should be protected under the category of a process claim and is ineligible for protection under the strict definition of a product-by-process claim but certainly can be protected with a mixed claim reciting or containing therein the features or limitations of the inventive processes. and

5.      “In view of the closest state of the art, i.e. document (1), the technical problem underlying the patent in suit can only consist in providing a further process for preparing tetrakis[3-(3,5-di-tert.butyl-4-hydroxyphenyl)-propionyl-oxymethyl]methane in amorphous form, while retaining the low softening point”: We fully concur with the Board in this observation.

“Since the preceding first auxiliary request is allowable for the reasons set out above, there is no need for the Board to decide on the second auxiliary request being of lower order,” the Board further so noted.

From the above narrations of the developments of the case, we have the following comments:

1.      The situation or the invention discussed in this T20/94 case has nothing to do with a product-by-process claim.  Specifically, the subject invention is a process invention;

2.      In order to presumedly better distinguish the invention over the prior art, the applicant tried to amend the claim into a mixed type since to its belief, the resulting product differs from that of the main cited reference, i.e. Document (2) and it is willing to be conferred with a protection scope restricted to the process features.  Unfortunately, such mixed type claim is construed by the Board to be a product-by-process claim.  As such, the Board explicitly expressed its opinions about the product-by-process claim, which ensues the story of the presentation of this article;

3.      According to the theory of res judicata, since this case is irrelevant to a product-by-process claim, the opinions incidental to the subject case cannot be regarded in any way binding.  Accordingly, it might be appropriate that we need not take too much weight about such incidental opinions.

Although we have discussed or revealed the story to some extent through the example of the above case, we would like to discuss further another two cases Mr. Engelhard kind provided in turn in the following.  We would like to first discuss Case No. T0205/83-3.3.1 having three headnotes as follows:

1.      “The polymer product of a known chemical process is not new automatically as a result of the said process being modified”: It appears that the Board was expressing even if a manufacturing process is modified, the resulting product is not necessitated to possess new feature.  We would like to know whether such comprehension is correct through the following discovery;

2.      “If such a chemical product cannot be defined by structural characteristics (substance parameters) but only by its method of manufacture (process parameters), novelty can be established only if evidence is provided that modification of the process parameters results in other products.  It is sufficient for this purpose if it is shown that distinct differences exist in the properties of the products”: While it would appear that this passage is affirming what we take in last two Issues addressing the product-by-process claim, we would like to comment as follows:

A.     The Board recognized that there is a situation that a chemical product cannot be defined by structural characteristics or features (or substance or its parameters or properties) but only by its method of manufacture (or process or its parameters or attributes), which are exactly the prerequisites we set forth in last two Issues;

B.     Under such a special situation, novelty can be established only if evidence is provided that modification of the process parameters results in other products.  What ‘other products’ are referred to herein can refer to a product, just like that which has been described in the preceding case, that has an old name but a different physical property.  Specifically, such product needs not be a totally different product in all aspects since if that situation occurs, it certainly can be protected under a conventional product claim without the necessity of the potentially confusing involvement of a product-by-process claim as we desire to address here;

C.     The rationale must be in the way like the above-described so that the Board would like to utter that it is sufficient for this purpose if it is shown that distinct differences exist in the properties of the products;

D.     Although we largely share the same opinions with the Board, we do believe that the target product under discussion needs not be limited to a ‘chemical’ product since the above situation is not necessitated to happen only to a chemical one.

3.      “This evidence may not include properties which cannot be due to the product’s substance parameters (in this case, absence of monomer impurities with an unwanted odour)”: We would like to try to find out what this paragraph is really referring to through the brief discussions hereinafter.

In this case, European patent No. 1810 incorporating four claims was granted on 4 November 1981 on the basis of European patent application No. 78 101 239.8 filed on 27 October 1978 and claiming a German priority of 2 November 1977.  The opponents filed opposition to the grant on 11 May 1982 on the basis of the document already considered in the examination proceedings, and requested that the patent be revoked in its entirety on grounds of lack of inventive step.  On 4 October 1983, the Opposition Division rejected the opposition by rendering inter alia that neither of the two citations in any way suggested the purposive addition of a single monomer to reduce the impurities present after the first stage of the process.  The appellants (opponents) lodged an appeal on 29 November 1983 by asserting inter alia that the presence of residual monomers was something which could have been expected in view of the very different polymerization parameters of crotonic acid on the one hand and of vinyl esters on the other and could have been found in the newly introduced passage from the literature: (3), which mentioned a retarding effect of crotonic acid on the copolymerisation of vinyl esters.  The addition of extra vinyl ester had therefore been obvious, since the unpleasant odour of crotonic acid had also been known.  The subsequent removal of volatile impurities by distillation was a matter of course, particularly as distillation with isopropanol had already been described in (1). 

The respondent (patent proprietor) contesting thereagainst, commenting essentially inter alia as follows: Although it had been known that crotonic acid delayed the polymerisation of vinyl esters, there had been no reason to expect any substantial residues of crotonic acid if the quantity of the latter had been less than stoichiometric; thus, it had not been obvious to add extra vinyl ester.  Surprisingly, moreover, this extra addition also served to modify, or incorporate by polymerisation, other scarcely volatile and strongly-smelling impurities which had hardly been identified, which was also why it had not been possible to expect that they could be rendered harmless by post-polymerisation.  Nor could it have been expected that the subsequent distillation with a lower alcohol would result in a further reduction in odour, since it could be shown that there was practically no further reduction in the crotonic acid content.

In its summons to the oral proceedings the Board also drew attention to doubts about the patentability of Claim 4, which reads as follows: “Vinyl ester/crotonic acid copolymer obtained by the process according to Claim 1.”  The respondent requests that the patent be maintained in the alternative in amended form, Claim 4 being deleted.  He defended Claim 4 on the grounds that the extra quantity according to the invention would necessarily lead to a variation in the resulting macromolecules, largely eliminating the odour.  It was also surprising that the polymers modified in this way could still be used as a base for hairsprays. 

We would like to produce excerpts of the case reasons the Board made for rejection of the opposition, and make our corresponding comments in the following:

1.      “According to the main request the subject-matter of the patent relates to a process for the manufacture of a vinyl ester/crotonic acid copolymer and the copolymer obtained by this process.  The process according to Claims 1 to 3 is in essence concerned with initially copolymerizing the total amount of crotonic acid with 70 to 98% by weight of the vinyl ester to be used, then adding the rest of the vinyl ester, completing the polymerisation process and then carrying out entrainer distillation using a lower alcohol.  Claim 4 relates to the end product obtained”: We quote this passage here for possible better understanding to the invention;

2.      The Board has already decided that claims for chemical products defined in terms of processes for their preparation (“product-by-process” claims) are admissible only if – apart from any other conditions – the products themselves fulfil the requirements for patentability, i.e. in particular if they are new and involve an inventive step (Decision T 250/82, “Claim Categories/IFF, OJ (EPO) 7/1984, pp. 309 to 317; see in particular Headnote II on page 310)”: It is believed this statement is in line with what we analyzed and believe above-described;

3.      “In the present case, too, Claim 4 relates to products of a chemical process which are defined not by structural characteristics (substance parameters) but only by the method of their preparation (Process parameters)”: We do not agree with the Board in this statement in that:

A.     Claim 4 is not a product-by-process type claim but a mixed claim whose patentability depends on Claim 1;

B.     Claim 4 is not a product-by-process type claim since Claim 1 is patentable to protect the invention so that the requirements set out in Item 2 above are not met so as to necessitate an adoption of the product-by-process type claim;

C.     Claim 4 is naturally patentable since it is a kind of dependent claim which is naturally patentable if its depended claim is patentable (cf. Article 64(2) EPC);

D.     Claim 4 is not a product-by-process claim since such product-by-process claim must have primary product features to be supplemented with a secondary process feature.

4.      “The method of preparing the claimed products therefore involves only the modification of a fundamentally known process.  According to an empirical principle in chemistry, approximately identical process conditions generally result in identical or approximately identical products.  Consequently, the polymeric product of a process modified in this way cannot automatically be new as a result of modification of the process.  To establish novelty, it will be necessary to provide evidence that modification of the process parameters results in other products.  In principle such evidence could conceivably be provided in a variety of ways, for example on the bases of conclusive considerations which accord with the general state of the art.  It is also sufficient, however, if distinct differences in the products’ properties are demonstrated; this is because, according to an empirical principle in chemistry, a product’s properties are determined by its structure, so that differences in the properties of products indicate a structural modification”: With regard to this passage, we have the following initial comments:

A.     We are not certain whether this passage was made by the Board for the product-by-process claim;

B.     Nevertheless, it is believed that if distinct differences in the products’ properties are demonstrated, a product claim can be patentable without resorting to the product-by-process claim as mentioned above.  This appears supported by the comments the Board having made that “a product’s properties are determined by its structure, so that differences in the properties of products indicate a structural modification.”

5.      “It must also be remembered that a polymer, however, defined (e.g. in terms of a manufacturing process or physical parameters), is not a chemical species like a low-molecular organic compound, but a complex mixture of species with molecular weights (K values) statistically spread over a more or less broad range, and also, in the case of copolymers, with statistically spread units of the two (or more) basic monomers.  It is therefore to be expected that the statistical ranges of distribution of the species present after post-polymerisation according to the contested patent on the one hand and in the state of the art on the other overlap so considerably that there can no longer be any question of a significantly different, i.e. new, product.  All in all, the above-mentioned submission by the respondent fails to demonstrate the novelty of the products according to Claim 4”: With regard to this statement, we have the following comments:

A.     Although it might be more difficult to define a polymer, in terms of a manufacturing process or physical parameters, than a low-molecular organic compound, it should be possible to solve this problem by exercising more efforts and patience to explore an approaching solution, e.g. by an NMR (Nuclear Magnetic Resonance) diagram at the worst case, in the conventional way for such a complex mixture;

B.     If the applicant cannot so determine, it is quite possible that the applicant cannot even know the name or basic structure of the potential new product.  Under such circumstance, the invention from the applicant has not been accomplished yet so that what the applicant is entitled to is to claim and teach the public in the process claim how the claimed invention can be reproduced.  Accordingly, a product-by-process claim is not appropriate for protection under such situation; and

C.     Since Claim 4 is not a product claim but a mixed claim, the respondent needs not establish the novelty therefor;

6.      “Nor is there any evidence that the properties of these products differ markedly from those of the known products.  Credence cannot be given to the respondent’s objection that the novelty of his products derives alone from their being practically odourless compared with the known products, which have an odour similar to that of an artificial food seasoning (“Maggi”); he did, after all, himself concede when questioned that this unwanted odour or the lack of it is due not to the substance parameters of the known products or of those according to the patent but to the presence or absence of insignificant quantities of monomer impurities with an odour or that type.  Evidence of novelty, however, cannot involve properties which are not attributable to the substance parameters of the product itself, i.e. which are not inherent in it.  In other words, a known product does not necessarily acquire novelty merely by virtue of the fact that it is prepared in a purer form.  Nor, therefore, does their lack of odour make the claimed products new”: With respect to this passage, we have the following comments:

A.     The Board has made it clear that properties attributable to the substance parameters of, or in the product itself can prove the novelty;

B.     Accordingly, if odourless is attributable to the substance parameter, the patentability can be established;

C.     Since this unwanted odour or the lack of it is due not to the substance parameters of the known products or of those according to the patent but to the presence or absence of insignificant quantities of monomer impurities with an odour or that type, the known product certainly cannot acquire novelty but the process for preparing the product in a purer form to be in lack of odour shall make the claimed process new.

7.      “There is no need in these circumstances to examine whether Claim 4 is based on an inventive step.  Since a decision can only be taken on a request as a whole, there is no need, in the context of the main request, to look into the patentability of Claims 1 to 3 as well.  Instead, the main request is to be refused as a whole.  The same does not apply to the alternative request, which pursues only the granted process Claims 1 to 3”: Since Claim 4 is not a product-by-process claim from our viewpoint, we do not concur with what the Board made here;

8.      “Claim 1 proposes to solve this problem by means of a process in which (A) with a vinyl ester/crotonic acid weight ratio of 100:1 to 100:20 (B) 70 to 98% by weight of the total amount of vinyl ester is copolymerised with the total amount of crotonic acid optionally in the presence of the total amount of polyalkylene glycol – and then post-polymerised while the remainder of the vinyl ester is added, after which (C) entrainer distillation is carried out with 5 to 50% by weight, referred to the copolymer, of an alcohol having from 1 to 3 carbon atoms.  Carrying out the actual polymerization process in this way is intended to remove scarcely volatile odour-producing residual monomers. While the purpose of entrainer distillation is to eliminate highly volatile odour-producing residual monomers and other impurities and thus to obtain end products which are practically odourless.  The subject-matter according to the alternative request is indisputably new and does not therefore require comment”: It is believed that this conclusion made by the Board is in line with what we have analyzed above;

9.      “For these reasons, it is decided that the case is remitted to the authority of first instance with the instruction that the European patent be maintained in amended form without Claim 4”: We agree with the remittal made by the Board but cannot agree with that Claim 4 shall be removed since it is a mixed claim whose patentability depends on the depended claim having been proved to be patentable by the Board.

It would appear to us the above two cases did not show concrete reasoning and/or evidence that the Board shall stick to a special view or interpretation to the product-by-process practice in Europe.  We will in the following scrutinize the third case, i.e. T 0423/89 – 3.3.1 having one from two Catchwords as “Change in category from a product-by-process to process claim (allowed).”  European Patent No. 0 072 695 was granted on 12 November 1986 on the basis of eight claims in response to European patent application No. 82 304 317.9 filed on 16 August 1982 to have Claim 1 as follows: “1. A silver halide photographic emulsion having silver halide grains consisting essentially of silver chlorobromide characterized in that the silver chlorobromide has been sulfur-sensitized in the presence of a silver halide solvent but has not been gold-sensitized.”

After opposed, by a decision of 9 March 1989, with written reasons posted on 2 May 1989, the Opposition Division revoked the patent.  The decision was based on Claim 1 filed in the course of oral proceedings on 9 March 1989 and reading as follows: “Process for chemically sensitizing a silver halide photographic emulsion having silver halide grains consisting essentially of silver chlorobromide characterised by adding to the emulsion a sulfur sensitizer but not a gold sensitizer and, prior to or during chemical sensitization, a silver halide solvent.”  Notice of Appeal was lodged against this decision on 30 June 1989, and a statement of grounds of appeal was filed on 12 September 1989.  In the course of the oral proceedings held on 10 June 1992, the appellants filed a series of new claims with Claim 1 of the main request as follows: “Process for chemically sensitizing a silver halide photographic emulsion having silver halide grains consisting essentially of silver chlorobromide characterised by adding to the emulsion a sulfur sensitizer but not a gold sensitizer and, during chemical ripening, a silver halide solvent.”  At the conclusion of the oral proceedings the Board announced its decision to allow the appeal with reasons to be excerpted and commented by us as follows:

1.      “The change in category from a product-by-process claim to a (manufacturing) process claim is, in the present circumstances, admissible.  Claim 1 of the patent specification protected a product (photographic silver chlorobromide emulsion with improved characteristics) which was characterised by the processes described in this claim.  In a case such as this, the protection afforded by the granted patent must necessarily extend to all those methods of manufacture covered by the processes described in the claim and disclosed in the patent specification.  By restricting Claim 1 to only one of these methods – namely to one of the two alternatives described on page 2, line 55, of the patent specification, the one specifying that silver halide solvent is added during chemical ripening – the patent proprietors have ceased to claim absolute product protection and have undertaken a significant limitation of their claim”: With respect to this passage, we have the following comments:

A.     It would appear that the Board maintained that the change in category from a product-by-process claim to a process claim is admissible because the protecting scope is narrowing.  We have a different viewpoint as generally above described;

B.     We would like to modify our position if the Board was rendering some subtle thoughts through the following passage “In a case such as this, the protection afforded by the granted patent must necessarily extend to all those methods of manufacture covered by the processes described in the claim and disclosed in the patent specification” that: 

a.       A European product-by-process claim must necessarily extend to but only include all those methods of manufacture covered by the described and disclosed processes;

b.      Accordingly, the absolute protection of a European product-by-process claim is in fact different from an absolute protection of a product but is only referred to a product produced by processes including all methods covered in the specification and possible their equivalents;

c.       It would, however, for a typical or conventional product-by-process claim, be possible that only one method is disclosed.  If this is the case, it would seem that the absolute protection for such product is nothing but that for a process claim.  Since we cannot exactly know what the Board was really referring to herein, we could not make more comments here.

C.     We could not exactly know why the Board was really reasoning by holding that restricting Claim 1 to only one of the two alternatives, i.e. the one specifying that silver halide solvent is added during chemical ripening, the patent proprietors have ceased to claim absolute product protection since it appears that Claim 1 both before and after amended only relates to a process claim which seems having nothing to do with absolute protection.

2.      “It would therefore not have been obvious to sensitise a silver chlorobromide emulsion with a sulphur sensitizer, a silver halide solvent being added during chemical ripening to increase sensitivity without fog.  Consequently, the choice of the sensitizing process in Claim 1 involves an inventive step”: We agree with this Board-made comment.

From the above, it can be known that the third case did not involve much reasoning or discussions about the product-by-process.  Also though the kindness of Mr. Engelhard, it was known to us that there was a decision of the House of Lords in England which is called “Kirin-Amgen decision” where the House of Lords restricted the extent of protection of a product-by-process claim to products obtained by the defined process due to the wording used in the claims.  By this, it was said to mean that the claims did not make it clear that the described process represents only one option to obtain the product.  This deficiency in the wording resulted in a restricted interpretation of the extent of protection.  Nevertheless, as having been obscurely mentioned that in a critical or exceptional case for the product-by-process claim, it is uneasy or uncommon to easily produce a further option to the same effect if questioned or demanded by the Examiner.  Furthermore, Mr. Engelhard further provided an important information from Mr. Rudiger Rogge who was a famous and presiding judge at the Federal Supreme Court of Justice in Germany has published a critical article dealing with the extent of protection of product-by-process claims, and, starting from the Kirin-Amgen decision, asked if the German Courts and the Boards of Appeal of the EPO really wanted to take a decision concerning the extent of protection of a product-by-process claim in the absolute way as cited within the literature.  Mr. Engelhard noted that Mr. Rogge is of the opinion that the extent of protection of a product-by-process claim should depend on the wording in the claims.  Specifically, if the wording is “product which may be obtained by the following process,’ the product-by-process claim has the same extent of protection as a product claim.  However, if the wording is “product which is obtained by the following process,” the extent of protection is reduced to products which are produced by the process described in the claim.  Since the relevant import of such practice has been dealt with in the above, we will not comment more here.

As above-analyzed and discussed, we would like to brief our recognition to the European product-by-process practice as follows:

1.      The Boards do have a tendency in taking a product-by-process practice which is something different from that originally taken and developed in the US;

2.      The Boards do sometimes interpret the product-by-process claim practice somehow in line with that taken in the US;

3.      The Boards, however, have never shown enough reasoning and constructions in supporting such somehow different product-by-process practice;

4.      Member states, practicer and/or expert of EPO might have aroused some kind of reflections on such peculiar European product-by-process practice; and

5.      We hope through this article having reviews made hereinbefore and derived discussions to be made hereinafter, the Boards will reconsider and evaluate such peculiar practice to be announced and/or followed accordingly.