7.1. Introduction

Under Art. 64(2) EPC (1973 and 2000) the protection conferred by a process patent extends to the products obtained directly by the process, even if they are not patentable per se. Certain applicants tried to acquire protection for known products by using process claims to define them and arguing thus - it follows from Art. 64(2) EPC 1973, which expressly states that protection will be granted for the direct product of a patentable process, that, under the EPC, a product is rendered novel by the fact that it is produced by means of a new process. This is notwithstanding the fact that such product is not new per se, by virtue of its physical characteristics (see T 248/85, OJ 1986, 261; likewise T 150/82, OJ 1984, 309).

The boards of appeal did not accept this line of argument and made a distinction between claims to a new and inventive product defined by its method of manufacture and claims to a new and inventive process, the protective effects of which also extended to the direct products of this process.

The first decision in this regard was T 150/82 (OJ 1984, 309). The board stated that claims for products defined in terms of processes for their preparation (known as "product-by-process" claims) were admissible only if the products themselves fulfilled the requirements for patentability and there was no other information available in the application which could have enabled the applicant to define the product satisfactorily by reference to its composition, structure or some other testable parameter (established case law, see e.g. T 956/04 and T 768/08).

The boards of appeal have further clarified and developed these requirements in their case law.

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