The recent decision T 1065/23 of the Boards of Appeal related to the patentability of product-by-process claims. The decision confirmed that for such claims, the key question for both novelty and inventive step is whether the claimed process imparts unique and non-obvious properties to the final product. The decision thus also confirms that once a patent is granted, an opponent cannot simply object to the choice of claim format. However, the case is a curiosity, given that it appears the Patentee may also have simply defined the product per se in addition to the product-by-process, but chose not to.
Legal background: Product-by-process claims
Product-by-process claims define a product by reference to its method of manufacture. This claim format is permissible at the EPO, but it comes with specific requirements for patentability, particularly concerning novelty. The established case law, notably decision T 0150/82, dictates that the patentability of a product defined by its manufacturing process is determined not by the novelty of the process itself, but by the properties of the product obtained. If the product is identical to a known product, the claim is not novel, even if the process used to make it is new and inventive. For the process features to confer novelty, they must cause the final product to possess different, identifiable properties compared to the prior art.
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| Peas |
The case law with respect to product-by-process claims contrasts with the law relating to claims to a process per se. Under Article 64(2) EPC, the scope of protection for a patented process extends to the products directly obtained by that process. By contrast, a product-by-process claim is a claim to the product per se. The patentability of the invention hinges on the product's characteristics, not the process's novelty.
A further layer of complexity in the law on product-by-process claims arises in opposition proceedings. An opponent may wish to argue that a product-by-process claim is improper because the product could have been defined by its structural or functional characteristics, which is a requirement for the allowability of a product-by-process claim during examination (EPO Guidelines for Examination, F-IV-4.12). However, this is considered an objection to a lack of clarity under Article 84 EPC. The Enlarged Board of Appeal in G 3/14 clarified that an objection for lack of clarity cannot be raised against a granted claim in opposition proceedings. The allowability of a particular claim format, therefore, cannot be challenged on this basis post-grant.
Case background: Pea protein extract
T 1065/23 concerned a European patent relating to both a method for extracting pea protein (EP3071045 B1). According to the specification, the properties of protein extracts, such as their solubility and viscosity, are heavily influenced by the extraction method. The invention thus aimed to provide a method that produces pea protein extracts with a combination of low solubility, low viscosity, and low gel strength, making them particularly useful in applications like bakery and wine filtering.
The claims on appeal included a process claim (claim 1) and a product-by-process claim (claim 10). A product claim added at opposition was not included in the claims of the Main Request on appeal. Claim 1 specified a multi-step method, including providing an aqueous composition of pea proteins, isolating them to form a slurry at a pH between 4.0 and 5.8, and then subjecting this slurry to a specific heat treatment with defined temperature and time ranges. Claim 10 was directed to the "Pea protein extract obtainable by the method according to any one of claims 1 to 9".
The novelty and clarity of product-by-process claims
On appeal, the Opponent argued that the product-by-process format of claim 10 was impermissible because the resulting product could have been defined by its physical properties, such as its solubility, gel strength, and viscosity. Furthermore, the Opponent contended that both the method and the product lacked novelty over several prior art documents describing pea protein extraction.
In response, the Patentee submitted that the product-by-process format of claim 10 was allowable and that the specific combination of steps in their method, particularly the heating of the slurry at a specific isoelectric pH range, imparted unique physicochemical properties to the resulting protein extract. The Patentee provided evidence from the patent itself and further experimental tests to show that their product had a distinct profile of low solubility, viscosity, and gel strength, which translated to superior performance in food applications. This unique combination of properties, the Patentee argued, rendered the product novel and inventive.
The Board of Appeal ultimately agreed with the Patentee, setting aside the Opposition Division's decision and remitting the case with the order to maintain the patent on the basis of Auxiliary Request 1. On the issue of the product-by-process, the Board of Appeal confirmed the established case law that an objection to the format of a claim itself is not a valid ground for opposition. The Board of Appeal noted objecting to the claim format is a clarity issue, which is not open to examination in opposition proceedings for granted claims:
"The mere fact that claim 10 is drafted as a product-by-process, despite the fact that the claimed product could be satisfactorily defined by reference to its composition, structure or other testable parameter, is not a ground for opposition...considering that claim 10 is a granted claim, its format cannot be objected to on the ground that it is drafted in the product-by-process format or that it lacks clarity (G 3/14)."
On novelty, the Board of Appeal found that neither the method of claim 1 nor the product of claim 10 was anticipated by the prior art. For the Board of Appeal, the prior art documents did not disclose the specific sequence of isolating the protein into a slurry at the claimed pH range before subjecting it to the specific heating regime. For the product-by-process claim, the Board of Appeal accepted the Patentee's argument that the process imparted special characteristics to the product that went beyond just low solubility. The Board of Appeal found that the patent provided credible evidence that the resulting extract possessed a unique combination of low nitrogen solubility, low gel strength, and low viscosity. The Board of Appeal further noted that the Opponent had provided no evidence to the contrary. The Board of Appeal thus found the claims novel.
Arbitrary versus obvious selections
The Board of Appeal further dismissed the inventive step argument, rejecting the Opponent's argument that the selection of the claimed pH range was an arbitrary and therefore obvious selection. The Board of Appeal rejected this argument, finding that the selection was not arbitrary because the evidence showed a clear technical advantage when operating within the claimed range compared to outside it. The Board of Appeal reasoned that as long as an effect is achieved within the claimed range that goes beyond the prior art, the specific choice of the range's endpoints is not a reason to find the subject-matter obvious (IPKat). The claims were therefore also found inventive.
Final thoughts
The decision in T 1065/23 confirms the EPO's established approach to product-by-process claims at the EPO. The Board of Appeal applied without question the guidance from G 3/14 that the format of a granted claim is not a valid ground for opposition.
This case contrasts with the decision in T 1869/19. T 1869/19 related to product-by-process claims for a medical device. The claims failed in this case because the patentee could not convince the Board of Appeal that the process steps necessarily resulted in a product with novel properties (IPKat). The Patentee in T 1065/23, by contrast, was able to point to data that convincingly demonstrated for the Board of Appeal the link between the product and the process used to make the product. This case also confirms the difficulty of arguing against the mere format of a granted product-by-process claim as an attack at opposition.
However, for this Kat, cases such as that of T 1065/23 are a curiosity. The question the case raises, from the commercial perspective, is why would you choose to protect only process and product-by-process, if it is possible to protect the product? (IPKat). Whilst rejecting the claim format objection, the Board of Appeal specifically concluded in this case that the product could have been protected as a product claim as opposed to a product-by-process claim (IPKat). However, it appears that the Patentee deleted this claim in response to a novelty objection.
A product claim, which defines a product by its structure or composition, will generally offer significantly more robust protection than a product-by-process claim. The primary benefit of a product claim is that it covers the product itself, regardless of how it was made. This makes enforcement of the patent far more straightforward. In contrast, a product-by-process claim can be difficult to enforce because the patentee bears the burden of proving that an allegedly infringing product was, in fact, obtainable by the claimed process. This can be a major challenge in certain fields, as competitors' manufacturing methods are often closely guarded trade secrets, making infringement difficult to detect and prove. Furthermore, product-by-process claims can be overly narrow, as applicants are often required to limit the claim to very specific process parameters. In this case, the granted patent and the main request on appeal did not include a product claim following a finding at opposition that the product claim lacked novelty. However, given that the novelty of a product-by-process is dependent on the novelty of the product, the arguments for the novelty or lack of a product claim and and a corresponding product-by-process claim, are the same. PatKat would be interested in readers thoughts.
Further reading
Reviewed by Dr Rose Hughes
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Friday, July 18, 2025
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This is an 'obtainABLE by' type of product by process claim, and so in many ways the protection provided by claim 10 is as good as a product claim. A product does not actually have to have been made by the process of claim 1 to infringe. 'ObtainED by' claims are much more restricted in scope because then the product MUST be made by the process recited in the claims, but that was not the case here. I suspect the patentee has managed a very good balancing act of taking the focus of validity on to the process steps, whilst getting very broad product protection from claim 10. The opponent was probably faced with the difficult task of proving that prior art products could be made by the process of claim 1, and might not have had the experimental resources to do so. So the real scandal here is possibly how the burden of proof should apply to such product by process claims. It might be that the patentee should have the burden of showing novelty/inventive step of a product by process claim in opposition (in a similar way the the burden is reversed for antibody cases). Thank you Rose for the writeup
ReplyDeleteGood point Santa re. obtained versus obtainable. I have corrected this above!
ReplyDeleteI have commented this decision in my blog.
ReplyDeleteWhether the present decision is a scandal, is not as clear as Santa says.
It should not be forgotten that, any amendment of a granted claim, has to answer a ground of opposition, cf. R 80. As claim 1-9 are new and inventive, there was no apparent ground of opposition, which could have forced the proprietor to amend claim 10 from obtainable to obtained, unless it was shown that the product was already know as such.
The ED should have queried “obtainable” before grant, but it did not do so. It most probably did not realise the difference between “obtainable” and “obtained”.
What is more bothering is that the board has dismissed T 150/82 as relating to examination, whereas the present case is an opposition.
One could well envisage a situation in opposition when the proprietor, in reply to a ground of opposition, files a product-by-process claim. Irrespective of either a possible clarity problem under G 3/14, or conformity with R 80, I have doubts that headnote II of T 150/82 would not be applicable.
In my interpretation on GL F 4.12 there is no difference between obtained and obtainable „ The claim may for instance take the form "Product X obtainable by process Y". Irrespective of whether the term "obtainable", "obtained", "directly obtained" or an equivalent wording is used in the product-by-process claim, it is still directed to the product per se and confers absolute protection upon the product.“
ReplyDeleteI understand GL F 4.12 as there is no difference in obtained or obtainable:
ReplyDelete„The claim may for instance take the form "Product X obtainable by process Y". Irrespective of whether the term "obtainable", "obtained", "directly obtained" or an equivalent wording is used in the product-by-process claim, it is still directed to the product per se and confers absolute protection upon the product.“
Some further thoughts.
ReplyDeleteThe preceding commentor is right. Guidelines F-IV 4.12 allow various formulations, but they deal with clarity and explain that "obtainable", "obtained", "directly obtained" or an equivalent wording can be used in a product-by-process claim. Strictly speaking, in view of Art 64(2) it should be “directly obtained”.
Santa does however have a point, since Guidelines F-IV 4.12 mention that “The burden of proof for an allegedly distinguishing "product-by-process" feature lies with the applicant, who has to provide evidence that the modification of the process parameters results in another product, for example by showing that distinct differences exist in the properties of the products.”
Looking at the file, the ED had no reason to doubt that the process itself new and inventive would not impart to the product capabilities which were not known in the prior art.
As we are in opposition, the onus of proof lies with the opponent to show that the product is known as such. The opponent could manifestly not fulfil its onus of proof, and hence complained in opposition that the product should have been defined with different process parameters like low solubility, gel strength and viscosity, This would most probably have helped the opponent. As the corresponding process claim was novel and inventive, he was on the loosing track.
I've found with antibody cases that the burden of proof stays with the patentee in opposition for showing novelty/inventive step for complex definitions of binding properties, though the Guidelines does not explicitly state it should. So with product by processes I believe the burden should stay with patentees in opposition, especially where the process imparts complex structural characteristic which cannot be easily defined in a product claim (though of course present case law does not require this). Ultimately opposition is a document based procedure, and we need to be very cautious in expecting opponents to carry out experiments in the case of product by process claims. The antibody EPO case law has already recognised this. Also I would add the parts of the EPO that deal with plant based technology are much more accepting of product by process claims for extracts obtained from plants, which seem to be part of their culture
Delete@ Santa,
DeleteI can agree with you that opposition is a document based procedure, but in opposition the onus of proof lies in principle with the opponent.
It might well be that in “antibody cases [that] the burden of proof stays with the patentee in opposition for showing novelty/inventive step for complex definitions of binding properties”, but this appears to be an exception.
Like any exception, it must be applied with caution and not in a generalised manner.
The present case might well relate to a product-by-process claim, but it does not appear to deserve the same treatment as product-by-process claims in antibody cases.
Thank you. The nature of antibody technology leads to different patent cases having overlapping scope, i.e. lots of patent cases will cover the same area and the same antibody, and that has led to (a) attorneys being more imaginative in complex definitions of binding ability of the antibody and (b) more oppositions leading to rapid case law development. This is not the case in the plant extract field where everyone has different extract product and they can work independently without bothering each other. [If this was not the case (and the plant extract companies were all working on the same type of extract) we might well have seen EPO case law becoming stricter on product by process claims for plant extracts, including I believe reversal of burden in opposition where patentee must shown novelty and inventive step ]
DeleteFrom a practioner's point of view, in relation to the question ' why would you choose to protect only process and product-by-process, if it is possible to protect the product?' the answer is ' was it really possible to protect the product?'
ReplyDeleteEspecially in product by process cases, it can often easily be argued that the resulting properties (in this case apparently: solubility, gel strength and viscosity), when expressed as product characteristics, are not really product features, but the technical effects of (unknown) product characteristics. So if the examiner considers this to be ' results-to-be-achieved' in the first examination report, it is very difficult to argue against, because actually... the examiner has a point.
I wonder if an Art 83 attack could have succeeded here, in particular based on whether the rather general instructions in claim 1 (especially considering the many alternatives in claim 1) would have enabled the skilled person to obtain the advantages over the FULL SCOPE of claim 10. My gut feeling is that the skilled person would not have been able to do this.
ReplyDeleteThe blog stated 'The Patentee provided evidence from the patent itself and further experimental tests to show '. There was a decision a year or so ago which made it clear that ONLY for inventive step (demonstrating the actual effect), not for enablement, later filed evidence was allowed. At least the 'further experimental tests' could then have been inadmissible for the enablement arguement.
The Kat invites thoughts as to why the product-as-such claim was not pursued. The problem with a product-as-such claim is that defining a pea protein having solubility less than X, viscosity less than Y, and gel strength less than Z, where X, Y, Z represent the points of novelty, will typically be subject to objection as defining a result to be achieved, and the Examiner will push the applicant to claim the method and the product by process. It takes an awful lot of pushback to get Examiners in certain fields to accept product claims defined by parameters at the point of novelty as clear, even when one has on paper good arguments under the Guidelines, whereas there is often less resistance to pursuing product claims tied to a particular process. As a secondary point, the process claims allow for a delimitation of scope which is slightly stretchier than hard parameter values, in the sense that the actual boundaries delimiting the products of the claim might be hard to discern in advance of the infringement. So there might be good reason why the proprietor, when applicant, pursued the product-by-process claim rather than the parameterised product claim.
ReplyDeleteAs I've mentioned in my earlier comment about plant-based technology cases, claims to extracts obtainable by a particular process are considered very standard in that field. A lot of inventions are based on the properties of such extracts and more detailed physical characterisation has not yet been done. The EPO Examiners feel comfortable granting those claims, and applicants have got used to pursuing them. There are no 'result to be achieved' or 'enablement across the scope' objections once novelty and inventive step have been reasonably shown. People who work in the plant based field will know what I mean. They have their own version of EPO practice and it seems to work for them
Delete