Key points
- Board 3.3.04 in line with its recent decision T 1913/21 concludes that a claim specifying 'use of [a compound] in [a preparation process] is not a valid second non-medical use claim.
- The Board: "it is furthermore apparent that in decision G 2/88, the Enlarged Board, as part of its considerations relating to Article 123(3) EPC (see point 5.1 of the Reasons), made a distinction between categories of claims, namely between those directed to a use of a physical entity for achieving an effect on the one hand and those directed to a process for the production of a product on the other."
- This is, as such, correct.
- The Enlarged Board in G 2/88 held that: "Thus, provided that a claim defines the use of a particular physical entity to achieve an "effect", and does not define such a use to produce a "product", the use claim is not a process claim within the meaning of Article 64(2) EPC" (as cited by the TBA).
- "Thus, the Enlarged Board's findings relating to new uses of known compounds are limited to uses/methods/processes which are not processes resulting in products, as referred to in Article 64(2) EPC."
- It is not so clear that the distinction in the context of Art. 123(2) also applies to use claims in the context of Art. 54, in my view.
- " In contrast to the conclusions drawn in T 332/94 and T 22/09, the findings in T 140/94, T 319/98, T 966/00, T 593/06 and T 149/22 do not reflect the prevalent established jurisprudence, [*] as summarised above, in particular with regard to the fact that the effect recited in the claim must relate to the use, rather than to the product directly obtained by the process steps within the meaning of Article 64(2) EPC, in order to constitute a limiting feature in the sense of G 2/88. Importantly these decisions do not provide any reasoning as to why the claims were not regarded as claims directed to a process for the manufacture of a product, which would not allow the principles of G 2/88 to be applied, or conversely whether the competent boards were of the view that the principles of G 2/88 are transferable to process claims and why this should be so."
- * - The Board refers to the analysis of the case law it gave in T 1913/21, but I appreciate the Board's position in T 1913/21 as a new development.
- The board concurs in this regard with the findings in T 892/94 (Reasons 3.8) that applying the concept of novelty developed in G 2/88 to claims for processes of producing a product, even when drafted as use for achieving a technical effect that results in an improved product could potentially result in a permanent monopoly of the use of a known substance for a known purpose. Such a permanent monopoly would arise from the repeated drafting of claims for a process of production including a new, possibly only subtly different, technical effect associated with this known process (see also T 1179/07, Reasons 2.1.3).
- T 892/94, point 3.8, was not about 'processes of producing a product' but about "The board concurs with the appellants' opinion in so far as the admissibility of claims directed to the use of a known substance for a known purpose which differ from the state of the art merely by the indication of a newly discovered technical effect associated with the said known use could potentially result in a permanent monopoly of the use of a known substance for a known purpose by means of the repeated introduction into such claims of a new, possibly only subtly different technical effect associated with this known use."
- T 1179/07 was about a process claim. Still, the reasoning may apply mutatis mutandis; " If the board were to apply the conclusions from G 2/88 and G 6/88 to the granted process claim, this would result in the product of granted process claim 1 being protected again under Article 64(2) EPC, even though this product is known from D1 and was manufactured by exactly the same process as described in D1. However, it cannot be the purpose of Article 64(2) EPC that the protection conferred by that article also extends to a product obtained by a known process." (point 2.1.3, translation).
EPO
The link to the decision can be found after the jump.
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