European <strong>Patents</strong> Clearly this is a more useful scope. It’s also more enforceable–as a patentee, I don’t have to prove or investigate the alleged infringer’s process. Having their product is enough. It follows from the above that product-by-process claims are not only important in their own right, they are also judged to a very high standard by the EPO. In my opinion, this is a rather unsatisfactory situation. Ironically, in the field of polymers ‘product-by-process’ claims are often accepted without question. There, it is well understood that the product of the reaction between a number of monomers is somewhat unpredictable at an atomic/molecular scale—but that the product can still be useful and predictable at a macro scale. It seems to me that the EPO should start taking a more similar approach with claims directed to other types of material than polymers. Denying the inventors of complex materials protection for those inventions simply because they have created, for example, a composite not a polymer is unreasonable. The EPO (in particular the examining divisions) should also accept that the enhanced protection afforded a process claim by Article 64(2) of the EPC is no substitute for an actual product claim (even if it is a productby-process claim). Applicants have justifiable reasons for wanting product protection, which should be understood and respected. A property based definition So a process-focused definition is less than ideal. What about the other option, a property-based claim? Sadly, things are not much better. Let’s say we define our excellent new material as comprising components A and B, and having a thermal conductivity of X, tensile strength of Y, and a refractive index of Z. Again we face a number of problems beyond the normal. The main one is analogous to the ‘first problem’ mentioned above: the EPO is able to place the burden of proof on the applicant, to prove that prior art materials comprising A and B do not have the properties X, Y and Z. The EPO is strict here: no benefit of doubt can be accorded if the applicant does not provide evidence. Certainly as a first step the EPO examiner must make some comparison with the prior art, but often it falls to the applicant to explain in detail why the claimed materials are different from those of the prior art, and often to provide experimental evidence proving that. Again, this is not always straightforward or even possible for all applicants. Furthermore even if the objection is addressed using argument there is no particular standard to be met: we must simply ‘convince’ the examiner. What is needed to achieve that can be highly variable. Then there is the matter of clarity. Of course the meaning of claims must be clear but the EPO has special rules for the consideration of materials’ (all) parameters in patent claims. Definition in terms of parameters is only allowable if “the invention cannot be adequately defined in any other way”—but there is no clear standard for what “adequate” means. Parameters must be reliably measurable—in practice this often means extensive explanation of measurement methods must be included in the description, adding a time and cost burden for applicants. Further problems can arise if there are a number of different ways of measuring a property (the classic example being viscosity). While the need for claim clarity is understandable from the EPO’s (and hence the public’s) perspective, their strict approach is again, in my opinion, excessively hard on applicants making complex innovations, particularly in the materials field. In my view, it is important for EPO examiners to be encouraged to demonstrate a strong prima facie case for lack of novelty, without shifting the burden of proof to the applicant until a solid case based on cited references has been put forward. What does the future hold? Innovators in advanced materials can face a serious uphill struggle to get suitable patent protection at the EPO. That is not to say it is impossible, or that applicants should be discouraged from applying. It is merely a recognition that when writing such applications we must do so with an eye for the future (including plenty of flexibility) and with a plan for success. While it is unlikely that things will change drastically at the EPO in the short term, I am hopeful that gradual trends in technology will mean the EPO will appreciate the difficulties its evolved case law represents for emerging technologies. <strong>IPPro</strong> Innovators in advanced materials can face a serious uphill struggle to get suitable patent protection at the EPO Matthew Smith, partner, Mewburn Ellis 16 <strong>IPPro</strong> <strong>Patents</strong> www.ippropatents.com
Pacific Partnership The transition of the trans pacific Oscar Mago and Kaylee Savournin of OMC Abogados explain how a renegotiation of the TPP could effect Peru’s IP landscape 17 <strong>IPPro</strong> <strong>Patents</strong> www.ippropatents.com
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