IPPro Patents Issue 049

European Patents
Strict and inflexible: material claims at the EPO
Innovators in advanced materials can face an uphill struggle to get suitable
patent protection at the European Patent Office. Matthew Smith, partner
at Mewburn Ellis, explains
When a useful new material is made, by whatever means, for whatever
purpose, the intellectual property surrounding that must be protected.
In my opinion this is true for all inventions, of course, but in the field of
materials we are presented with some special challenges. These are
particularly apparent before the European Patent Office (EPO).
New materials are vital in addressing the problems we face individually
as well as societally. But as materials become more complex, refined,
and diverse, it seems to me that our systems for protecting such
innovations must also change, evolve and improve to suit the modern
technological landscape.
Patent claims can primarily be split into two types: ‘item’ (product
or apparatus) and ‘activity’ (use, method, process). Ideally we want
protection of both types: to protect, for example, not just our new
material but also uses of it and ways of making it.
The EPO requires that we define a product in terms of its technical
features (physical characteristics). This works well for a ‘conventional’
product—a widget with part a connected to part b.
attorneys: traditionally, the EPO does not like product-byprocess
claims.
The first problem stems from a point of interpretation: the EPO
considers the product-by-process claim to be directly to the product
itself, not limited by the method used to make it. That means the
product itself must be novel and inventive.
Fair and reasonable on paper, sure, but in practice a major headache.
EPO case law going back over 30 years places a burden of proof
on the applicant. This can put us in a very uncomfortable position:
having to prove novelty of the claimed product.
That generally requires experimental data reproducing prior art
teachings (which is often difficult or even impossible), possibly within a
relatively short time frame, perhaps six and a half months, unless extra
fees are paid. Such activity can be prohibitive for small companies,
who may not have resources available for such investigations. It may
even prove a challenge for larger concerns, whose research and
development departments are not set up to reproduce but to innovate.
What do we do when our product is a material? In the best case
scenario, we can recite or explain the structural features which define
it—particles of X, dispersed homogeneously in Y, for example.
However increasingly we face situations where this is simply not
possible. We cannot say, or do not know, the microstructure of our
new material—perhaps it is subtly variable through its bulk; perhaps
a purely structural definition would be too narrow to capture the true
scope of the invention. Composites and particularly alloys are just
two areas where this is often a concern.
This gives us two options. First, a process based definition of the
material by reference to the way in which we have made it. Second,
a parameter based definition of the material by reference to its key
performance properties and characteristics.
A process-based definition
While the EPO examiner does need to explain their objection to a
product-by-process claim, for example by explaining why they
think the product of two processes would be the same, it is not
straightforward to overturn such an objection without hard evidence.
The second problem again stems from interpretation, but this time of
process claims.
How so? Well, Article 64(2) of the European Patent Convention (EPC)
states that the protection afforded by a process claim extends to
“products directly obtained by such process”. This seemingly removes
the need for product-by-process claims, and indeed the EPO often
argues to that effect.
However, that interpretation is not quite right. Article 64(2) of the EPC
very carefully recites that protection is given to only those products
directly obtained by the claimed process.
This is what is commonly referred to as a product-by-process claim.
These claims define a product in terms of the process used to make
it: for example, a material X, obtainable by the steps a, b, c.
There are two problems here: both are somewhat swept up by
a comment seen frequently in comments from European patent
That is, the product must actually have been obtained by the claimed
process. The product-by-process, on the other hand, is not so limited
(when the word ‘obtainable’ is used—using ‘obtained’ has some
limiting effect in some EPO countries but not in others, although the
EPO make no distinction). The product-by-process claim covers the
product as obtained by any method.
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