Legal framework
Under Article 54(1) EPC, an invention is new only if it does not form part of the state of the art. The state of the art comprises everything made available to the public before the filing date, under Article 54(2) EPC. Since product P is stated to be known, P itself forms part of the state of the art.
A product defined by its manufacturing process is a product-by-process claim. According to the EPO Guidelines, such a claim is construed as a claim to the product as such, not to the process. The Guidelines expressly state that a product is not rendered novel merely because it is produced by a new process.
This is different from the scope of protection conferred by a granted process claim. Under Article 64(2) EPC, where the subject-matter of a European patent is a process, the protection conferred by the patent extends to the products directly obtained by that process.
Statement a)
Statement a) is true.
Claim 2 is directed to product P obtainable by the process of claim 1. This is a product-by-process claim.
However, product P is stated to be a known product. In examination, the EPO assesses whether the product itself is new. The fact that P is produced by a more efficient and ecological process involving steps A, B and C does not, by itself, make the product novel. The EPO Guidelines state that a product is not rendered novel merely by being produced by a new process.
Therefore, the subject-matter of claim 2 lacks novelty.
Statement b)
Statement b) is true.
If a European patent is granted for claim 1, the patented subject-matter is a process for producing product P.
Under Article 64(2) EPC, where the subject-matter of the European patent is a process, the protection conferred by the patent extends to the products directly obtained by that process.
Thus, even if product P itself is known and not patentable as such, product P directly obtained by the patented process would fall within the extended protection conferred by the process claim.
Statement c)
Statement c) is false.
The patentability of a production process and the patentability of the resulting product must be assessed separately.
A process may be novel and inventive because it is more efficient, cheaper, cleaner or more ecological. But that does not necessarily mean that the resulting product is new or inventive. In this case, the product P is expressly stated to be known.
The Case Law of the Boards of Appeal confirms this principle: product-by-process claims are interpreted independently of the process, and a product does not become inventive merely because the process for preparing it is inventive.
Therefore, no automatic conclusion can be drawn from the novelty and inventive step of the process to the novelty and inventive step of the product.
Statement d)
Statement d) is false.
Changing claim 2 from “product P obtainable by the process of claim 1” to “product P directly obtained by the process of claim 1” would not make the claimed product novel in EPO examination proceedings.
The EPO Guidelines state that, irrespective of whether the wording used is “obtainable”, “obtained”, “directly obtained” or equivalent wording, the claim is still directed to the product per se. Novelty therefore depends on whether the product itself is different from known products.
Here, the facts do not state that process steps A, B and C impart any new structural or technical feature to product P. The process is more efficient and ecological, but the product remains the known product P. Consequently, claim 2 would still lack novelty.
Exam tip
Always separate two issues:
Patentability: a product-by-process claim is examined as a claim to the product itself. A known product does not become novel merely because it is made by a new process.
Protection: if a process claim is granted, Article 64(2) EPC extends protection to the products directly obtained by that patented process.
This distinction is often tested: product-by-process wording may fail for novelty, while the process claim may still give protection for directly obtained products.
Legal Disclaimer
The information provided in this post is for general informational purposes only and does not constitute legal advice. This content should not be used as a substitute for professional legal advice tailored to your specific circumstances. For advice related to any specific legal matters, you should consult a qualified attorney.