Product-by-process claim

A product-by-process claim is a claim that defines a product by the process by which it is obtained rather than by its structural features or composition. It is accepted in the practice of the European Patent Office and INPI where the product cannot otherwise be sufficiently defined, which is frequently the case in chemistry and biotechnology. It must be distinguished from the protection of the product directly obtained by a patented process, conferred by Article 64(2) of the European Patent Convention and Article L. 613-3 of the French Intellectual Property Code.

Conditions of admissibility

Office practice makes this form of claim subject to two conditions. The product must be patentable in itself, that is to say new and inventive as a product, independently of the novelty of the process: a known product does not become patentable because it is obtained by a new process. Moreover, it must not be possible to define the product satisfactorily by its parameters, structure or composition, failing which the office requires a direct definition. Lastly, the claim must meet the requirements of clarity and sufficiency of disclosure, the process described having to allow the product to be obtained reproducibly.

Scope of protection

Under European Patent Office practice, a product-by-process claim confers absolute protection on the product, whatever the process by which it is actually obtained. A third party making the same product by a different process therefore infringes the claim, provided that the product has the features imparted to it by the claimed process. This differs from the position for a process invention, whose protection extends only to the product directly obtained by the patented process. National courts in Europe do not interpret the scope of these claims uniformly, some confining it to the product obtained by the process described, so that the drafting should specify the features that the process confers on the product.

Litigation and evidence

In a patent infringement action, the patentee must establish that the accused product has the features resulting from the claimed process, which often calls for physico-chemical analyses carried out in the course of a saisie-contrefaçon or a court-appointed expert investigation. Where the claim relates to a process for obtaining a new product, Article L. 615-5-1 IPC and the TRIPS Agreement reverse the burden of proof: any identical product is presumed to have been obtained by the patented process unless the contrary is proved.

Key points

A product-by-process claim defines a product by the way it is obtained where no direct definition is possible, provided that the product is itself new and inventive. Under European practice it protects the product as such, whatever process is actually used, but its interpretation varies from one court to another. It should be used only where no structural definition is available, the features that the process confers on the product should be described and the analyses needed to prove infringement anticipated.

---

This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats litigates patent disputes before the Paris Judicial Court, the Paris Court of Appeal and the Unified Patent Court. When the question arises in a real case, the right moment is almost always before proceedings are issued.

Patent litigation · Unified Patent Court · UPC case law · Tell us about your situation