A claim defining a product in terms of a process is to be construed as a claim to the product as such. The technical content of the invention lies not in the process per se, but rather in the technical properties imparted to the product by the process. Claims defining plants or animals produced by a method including a technical step which imparts a technical feature to a product constitute an exception in so far as the requirements of Article 53(b) are concerned. For the general principles governing disclaimers by which plants and animals excluded from patentability are removed from protection, see H-V, 3.5 and H-V, 4.
Claims for products defined in terms of a process of manufacture are allowable only if the products as such fulfil the requirements for patentability, i.e. inter alia that they are new and inventive, and it is impossible to define the claimed product other than in terms of a process of manufacture (see G 2/12 and G 2/13). A product is not rendered novel merely by the fact that it is produced by means of a new process (see T 150/82). A claim defining a product in terms of a process is to be construed as a claim to the product as such. The claim may for instance take the form "Product X obtainable by process Y". Irrespective of whether the term "obtainable", "obtained", "directly obtained" or an equivalent wording is used in the product-by-process claim, it is still directed to the product per se and confers absolute protection upon the product (see T 20/94).
As regards novelty, when a product is defined by its method of manufacture, the question to be answered is whether the product under consideration is identical to known products. The burden of proof for an allegedly distinguishing "product-by-process" feature lies with the applicant, who has to provide evidence that the modification of the process parameters results in another product, for example by showing that distinct differences exist in the properties of the products (see T 205/83). Nevertheless, the examiner needs to furnish reasoned argumentation to support the alleged lack of novelty of a product-by-process claim, especially if this objection is contested by the applicant (see G 1/98, T 828/08).
When determining the features of a product obtained by a process, the purpose of the process has also to be taken into consideration. This is in contrast to the evaluation of a method or process of producing a product for which the indication of the particular purpose (product production) merely implies suitability (see F‑IV, 4.13).
According to Art. 64(2), if the subject-matter of a European patent is a process, the protection conferred by the patent extends to the products directly obtained by such process. The provisions of this Article are understood to apply to processes producing products completely different from the starting materials as well as to the processes producing only superficial changes (e.g. painting, polishing). However, Art. 64(2) does not affect the examination of process claims in respect of their patentability under the EPC and is not to be taken into account by an Examining Division (see T 103/00).