T 0020/94 (Amorphous TPM/ENICHEM) of 04.11.1998
- European Case Law Identifier
- ECLI:EP:BA:1998:T002094.19981104
- Date of decision
- 4 November 1998
- Case number
- T 0020/94
- Petition for review of
- -
- Application number
- 87201409.7
- IPC class
- C07C 69/732
- Language of proceedings
- English
- Distribution
- Distributed to board chairmen and members (B)
- Download
- Decision in English
- OJ versions
- No OJ links found
- Other decisions for this case
- -
- Abstracts for this decision
- -
- Application title
- Tetrakis [3-(3,5-di-tert.buthyl-4-hydroxyphenyl) propionyl-oxymethyl] methane with amorphous structure, process for its preparation and its use as a stabilizer
- Applicant name
- Enichem Synthesis S.p.A.
- Opponent name
- Ciba Specialty Chemicals Holding Inc.
Chemische Werke Lowi GmbH & Co.
Himont Incorporated - Board
- 3.3.01
- Headnote
- -
- Relevant legal provisions
- European Patent Convention Art 114(2) 1973European Patent Convention Art 123(2) 1973European Patent Convention Art 123(3) 1973European Patent Convention Art 54 1973European Patent Convention Art 56 1973European Patent Convention Art 64(2) 1973
- Keywords
- Change from process claim to product claim (not allowable)
Amendment (yes) - additional feature not closely related with the other features in an example
Novelty (yes) - onus of proof - unsupported objection
Inventive step (yes) - determination of the closest prior art for process claim - unobvious solution - Catchword
- 1. Where the granted claims are solely process claims, a change from a process claim for preparing a product to a product-by-process claim by way of amendment extends the protection conferred by the European patent to the same product obtained by a process for its preparation different to that defined in the granted process claim, contrary to the requirement of Article 123(3) EPC (point 4.3 of the reasons).
2. Despite the fact that a product-by-process claim is characterized by the process for its preparation, it nevertheless belongs to the category of claim directed to a physical entity and is a claim directed to the product per se. Irrespective of whether the terms "directly obtained", "obtained" or "obtainable" are used in the product-by-process claim, it is still directed to the product per se and confers absolute protection upon the product (point 4.4 of the reasons).
ORDER
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the first instance with the order to maintain the patent on the basis of the claims submitted as first auxiliary request on 29. March 1994, and a description yet to be adapted.