30 May 2024

Does an inventive process entitle you to a claim to an obvious product?

In recent EPO decision T 293/19 a Technical Board of Appeal has suggested that claims to products that could be envisaged as obvious improvements over the prior art, but which could not be produced using methods known in the art, may not be deemed inventive. This decision departs from a long-standing line of previous case law.

The case at issue included claims to both a process and products that were obtainable using that process. The Board decided that the process was both novel and inventive, and then went on to consider the patentability of the product claims. In one request, the product (an IgM antibody preparation) was defined by a specific property (a proteolytic activity of less than 8U/l) that was not disclosed in the closest prior art document. The Board had doubts over whether this feature was sufficient to distinguish the closest prior art but gave the proprietor the benefit of the doubt for the sake of argument.

Whilst it was undisputed that a low proteolytic activity was considered a desirable property in the prior art, the proprietor argued that there were no processes in the prior art that could lead to a product having a proteolytic activity below the claimed threshold and that the product should thus be considered inventive. In support, the proprietor referred to earlier decision T 595/90 which states that “an otherwise obvious entity… may become nevertheless non-obvious and claimable as such if there is no known way or applicable… method in the art to make it and the claimed methods for its preparation are therefore the first to achieve this in an inventive manner”. The reasoning of that decision has subsequently been followed in a number of cases and until now seemed to be a well-established principle of EPO case law.

The Board had doubts over whether known processes could produce the claimed composition, but again assumed in favour of the proprietor. However the Board did not accept the proprietor’s argument that the product claim should thus be held inventive, stating that the EPO’s problem-solution approach for assessing inventive step “[a]t no point…includes the question of whether a product could or could not be obtained by a process known from the art for it to be inventive” and that “an obvious improvement…is not necessarily inventive for the reason alone that it cannot be prepared by methods available at the filing date”. The product claim was thus found obvious, with the Board of the view that the invention lay in the development of the process to produce the product and not the product itself.

This conclusion is in some ways difficult to understand. The EPO’s problem-solution approach does only ask whether the invention was “obvious” to the skilled person without explicitly addressing whether this means that the skilled person should merely be able to envisage the invention or actually produce it. However, in order to destroy novelty, an enabling disclosure of a product is required in the prior art (i.e. the skilled person must be able to make the product based on its disclosure in the art), and so it is not clear why this should not also be a consideration when assessing inventive step. If somebody produces a product for the first time using inventive skill, why should they not be entitled to a claim to that product in addition to the process used to make it?

The Board’s conclusion thus seems to represent a significant departure from the principles established by T 595/90. The Board in T 293/19 states that its conclusion would depend on the facts of the case and the claim wording but provides minimal additional guidance, and so it will be interesting to see if any other Boards follow this decision.