Product-by-Process ©(Part III of IV)

Brief Items to be Discussed for Presenting Issues We Concern

l Whether or not a claim scope can be decided independently of the claim language?

l Shall an alternative or probable term be permissible?

l Are there different instances in which the product-by-process practice can be applied or interpreted differently?

l Can we broaden the claim scope in the opposition stage?

l Is it possible that a process is so great, unexpected or exceptional to the conventional one for producing a product that it deserves to empower the exclusive rights of a product to the patentee, irrespective of what methods are used to produce the product?

l While a process might be unpatentable per se, can it be patentable through transformation into a product-by-process or mixed claim type if various advantages are brought forth thereby?

l Is it good to create a 2-generation product-by-process claim type to protect a new product when hard to define without resorting to a process?

l Should there be a process-by-product claim type?

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

l 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?

l 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?

l Must a process claim have a scope smaller than that of a product claim or a product-by-process claim?

Detailed Analyses

l Whether or not a claim scope can be decided independently of the claim language?

Traditionally, Confucius or his bibles try to teach every Chinese that one should set a target for his life journey to be unified with the universe by which it is meant that one should lead a life abiding by the rule or Tao the universe or the nature silently shows before the human beings. Being so educated, Chinese people lead their lives for more than reported five thousand of years before subject to western shocks. Every Chinese, however, has a puzzling question what on earth the rule or Tao the universe or the nature in fact silently shows before the human being. Since it is so fascinating, fanciful and/or remote that it is so difficult to get standard answers or an appropriate answer for a specific individual, there are not that many people striving their lives for trying to achieve such target. Perhaps, this is necessitated in order that this world will not have too many sacred saints.

If something does not relate to a norm and is subject to preferred or selected definition for different individuals, it should fall into the purview of a social science rather than a technological science always having an exact cause and/or consequence. Nevertheless, such declaration needs not make the question or title raised herein wrong since it is well-known to one skilled in the patent field that a patent is a combination of the natural science and the social science. In as much as a patent necessarily includes therein an attribute of social science, various or flexible answers to an issue might be appropriate.

A claim, however, cannot have a scope to be construed by the potential infringer who might unexceptionally construe that there is no infringement by wrongly interpreting or unduly narrowing the claim scope deserved to have, although the judge or a fair third party might construe, basing on specific lawful precedents, doctrines or principles the claim scope in a way not so conforming with the claim language. Nevertheless, it is believed that only selected persons who have been well-disciplined in the patent field can own such rights in differing the legal protection scope from the claim language only in limited cases in order that the patent society can be operated or run in order. Accordingly, for this topic, we would like to comment as follows:

1. The used language should be the decisive factor for a claim in being conferred with a specific scope in order that not only the public or the interested parties will know what are respectively allowed and prohibited, but also the patentee will know what have respectively been and not been protected;

2. It has been our nearly unexceptional life experiences that there always exists an exception in a standardized norm, which, however, never deters us from striving for standardization in this world;

3. It is believed that it is far more difficult to newly set out a series of rules and standards for solving when and how a claim scope can be decided independently of the claim language, as will be experienced if we take there is a unique European product-by-process practice, and for resolving the ensuing problems and issues for such new practices than to carefully examine whether the original definition of product-by-process practice set forth by the US is reasonable and viable and then follow such conventional definition if deemed acceptable.

l Shall an alternative or probable term be permissible?

In prosecuting a US patent application, it is not seldom to encounter an indefinite issue having diversiform instances capable of including a probable or degree-adjective term, e.g. the words, can or high. It is believed that one skilled in the patent field will know what is to be mentioned here. Nevertheless, if the above sentence is a claim language to be examined by a US examiner, he or she might find there are 4 occurrences of indefiniteness. The lovely examiner might pretend that s/he might not be able to understand what ‘diversiform’, ‘capable of’, ‘can’ and ‘high’ respectively mean because:

1. Everyone wants to have a colorful life but it is not often that every one will have the same definition about ‘colorful’ or ‘diversiform’;

2. One normally intends to denote by ‘capable of’ or ‘can’ that something has the ability to effectuate some activity or characteristic, by which the claim drafter might want to transmit that while said something can effectuate said activity or characteristic, it might not be compulsory for said something to effectuate said activity or characteristic. This should also be the basic philosophy of the above-mentioned European product-by-process practice. As is known, it is so happy and jocund for a claim drafter to take or be made believe that he has drafted a claim set which protects the relevant invention so wonderful as to have a scope from which no one can escape infringement if the same idea is to be embodied and/or over which no one can surpass or make better. As is known, since obscurity makes thing beautiful, some term having probable or alternative imports is a very good medium to produce such obscurity. Accordingly, we are not certain whether such US definiteness requirements to this effect harm the human rights of a claim drafter because his/her rights of becoming cleverer, having a happier soul and leading a grateful spiritual life are therefore somehow obstructed. We do believe that the USPTO should think about loosening requirements of the usage of some probable terms, e.g. ‘may’, ‘can’, ‘capable of’…etc. since these terms are permissible in quite a lot of countries. Before it is really loosened, if such terms are still desired, there might be a leeway for the claim drafter to replace such term with a modified phrase, e.g. ‘having the ability to,’ which appears capable of circumventing such US requirement;

3. As regards the degree-adjective, e.g. high or strong, since everyone has different standard or feeling about the degree or extent, such term might find no problem before the Patent Offices in many countries but is also regarded indefinite by the USPTO. Nevertheless, such indefinite objection can normally be cured by adding thereto a preceding adverb, ‘relatively.’

Through the above short comments, we would like to express that while some alternative or probable terms are believed permissible in the claims, it might be another issue of the European product-by-process practice interpreting the alternative or probable clause. Specifically, we will compare the clause ‘a structure capable of exhibiting a flexibility’ (hereinafter referred to as the former) in a regular claim and the clause ‘which may be obtained by X process’ (hereinafter referred to as the latter) in a European product-by-process claim as follows:

1. The former clause is normally recited to define that the structure in a device can exhibit a flexibility which causes a specific characteristic to the device which is thus possessing a specific function and is therefore patentable over the prior art. It is to be noted here that:

A. Such characteristic or the flexibility in the structure might be the critical feature for the device to possess the specific function. Accordingly, even if it is unnecessary for the device to operate as it is, at all times, through the exhibition of the flexibility, it is this flexibility of the structure which imparts patentability to the device;

B. If the above is not the case, the situation should be that it is inherent for the structure to be flexible, or it is intimate for the device to operate as it is with the flexibility in the structure so that such feature is necessary to be put in the independent claim. Nevertheless, if this is the case, through some kind of arrangement or specific recitation, the former clause is dispensable in fact; and

2. The latter clause is suggested for adoption in a European product-by-process claim to achieve the purpose that it is only an exemplary method to produce the resulting product in order to secure an absolute protection. As having been noted somehow hereinbefore, however:

A. It appears none of cited precedents from the Boards of Appeal in EPO can prove a truth that a product-by-process claim can be patented without the recitation of the latter clause. If this is really the case, the latter clause is a compulsory feature for the product-by-process claim to be patentable so that this feature cannot be obviated in interpreting the scope thereof in order that the rule in the patent world that a feature is a limitation will not broken;

B. If the latter clause is not a necessitated feature for a European product-by-process claim, the invention in issue should be able to be drafted otherwise, e.g. in a product claim or a process claim, which can be irrelevant to the product-by-process claim. Further, if this is the case, the involved claim must have another key feature, other than the latter clause, being critical to the patentability of the European product-by-process claim.

Accordingly, we might be able to conclude for this issue as follows:

1. Although there might be different instances for an alternative or probable term, such term discussed to the above-described former clause appears harmless to the definiteness of a claim;

2. As a matter of fact, such term discussed to the above-described former clause can normally be circumvented by suitable phraseology so that objection thereto might not be necessary;

3. A claim drafter allowed to use such term is a happy person; and

4. Such term or a phrase containing such term should be read into the claim scope.

l Are there different instances in which the product-by-process practice can be applied or interpreted differently?

Until now, the US practice does not have a utility model, which, in many countries, is originally provided to protect a petty patent or an invention of a lower level than that of a regular invention but has now become a medium of acquiring a rapid protection for an invention having a shorter market life. The law is changing and should change with the social development. Is this principle applicable to the product-by-process practice? For trying to answer this question, we would like to comment as follows:

1. If we were to equate a product-by-process claim and a mixed or hybrid claim, it is believed that some issues or difficulties in our mind regarding how to interpret a product-by-process claim can be solved;

2. If we were to take the above equation before we can determine that it is not suggestible to follow the traditional product-by-process definition, it appears that the European product-by-process practice should be interpreted in the way to admit that a feature in an alternative or probable form in a claim is to serve as a limitation thereof although such limitation needs not be absolute, which means that an alternative or probable feature needs only be construed to have an alternative or probable limitation. Specifically, a feature of ‘capable of exhibiting a flexibility’ limits the claimed subject to have a nature capable of exhibiting a flexibility but cannot impart to the claimed subject an absolute limitation where the claimed subject cannot function to a bit without the exhibited flexibility. In other words, if a feature of ‘obtainable by a process X’ gives the patentable weight to a claimed subject, the claimed subject:

A. Must be obtainable from the process X;

B. Need not be obtained by the only one, sole and single process X;

C. Protected thereby possibly includes one produced by another process, which is similar or equivalent to process X, or even other process disclosed in the same specification; and

D. Is not subject to an absolute protection in order that the world will not get into a mess when another patent directed to the same subject ‘obtainable by a process Y’ is issued at a later date.

3. If we do not agree with the above equation but faithfully adhere to the recognition of Boards of Appeal in EPO that the product-by-process claim is claiming a product so that the product in itself must be new, it appears to be inevitable that the subject matter can be put in a product claim format and can be patentable even without the recitation of the process element, e.g. ‘obtainable from a process X.’ The logic should run in this way in order that we can reach the conclusion that the process is only exemplary so that the process element needs not be taken into consideration when the construction of a claim scope is to be conducted;

4. If we would like not to accept the above logic and reasoning but desire to maintain that a European product-by-process is a third category which is to be accorded with an absolute protection for the resulting product, we need to confront with the following major questions:

A. If the product is new in itself, why can it not be protected under the product type? Although the Boards of Appeal in EPO have recognized or declared that there are circumstances in which a subject matter cannot be properly recited in a pure product or process claim, we are of the opinion that it is relatively extremely rare that a subject matter cannot be properly defined by a pure product or process claim but requires definition through a product-by-process claim. As a matter of fact, none of cases discussed by Boards of Appeal in EPO in connection with a product-by-process claim, to our knowledge, cannot be properly protected or defined by a pure product or process claim. Accordingly, without a real product-by-process case testing the Boards of Appeal in EPO, all its incidental reasoning about the product-by-process claim cannot be taken for granted to be what the Boards of Appeal must or will take, believe or adopt in the future, or even currently;

B. If the process element is a key to patentability of the product-by-process claim, why can it be excluded from the limitation thereof upon claim construction, as above-reasoned?

C. If the process element is unimportant to be merely exemplary, why is the applicant bothered to put it in the claim recitation?

D. What are rules and principles a European product-by-process claim will take or utilize in order to solve or answer the above 3 and other questions having fully or partly been dealt with hereinbefore?

5. If, despite the above questions pending serious considerations and solving answers, we still desire to maintain a European product-by-process claim, it should be necessary for us to set out or clarify at least:

A. Can an intended European product-by-process claim still be patentable without the recitation of the alternative process constituent?

B. If yes, at what circumstance a claim set forth in a product form should be construed to be a product-by-process claim?

C. If not, what is the coverage or how far the alternative recitation, e.g. ‘obtainable from a process X’ can be extended or broadened?

6. If, regardless of open answers and/or unsettled standards to the above questions and/or issues, we still desire to keep the European product-by-process claim practice, people in this world need to reach an implicit understanding that in order to distinguish a product claim from a product-by-process claim, the alternative recitation, e.g. ‘obtainable from a process X’ in the latter is necessitated to have a limited range, in order to make it clear that in the logical patent world, it has been made sure that before the applicant is forced to adopt a product-by-process claim, it has determined that a product claim is not appropriate in the critical situation while there exists an understanding in our mind that although both the product claim and the product-by-process claim have an absolute protection, their respective absolute protections must be different from each other since a same product is probably to be protected in both a product claim and a product-by-process claim. The ensuing question is thus clear that under the preemption of an absolute protection offered by a traditional product claim, which is logically necessitated to exist before a product-by-process claim is sought to be protected, what kind of absolute protection is to be conferred to a product-by-process claim without harming the preceding absolute protection a traditional product claim has been legally conferred to enjoy? How we can resolve the issue of cross-license between a preceding product claim and a later product-by-process claim both directed to the same product?

7. If we still would like to disregard all of the above questions and doubts but sustain a European product-by-process claim, it appears to us only the following situations remain viable:

A. For a brand new developed or found chemical substance, we know neither its chemical structure nor its exact constituents so that the applicant is forced to describe it by method for producing the same. As above-described, such situation will hardly occur with the present advanced technologies as it has been reported that every substance in this world will have an NMR diagram specific to all other ones. Accordingly, since there already is at least one way, i.e. using an NMR diagram to define an invention, we cannot excuse our laziness or insufficient efforts to figure out how to properly define an invention for the adoption of a European product-by-process claim;

B. Notwithstanding the above analyses, if a European product-by-process claim is still present and allowed, it seems that only the following cases can finally resolve what kind of absolute protection a European product-by-process claim has really been conferred (although it is to be noted that such resolution is only case-specific without an absolute application):

a. A potential infringer consents to pay the royalty fee to the patentee; or

b. A court decision has ruled whether there is an infringement.

l Can we broaden the claim scope in the opposition stage?

In the primary case before the Boards of Appeal in the EPO we extensively dealt with above, it is believed that what the Appellant submitted that “the product claim of the patent as amended did not extend the scope of protection conferred by the process claims of the patent as granted in accordance with Article 123(3) EPC” is not necessitated to be necessary since if the product claim of the patent as amended can only be conferred with the protection for the product that is directly obtained the process of the process claim as granted, such amended claim might be in fact claiming a smaller scope than that of the process claim as granted because the process claim will also provide protection for the process per se in addition to the product directly obtained under Article 123(3) EPC so that Article 123(3) EPC cannot be violated by the amendment in issue. Specifically:

1. Through the above various discussions, it would appear to be reasonable to us for concluding that an absolute protection for a European product-by-process shall mean that as long as a process identical or equivalent or somehow constructed to be equivalent to the process recited in the European product-by-process claim is involved in manufacturing a product defined therein, such product is necessitated to be construed under the absolute protection of a European product-by-process claim no matter what kind of process is really engaged before, during or after the product is brought forth, which, however, is the very same definition of a traditional product-by-process claim we discussed in last two issues;

2. As a matter of fact, from our viewpoint, every category of claim type has an absolute protection. Specifically, a product claim has an absolute protection directed to protect a product regardless of what kind of process is used to manufacture the product. Also, a process claim has an absolute protection directed to protect a process regardless of what kind of product will be resulting from said process. Whereas, a product-by-process claim has an absolute protection directed to protect an intermediate situation where neither the involved process nor product is patantable but the combination of the involved product and process generates a patentable weight therefor;

3. Due to the even much more diversification and fineness of the art field in this world, while the product claim might be able to maintain its primitive definition generally intact, it has become hardly possible to keep a process claim containing only pure steps, which means a step without introducing therein a specific product, therein since basic steps in a process without the product element are normally common to a manufacturing process for a myriad of products, which in turn means that a process claim nowadays can be distinguishing or patentable only when a product element is introduced as a single step somehow or into one or more of the basic steps, which trend have unconsciously excused the mix-up between a process claim and a product-by-process claim or a mixed or hybrid type claim, which, however, shall not blur our clear mind to make a distinction among the product claim, the process claim and the product-by-process claim;

4. We had better go back to our topic here since it appears we have gone too far therefrom. If there is room left for uncertainty, we will deal therewith later. Although Taiwan has dropped off the opposition system recently, the operation of such system has not fully gone out of our mind. Since the opposition period comes immediately after the grant, it seems to be too harsh to ban the broadening of a claim scope if there introduces no new matter. This author always likes to express that ‘a person is entitled to inadvertently make a mistake but is obliged to diligently rectify such mistake.’ As is well-known, the US practice allows to broaden the protecting scope within two years from the issuance, which appears to be much more humane. We would like to briefly discuss why such ban is believed reasonable as follows:

A. Public declaration: The assumed protecting scope shall have been declared as what is described in the claims so that an interested third party can know what are respectively allowed and banned. Our opinions to this effect are that if the third party can know claims of the first version in a first instance, a second instance must be ready for it to ascertain whether said claims have a second version;

B. Public domain: That which has not been recited in the claims but described in the specification has been presumed to have fallen into the public domain for the free enjoyment by the general public. It appears to be clear that such situation occurs through negligence or inadvertency from the applicant rather than intention or willfulness therefrom. As is known, donation always comes from charitable willfulness of the donator and normally will not result in a later regret or complaints therefrom. Accordingly, such presumption of public domain might not have reflected the correct event really happening;

C. Interest protection: If an investment for a manufacturing equipment is significant, how can the investor recover what it has invested or will lose if suddenly banned for production through a broadening of the allowed claims. Although such issue is uneasy to be dealt with, this appears not to be so heavy as to play a decisive factor for denying such broadening. Nevertheless, it appears that how this issue can be wonderfully solved will decide to what extent we can liberate the ban, if deemed appropriate.

5. Although the situation might become a little more difficult if the opposition period has expired since the presumption in the preceding paragraph might become more consolidated with the time, we would like to comment as follows:

A. As a matter of fact, there involve two issues for amendment upon the opposition or even cancellation proceedings, i.e. whether the applicant can broaden the scope as examined above and whether the applicant is entitled to move subject matter from the specification to the claims;

B. As to the first issue, it is advocated that to a minimum extent, the applicant shall be allowed with a limited period to broaden the claim scope after grant;

C. As to the second issue, although the principles exercised for the first issue might also be applicable to the second issue, it is believed that we had better deal with this issue separately as follows:

a. For features subordinate to original ones: The applicable extent permitted for the second issue should be freer than that of the first issue since the most headache issue, i.e. the interest protection above-described normally will not play an important role here;

b. For dominating features independent of original ones: Although this issue is not easy to exist due to application of the principle of unity of invention, it might be easy to imagine that principles applicable to the first issue should also be applicable here.

We have guessed somewhere in the above somehow that it might be creatively possible that 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, it appears we need to clarify the following:

1. If the process is so unique to the manufacture of a product, why can’t a process claim under the present system offer a due protection thereto? Or, alternatively, why can’t the current patent system offer a suitable medium to protect therefor?

2. If only a specific process is wonderful for manufacturing a specific product, is the process or product still qualified so great as to cause the resulting product deserving an absolute protection?

3. How great, unexpected or exceptional a process capable of resulting in a product must be in order that the process plus the product can be protected under the product-by-process claim type in order to secure an absolute protection for the resulting product?

It is to be noted that in the above, we add the limitation ‘except the conventional one’ process into the absolute protection of a European product-by-process claim, which might be a new type of claim construction. Specifically, as is known, a claim shall be generally defined through the positive recitation under the US patent practice, which means that, normally, a claim shall be defined by reciting that it contains what kinds of elements to constitute an entire device or process, rather than by reciting that said device or process does not include this and that. Due to the questions or difficulties above-described, if we can impart a European product-by-process claim with a scope absolutely covering everything except the conventional process or ones, this should be another type of claim construction with respect to the absolute protection of either a product or a process claim.

Although the above can prove that we have exercised lots of efforts in locating potential reasonable alternative solutions for a peculiar European product-by-process claim, we would like to make some more comments for this alternative claim construction:

1. Although the eventual product must be new for a product in a European product-by-process claim to be patentable, such product manufactured by the conventional process or ones, nevertheless, is old so that it cannot be patented by a conventional product claim;

2. Since an applicant has found a specific process in manufacturing such product can impart a patentable feature to a European product-by-process claim and cause the resulting product to be regarded new, one has first been caused to believe that it is patentable. If s/he follows the conventional European product-by-process claim interpretation that it is a product claim to have an absolute protection subject to the exclusion as depicted in the preceding paragraph, the above-mentioned other type of claim construction might be the sole solution for the European product-by-process to be rationalized. If the above reasoning is acceptable, at least the following questions in addition to the above questions need be taken into considerations or might need clarifications:

A. How to determine or who has the duty to prove what conventional processes are?

B. If a further process so unique to the conventional ones and the specific process can also bestow a patentable feature to a further European product-by-process claim, what kind of absolute protection this further product-by-process can have and what and/or where the distinction between respective scopes of the former product-by-process claim and this further product-by-process claim is?

l While a process might be unpatentable per se, can it be patentable through transformation into a product-by-process or mixed claim type if various advantages are brought forth thereby?

At the first glance, this question appears to be illogical since whenever there is a product-by-process case, it means that there is a critical case, which means that neither a product claim nor a process claim is suitable for the protection of a specific invention, which accordingly has answered that while a process might be unpatentable per se, the subject matter involved therein might well be protected by a product-by-process claim under a second thought. Certainly, what is patentable here is not the process per se but the combination of the process and the involved product through the presentation of a product-by-process claim or a mixed claim.

Specifically, although the involved process might be so common in itself, the situation changes when such process is utilized to manufacture a specific product because many an advantages are brought forth through such novel combination, which ultimately turns an old product into one being regarded as a new product to be qualified for a special product-by-process claim protection although the resulting product, as a matter of fact, does not change a lot from a certain point of view.

Accordingly, what we are really desiring to discuss here is that how we should do given the following prerequisites:

1. Under the classical patentable definitions, a process claim must have a step or procedural feature compared to a conventional process, a product claim must have an implicit or explicit structural feature compared to a conventional product and a product-by-process claim must bring forth a new product at a critical situation statutorily improper for protection under a product or a process claims where there is an old product being generally the same with the new product but different therefrom in respect of a specific attribute of the product involved; and

2. There is now a subject invention which has some advantages compared to an old product and apparently has the involvement of a product feature and/or a process feature but has been determined to be unpatentable under categories of a product claim or a process claim.

Specifically, what we are discussing now is not a conventional product-by-process claim or a currently recognized or future European product-by-process claim. Rather, what we desire to discuss here is a subject matter:

1. That might be unpatentable under a product claim since the examiner might take there is an insufficient creativeness or inventiveness;

2. That might be unpatentable under a process claim since the examiner might take there is an insufficient creativeness of inventiveness; and

3. That cannot qualify as a conventional product-by-process claim, but

4. That lowers the cost for manufacture, facilitates the operation and/or increases the convenience in usage.

We know there is a difficulty here that no matter how fine or subtle we desire to or could analyze to define the advantages exemplarily itemized in the above Item 4, it is always impossible for us to provide delimitations for demarcating the lowering, facilitating and/or increasing extents over which all people in this world will feel convinced as to the qualification of said subject matter for the inventiveness or creativeness. Nevertheless, as long as a significant, substantial or meaningful improvement or advantage is achieved thereby, it is suggested that the patentability be found therefor so long as the claim has been distinguished over the prior art.