T 0150/82 - Product-by-process claims / References to the description - #67

Citation rank: 67
No. of citations: 73

T 150/82 dealt with two equally interesting issues: Firstly, it looked at the conditions under which claims may use references to the description or drawings to express features that are otherwise difficult to express. Secondly, T 150/82 also looked at conditions under which "product-by-process claims" are admissible, i.e., claims defining a product through the process of their manufacture.

1. References in the claims to the description
In the underlying case, claim 17 read: "A process in accordance with claim 1 substantially as described in the foregoing Example I". The Board found that this type of claims, which is referred to as "omnibus claims" in the UK practice, would under the EPC only be allowable under very exceptional circumstances. Claims with reference to the description or drawings would normally infringe the then applicable R. 29(6) EPC1973 (now R. 43(6) EPC), which Rule allows references to the description or drawings only "where absolutely necessary". In the case at hands, there was sufficient verbal description of the respective features present, so that the "absolutely necessary" requirement was not met. The omnibus claim was not allowed.

Comment: References to the description, and in particular to the drawings, are nevertheless be useful in some cases. For example, where the wording of a claim is not adequate to capture a new and inventive geometry of, let's say a screw head, and also the description does not include wording that would allow to clearly distinguish the claim over the prior art; in such situations it may be useful and justified that reference to a drawing is included in the claim ("Screw head having features A, B, C, substantially as shown in Figure X").

2. Product-by-process claims
Another part of T 150/85 deals with product-by-process claims. The Board confirmed a statement in the then current Guidelines that product-by-process claims can be used in EPC practice:

"The Guidelines for Examination in the EPO (C-III 4.7b) [see F-IV, 4.12 in the 2017 Guidelines] allows claims for products defined in terms of a process of manufacture provided the products themselves fulfil the requirements for patentability. This may well be the only way to define certain natural products or macromolecular materials, of unidentified or complex composition, which have not yet been defined structurally." (point 8 of the reasons)

The Board points out, however, that before such claims are allowable their patentability, as products, must be established.  

T 150/82 is most often cited to refute an argument of a party that their product-by-process claim would be new and inventive, because the process of its manufacture is new and inventive. The counter argument made is then that a process feature can only contribute to the novelty of a product claim insofar as the process feature gives rise to a distinct and identifiable characteristic of the product.

---

Headnotes:

I. Claims relying on references to the description in the specification in respect of all their technical features (known in the patent practice of the United Kingdom as "omnibus" claims) are unallowable as contrary to Rules 29(4) and 29(6) EPC [now Rule 43(6) EPC], unless absolutely necessary, e.g. when a plurality of conditions would not lend themselves to verbal expression without such a reference. The onus is on the applicant to show such exceptionality.

II. Claims for products defined in terms of processes for their preparation (known as "product-by-process" claims) are admissible only if the products themselves fulfil the requirements for patentability and there is no other information available in the application which could enable the applicant to define the product satisfactorily by reference to its composition, structure or some other testable parameter.

The full text of the decision can be accessed here.