T 0847/24 - (II) Schrodinger's method claim

Key points

• The post title is not meant as criticism of the Board's decision. 
• Claim 1 as granted describes, in effect, a preparation method that yields product A. The description discloses an additional step of converting A into B. The proprietor wishes to amend claim 1 by adding that step of converting A into B. Is this permitted?
• In the case at hand, A is a digital design of an implant and B is the physical implant, but that should not distract us.
• The Board agrees that claim 1 as amended "confers protection not only to the claimed method but also, pursuant to Article 64(2) EPC, to the implant directly obtained by that method, i.e. to a physical implant produced in accordance with the method defined in claim 1 of auxiliary request 1."
• The issue is Art. 123(3).
• "the Board also agrees, that a method comprising all the steps of claim 1 as granted and, in addition, a step of producing the implant also falls within the scope of claim 1 as granted, even though claim 1 as granted does not comprise any production step. This is because the added production step merely limits the method defined in claim 1 as granted."
• "carrying out the method of claim 1 as granted results only in the configuration of an implant, i.e. in data defining such a configured implant. It does not result in a physical implant. The appellant [proprietor] argued that, since a method including an additional production step fell within the scope of claim 1 as granted, the product directly obtained by that more limited method was also covered by the protection conferred by claim 1 as granted, by virtue of Article 64(2) EPC. "

• "The Board does not consider this persuasive. Pursuant to Article 64(2) EPC, if the subject-matter of the patent is a process, the protection conferred by the patent extends to products directly obtained by such a process. This provision therefore requires that the product in question be "directly" obtained by the claimed method. The Board understands this to mean that the protection conferred by a process claim does not, as a rule, extend to products obtained only by carrying out further steps which are neither defined in that claim nor implied by it."

• "The product protection conferred by Article 64(2) EPC is different from, and additional to, the protection conferred by a process claim as such. Hence, if a part of the patent's scope of protection is, in view of Article 64(2) EPC, extended because of the amendment, Article 123(3) EPC is infringed. In such a situation, it does not matter whether the patent's scope of protection is partly also, with regard to the process claim as such, more limited than before the amendment. Generally speaking, this is comparable to how an aliud partly extending and partly limiting the scope of protection also infringes Article 123(3) EPC."

• 6.7 Hence, if a granted claim defines [a method of making product A], amending the claim such that it additionally includes the step of [converting A into B] in view of Article 64(2) EPC, not allowable under Article 123(3) EPC." (generalisation in square brackets is mine).

• I don't know if this point has been decided before. The amendment of adding a method step to a preparation step does not seem very unusual to me.

• The background is that Article 64(2) EPC codifies a judicial stopgap from German case law to prevent imports of chemical compounds from Switzerland at a time when German patent law did not allow product claims for chemical products (and claims for the preparation method were used instead). (see, generally, Uhrich, Stoffschutz, 2010). The exclusion of chemical products from patentability in turn was a lesson learned from an early French case about a patent with a product claim for a dye, fuchsine (see e.g. here; and this article, p.19 of the PDF) 

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EPO 

The link to the decision is provided after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t240847eu1