Claims are the important part of a patent application that define the scope of protection that can be granted to a patent. Among different types of claims we find the mention of ‘product by process’ claims. These claims are generally used to define the non obvious and novel characteristics of product that are linked to the process by which it has been prepared. The words that are typically used in such claims are “produced by”, “obtainable by” and “product from the process comprising steps”.
JUDGEMENT OF NOVELTY AND OBVIOUSNESS:
A significantly different approach is required to judge the claim of product by process with respect to other claims that include product or process claims. Generally, a product by process claim is novel only if the product is novel.
For example, product A is prepared by process B but product is non novel and process of preparation is novel. Therefore, in that case product will not be considered novel based on process. That’s why it is advised to claim novelty based on process claim only rather than product by process claim.
CRITERIA FOR PATENTABILITY IN VARIOUS JURISDICTIONS:
INDIAN SCENARIO: The patentability has nowhere been defined in Indian Statute for patent. In India it is held that irrespective of the process by which the product has been prepared the sole criteria for patentability is the product itself. Therefore, we can say that as per India scenario one must be able to establish novelty and inventive step of the product irrespective of process.
USA SCENARIO: In USA these claims are allowed on the pre-condition that the product fulfils the criteria of inventive step and novelty. And full analysis needs to be done of the product that derives itself from a special process so that distinction can be made with respect to the prior art of the same category products.
EUROPEAN SCENARIO: EPO has guidelines that state that product by process claims are allowable only if product is patentable. And in this case the burden of proof will lie with the applicant to prove that product is different from known product due to that process by which it has been prepared.
CRITERIA FOR INFRINGEMENT:
INDIAN SCENARIO: In India, only the scope of product claims and process claims are defined and no mention of product by process claims is present.
USA SCENARIO: Variations can be found on case-to-case basis such as – In Scripps Case, it was held by the three judge bench that protection can only be extended to product irrespective of the process by which it is made. In Atlantic Thermoplastics case the panel stated that scope of product by process claims can be linked with process limitation to defend the infringer. The two cases are different in the way that in Scripps case the novelty depended on product and Atlantic case the novelty depended on process.
EUROPEAN SCENARIO: Board of appeal in Europe stated, “the product by process claims gives protection to the particular product regardless of the process by which it is obtained. Particular product herein referred as a product having the characteristic features of process from which it is obtained. Therefore, the product by process claims extends the protection conferred by the process claims.” In case of Hospira UK Ltd v. Genetech Inc. court clarified on process claims and said that “by process” limits the scope for the purpose of infringement. The judgement also stated that term “obtainable by” was much broader than “obtained by”. And hence term “obtainable by” conferred more protection on patent.
From the above mentioned examples, we can say that it is well established fact that product novelty depends solely on the product irrespective of the novel process by which it is obtained. And it is the burden of the applicant to define the non-obviousness of the product with respect to Prior art. After looking at various examples we can conclude that product by process claims mainly provides protection to product that has been obtained by specific process. Therefore, it is said that if you can claim novelty on the basis of physical attributes of your product then drafting this type of claim should be avoided.
Tushar Srivastava, 2nd Year LLB, Student at Law School, IIT Kharagpur