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Product By Process Claims

Jul. 04, 2020   •   Architi Batra

[The author, Apurva Bhutani is a 3rd Year Law student at Maharaja Agrasen Institute of Management Studies]

Patents are the exclusive rights granted over inventions-product or process, that provides a new way of doing something. The fundamental principle of the Patent Law is that patent is granted only for an invention which must be new and useful. That is to say, it must have novelty and utility.[1] Product by process claims defines a product through the method used to manufacture or produce the product. Product by process claims is usually used for the products whose innovation is novel and non-obvious.

When we refer a patent with a product patent, it means that a new product is developed whereas when we refer a patent with a process patent it means that a new or developed process is invented for creation of the known product.

Patentability criteria of a product by process claims are not defined in The Patents Act, 1970. In order to differentiate the product claimed in terms of the product by process from the prior produced product, one must be able to establish the novelty and innovative step of the product irrespective of the process from which the product is obtained. Therefore in Indian jurisdiction patentability of the product by process claims depends only on the patentability of product irrespective of the process from which it is obtained.[2]

It is pertinent to note that patentability for a product by the process cannot be granted to a product which is similar to a product produced prior to a different method. In short, if the same product is being produced by using two different or innovative methods, product by the process cannot be claimed. It is important to prove that a similar product produced by a different method is not identical and has advantages or better qualities than the prior product. This can be explained with the help of the following example:

If a paint says A is produced and is being sold in the market, later a paint says A’ is produced by using an innovative and novel method say B. Now in order to claim product by process claim, it must be ensured that A’ has enhanced qualities than A.

The Patent Act, 1970 is silent on the matter however guidelines for Examination of Patent Applications in the Field of Pharmaceuticals, issued by the Office of the Controller General of Patents, Designs and Trademarks on 29th Oct 2014 throw some light on the patentability criteria for examination of a product by process claim, with reference to the case of The Research Foundation of State University of New York v. Asst. Controller General of Patents[3]

In this case, the applicant, before the Patent Office wanted to seek a patent on ceramic-based nanoparticles for entrapping therapeutic agents for photodynamic therapy. One of their claims was that they have used a novel method to produce the same. However, the Controller refused the grant of the patent application under Section 15 of the Patents Act, 1970 on the ground of lack of an inventive step in light of a prior art document. Aggrieved by the decision of the Controller, the applicant approached the Intellectual Property Appellate Board (IPAB).

Before the IPAB, the Applicant argued that since the Controller had acknowledged the process for the preparation of the composite as being novel and inventive, the composite prepared by the process was also entitled to be novel and inventive. The IPAB dismissed the applicant’s arguments and pointed out that the product-by-process claims must also define a novel and non-obvious product, and that its patentability cannot depend on the novelty and non-obviousness of the process limitations alone. Therefore, the IPAB held that the patentability of a product by process claim is based on the product itself; and this cannot be conferred by the patentability of the process of preparation of the product in a product by process claim.

Therefore the IPAB, in this case, observed that the composite produced later has no advantages over the prior one, therefore, although the process used is novel and innovative but the product is identical therefore the patent cannot be granted.

The Indian Patent office has also given certain guidelines pertaining to the product by process claims. It says that product by process claims are basically utilized in case of chemical or pharmaceutical creations. The patent office in their rules also guides that claim to a product obtained by a process is anticipated by any disclosure of the particular product, regardless of its method of production. The Applicant can only seek the right to a product in case of product-by-process claim when product by process claim defines a novel and un-obvious product and the patentability in such claim cannot depend on the novelty and un-obviousness of the process limitation alone.[4]

CONCLUSION

It has been highly suggested that most countries should adopt a product patent instead of a process patent, reason being, the product patent provides comprehensive protection to the inventor since the product itself is protected. However, the process patent on the same hand encourages competition and inspires new and efficient innovations. As the name says, a process patent is conceded to a specific procedure and not to the finished result that is a consequence of such a procedure. As a result, the protection is viewed as a restricted parent. This is on the grounds that some other producer or innovator can make a similar item by using an alternate procedure. Likewise, there can be numerous procedure licenses for a single product.

Disclaimer: This article is an original submission of the Author. Niti Manthan does not hold any liability arising out of this article. Kindly refer to our Terms of use or write to us in case of any concerns.

FAQ

Q) What are the required conditions in order to grant a patent?

A) The conditions to be satisfied for the patent grant are:

  • The subject matter should be patentable.
  • The invention should satisfy the novelty requirement.
  • The invention should be non-obvious to a person skilled in the art.
  • The invention should be capable of being made or used in the industry.

[1] AIR 1982 SC 1444 (1448)

[2] India - Product By Process Claims: A Different Aspect For Patentability And Infringement. http://www.conventuslaw.com/report/india-product-by-process-claims-a-different-aspect/

[3] The Research Foundation Of State University Of New York Vs Assistant Controller Of Patents [OA/11/2009/PT/DEL (ORDER No. 200/2012)]

[4] http://www.ipindia.nic.in/writereaddata/Portal/IPOGuidelinesManuals/1_37_1_3-guidelines-for-examination-of-patent-applications-pharmaceutical.pdf


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