Product-by-Process ©(Part IV of IV)
l Is it good to create a 2-generation product-by-process claim type to protect a new product when hard to define without resorting to a process?
We do not know whether most of people in the patent society will find the suggestion generally acceptable. If yes, we also do not know whether people would like it to be named as the second generation of product-by-process claim. Further, if the above suggestion is really acceptable, is it really only applicable to a subject matter containing therein both a product element and a process element? Or, can it be naturally extended to the one directed only to a product or a process claim? The reason why we raise these questions here is that, for example, it is not seldom for us to encounter a situation in either a product claim or a process claim that there really are some significant, substantial or meaningful effects resulting from a specific subject matter, which, for example, is a new item having 5 elements but is formed by combining two old means respectively having 3 and 4 elements. Nevertheless, the examiner regards such specific subject matter unpatentable through an alleged obvious combination of the two old means despite of the facts that there is no suggestion or hint to combine the two old means until the filing date of the relevant application and that the above significant, substantial or meaningful effects have been achieved thereby although such effects are not so great as to move an examiner into affirming therefor the patentability. If we could confirm the appropriateness of patentability for that 2-G product-by-process, can we deny the patentability for the above-described specific subject matter of alleged obvious combination?
As is known, the patentability of a mixed claim is seldom in doubt, which never sounds strange since it has been well known that a dependent mixed claim on an allowable independent claim is beyond question so far as the patentability is concerned. Specifically, no one would like to deny the patentability of a mixed claim since its basic product or process independent claim has been proved patentable so that any old or new feature depends on a patentable new feature must also be new and patentable. While this appears to be true and fully acceptable since the patentee will never reap an illegal interest thereby because the infringement on such dependent mixed claim is based on the necessitated infringement on the independent claim, some examiners would still like to reject such mixed claim in that regardless of whether the basic independent claim is a product or a process one, its dependent claim shall also have the same category or type and shall be patentable only when it contains a further feature of the category or type so that a feature of a different category or type will never bring a patentable weight to the dependent claim. In other words, a product feature or limitation will play no patentable weight in a process claim whereas a process feature or limitation will play no patentable weight in a product claim. If, however, this rule is strictly followed, some of the above discussions will become void and null. Specifically, a mixed claim will thus be unpatentable in principle, neither is the 2-generation product-by-process claim.
Every one who has aged for some social years will know, in one¡¦s life, there are some undesired things which will, or are allowed to, happen beyond control, imagination or rationalization. Although it is readily clear that the more civilized, advanced and ideal a society is, the happier, luckier and more fortunate people in the society will be, it is not necessitated that people in the society will always behave themselves in a way driving their society to be so built or established. Bearing these difficulties in mind, standing before these two conflicting rules that a claim dependent on an allowable claim must also be allowable and a dependent claim to be allowable must have a further feature of a category or type the same with that of its depended claim, we cannot readily declare which one our choice is since we do not like to lose our rational image.
Meanwhile, we would like to utter that the former rule is very nutritious to foster the viability of the mixed or 2-G product-by-process claims while the latter rule is helpful to build the fort in defending the conventional product-by-process claim totem requiring and demanding that there be no room for presentation of a product-by-process claim unless there is an exceptional or extreme case where a patentable subject matter can be put in neither a product claim nor a process claim.
l Should there be a process-by-product claim type?
We, the human beings, live on this earth under various social systems and customs, and have many races or peoples leading different traditional lives possibly under different religions for thousands of years. What we desire to express here is that it appears unnecessary for the human being on the earth to lead their lives under the sole system and/or follow the same rule before they can wonderfully lead their respective lives. It is thus doubtful whether we are really the follower of such rule, since such follower will never desire to write such article trying to explain and/or discern what a thing should run in which way. Nevertheless, in the era of global village having rapid and frequent exchanges in experiences and knowledge, unity or unification normally appears to make a life easier.
For respective followers of the former rule and the latter rule in the preceding topic, the product-by-process claim is necessary although it has caused us to exercise so many or much efforts in order to try to clarify when it can or should be used and how it will or should be interpreted. Nevertheless, it will become doubtful whether there should exist a product-by-process claim if we want to maintain that a process element in a product-by-process claim serves only the purpose of defining the subject-matter for which protection is sought in the examination stage in order to be distinguished over the prior art but will not be read into the claim limitation upon claim construction, since we are worrying how we could convince others that a process constituent in a claim shall not be taken into consideration when the claim is to be construed in an infringement case. Specifically, it might be the core defect of a European product-by-process claim that a feature in a claim needs not be a limitation thereof, which, however, violates the basic rule of the claim interpretation that a feature is a limitation. In other words, a feature capable of bestowing a patentable weight to a specific claim must act as a limitation whenever the specific claim is to enforce its rights in order to balance between rights and obligations. Accordingly:
1. It appears that in this diversified world, there is a room where a product-by-process claim shall or could be present;
2. The critical issue might reside in whether the critical room to present a product-by-process claim should be liberated;
3. It appears confusing, puzzling and troublesome if we desire to differentiate a European product-by-process claim from a traditional product-by-process claim as outlined in last two issues since there are instances of paragraphs or sentences where the opinions from the Boards of Appeal in the EPO are not different from those of the conventional definitions;
4. It seems more useful and advantageous for the patent society if we try to determine whether there should be a 2-generation product-by-process claim than if we pay more efforts to distinguish between a European and a conventional product-by-process claims; and
5. It might be also more beneficial and fruitful if we try to find out answers through discussions and scrutiny over various issues whether we should equate a product-by-process claim with a mixed type claim.
l Can a product feature in a process claim augment into a patentable weight for a process claim?
We have mentioned above that under the initial, primitive or strict definition of a process claim, a claim can only become patentable through features inherent in steps thereof per se rather than the product feature or limitation. Nevertheless, time has changed and the world has become so diversified that a patentable process need not only include bare steps themselves since:
1. It is quite possible that without the involvement of a structural limitation, a patentable step cannot be distinguished over the prior art or cannot convince one skilled in the art that the involved step is novel and patentable since the naked steps stripped off product features are merely basic or common ones;
2. A product claim cannot be compared to a process claim so far as the claim recitation is concerned since for so many products in this world, they can all be respectively defined to be distinguished from one another through structural limitations. Nevertheless, this is not the case for a process claim since a specific process having nearly the same basic steps can be used to produce a number of end products if different starting materials and/or steps including operating conditions are involved in; and
3. A process claim has three main elements, i.e. the starting material, the step in terms of procedures per se and/or operating conditions, and the end product so that it appears simple in principle to determine that whenever there is involved in an alleged new starting material and/or a resulting end product, there still involve no patentability if such alleged new event will not involve any anticipation beyond the old process claim. Nevertheless, in this extremely diversified world, there exist a myriad of unexpected starting materials, added or obviated steps and/or end products where a process claim will automatically become new, unexpected or unanticipated, or patentable whenever there is one out of the three essential elements of a process claim, which, if added or caused to be introduced into the process claim, will bring about an unexpected result or an non-obviousness to the product claim.
With the above recognition in mind, we would like to comment on whether a product feature in a process claim can augment into a patentable weight for a process claim as follows:
1. With the world advanced to the present extent, it is hard to find a process claim to be patentable without the involvement of a product or structural feature therein;
2. A product feature to have a patentable weight in a process claim is referred to one which is not featured in itself merely in a product attribute where the process claim is unpatentable without inclusion of the product feature and might be patentable simply because the product feature is patentable in itself even without inclusion of other elements of the process claim, but is featured in an interaction between a physical product and one or more specific steps involved in the process claim where the process claim, after integrating therein the product feature, becomes patentable due to attributes or patentable features or weight derivable from interaction among elements of a general process claim although the product feature in itself is not patentable;
3. Accordingly, it would appear to us there are three kinds of product features in a patentable process claim. That is, all the following process claims are patentable, i.e. a process claim having a product feature as defined in the preceding item, a process claim containing therein a product feature patentable in itself and a process claim already being patentable and including therein any a product feature.
l While a product claim can be fully delimited by product features, is it possible, appropriate or permissible that a process claim can include a product feature?
Through the discussions in the preceding topic, it would seem that one could easily find answers for this topic. Specifically, while it would be wonderful or perfect for a process claim to include therein only features relating to steps so that such a process claim could have a very marvelous protecting scope to claim infringement by a very broad range of product, it has become nearly impracticable to seek patented a process claim without including therein a product element. Accordingly, as long as a significant, substantial or meaningful improvement or advantage is achieved by either one of the three kinds of product features in the respective process claim, it is suggested that the patentability be found therefor so long as the process claim has been distinguished over the prior art due to either the product feature of either kind or the process feature therein.
l Shall the Patent Office warn the applicant it is claiming a narrower scope under the product-by-process type upon examination than what it deserves?
When we have mixed up a product-by-process claim with a mixed type claim, it is uneasy to make a demarcation between a product-by-process claim and a process claim since the former has a process attribute while the latter often has product contents so that both of them contain product and process factors. Furthermore, given the patentability of a process claim allowing recitation of product attributes, or a mixed claim (or a mistaken product-by-process claim) appearing to be patentable if containing features belonging to either the product aspect or the process aspect, one might fail to alert himself to draft a pure product claim for its invention for possible better protection under a product claim. Generally, it is well-taken that a product claim is better than a process claim so far as the protecting scope is concerned since the former will protect the product regardless of what kind of process is used to produce the product whereas a process claim can only protect the product when it is produced by the specific process despite of the decisive consideration that it is the product rather than the process, which is dominant in the specific situation.
Accordingly, since it is a common sense or is readily clear for an applicant to select a product claim rather than a process claim, what this topic is desired to be discussed is that although it is still possible to draft a product claim in a specific situation in view of the fact that there already exists an old or conventional nominally identical product, the claim drafter fails to so recognize the situation and/or urge himself/herself to draft or conceive such a potential product claim since s/he might take s/he has wonderfully drafted or presented the subject invention to be protected in a real product-by-process claim, a mistaken product-by-process claim or a mixed type claim.
Now, the ensuing question is when a Patent Office has determined or found that the applicant is claiming a narrower scope under the product-by-process type upon examination than what it deserves, shall the Patent Office so notify or warn the applicant? There are theories as follows:
1. Office-ignorant theory: In as much as a claim scope is to be determined by the applicant, which will determine what scopes are respectively prohibited by the patentee or freed to the public, the Patent Office shall keep silence to this effect;
2. Friendly theory: A Patent Office shall act as a friend of or an assistant to the applicant in securing an appropriate protecting scope the applicant deserves so that the Patent Office shall warn and notify the applicant to the above effect;
3. Public-Interests-Guard theory: A Patent Office shall serve as a guard for the public interests. As such, a Patent Office shall disregard a situation that an applicant is claiming a smaller scope it deserves to have, but shall actively ban the possibility that an applicant is claiming a scope larger than one it deserves to enjoy.
Since this topic is not the one we primarily concern in this article, we will not discuss it here any further. Nevertheless, we would like to express our preference to the second theory.
l Must a process claim have a scope smaller than that of a product claim or a product-by-process claim?
In the T0205/83 ¡V 3.3.1 Case, the following passage was stated: ¡§The method of preparing the claimed products therefore involves only the modification of a fundamentally known process. According to an empirical principle in chemistry, approximately identical process conditions generally result in identical or approximately identical products. Consequently, the polymeric product of a process modified in this way cannot automatically be new as a result of modification of the process. To establish novelty, it will be necessary to provide evidence that modification of the process parameters results in other products.¡¨ From which, we can know:
1. It has been thus confirmed again that through the empirical principle in chemistry, approximately identical process conditions generally result in identical or approximately identical products, which might help to deduce that a product claim is easier to be distinguishing than a process claim; and
2. Consequently, if one desires to assert a product resulting from a process which is only slightly modified when compared to an old process is new, he will be required to provide evidence that modification of the process parameters results in another product, which might help to derive that a product claim is at least more preferable than a process claim having modified process parameters so far as the protection scope is concerned.
Also with the above in mind, we would like to first briefly discuss respective definitions for a process claim, a product claim and a product-by-process claim as follows:
1. For a process claim, the protecting scope covers in principle the claimed specific process and the product produced thereby regardless of what kind of eventual product has been produced thereby. Nevertheless, it has been known from the above that a process claim has nowadays incorporated therein one or more product features, by which it would mean that it has been getting truer and truer that a process claim can only be used to produce a specific product;
2. For a product claim, the scope is aimed to protect a product regardless of what kind of process is used to produce the product. Nevertheless, it has also been getting truer and truer that a product normally is produced by the same process since a product has nowadays been put in mass production and exhaust its lifecycle before the product is to have an opportunity to be produced otherwise;
3. For a product-by-process claim, it is aimed at protecting a product produced with a process feature defined in the product-by-process claim when it is inappropriate to the subject invention in either a product claim or a process claim. Nevertheless, with the even more delicate interaction between the product attribute and the process attribute, it has become truer and truer that it is getting harder and harder to tell a product-by-process claim apart from a mixed up claim.
With the above initial definitions, we would like to present some opinions about comparative scopes among claims of the above three types:
1. Basically, scopes of the above three types are independent of one another although they can have the common area;
2. The scope of any one of the three claim types might be larger than those of another two claim types in a specific situation since in this diversified world, there always is such room for such specific situation;
3. It is not so important for us to compare among the above scopes or find out which one of the three scopes is larger in a specific circumstance since for a claim drafter having strict and subtle logic experiences, it is readily clear for her/him to understand by which claim type s/he should adopt for a specific subject invention in order to best protect therefor;
4. Accordingly, although they might have some merits to do the comparisons for the above-described three claim types, since it is not an important work, we will not comment more thereon.
Claims We Have
1. When we have mixed up a product-by-process claim with a mixed type claim, it is uneasy to make a demarcation between a product-by-process claim and a process claim since the former has a process attribute while the latter often has product contents so that both of them contain product and process factors.
2. It is believed that it is far more difficult to newly set out a series of rules and standards for solving when and how a claim scope can be decided independently of the claim language, as will be experienced if we take there is a unique European product-by-process practice, and for resolving the ensuing problems and issues for such new practices than to carefully examine whether the original definition of product-by-process practice set forth by the US is reasonable and viable and then follow such conventional definition if deemed acceptable.
3. Since obscurity makes thing beautiful, some term having probable or alternative imports is a very good medium to produce such obscurity, and thus we are not certain whether such US definiteness requirements to this effect harm the human rights of a claim drafter because his/her rights of becoming cleverer, having a happier soul and leading a grateful spiritual life are therefore somehow obstructed.
4. In order to distinguish a product claim from a product-by-process claim, the alternative recitation in the latter is necessitated to have a limited range, in order to make it clear that in the logical patent world, it has been made sure that before the applicant is forced to adopt a product-by-process claim, it has determined that a product claim is not appropriate in the critical situation while there exists an understanding in our mind that although both the product claim and the product-by-process claim have an absolute protection, their respective absolute protections must be different from each other since a same product is probably to be protected in both a product claim and a product-by-process claim. The ensuing question is thus clear that under the preemption of an absolute protection offered by a traditional product claim, what kind of absolute protection is to be conferred to a product-by-process claim without harming the preceding absolute protection a traditional product claim has been legally conferred to enjoy? How we can resolve the issue of cross-license between a preceding product claim and a later product-by-process claim both directed to the same product?
5. It would appear to be reasonable to us for concluding that an absolute protection for a European product-by-process shall mean that as long as a process identical or equivalent or somehow constructed to be equivalent to the process recited in the European product-by-process claim is involved in manufacturing a product defined therein, such product is necessitated to be construed under the absolute protection of a European product-by-process claim no matter what kind of process is really engaged before, during or after the product is brought forth, which, however, is the very same definition of a traditional product-by-process claim we discussed in last two issues.
6. As a matter of fact, from our viewpoint, every category of claim type has its respective absolute protection, in which a product claim has an absolute protection directed to protect a product regardless of what kind of process is used to manufacture the product, and a process claim has an absolute protection directed to protect a process regardless of what kind of product will be resulting from said process whereas, a product-by-process claim has an absolute protection directed to protect an intermediate situation where neither the involved process nor product is patantable but the combination of the involved product and process generates a patentable weight therefor.
7. Due to the even much more diversification and fineness of the art field in this world, while the product claim might be able to maintain its primitive definition generally intact, it has become hardly possible to keep a process claim containing only pure steps, which means a step without introducing therein a specific product, therein since basic steps in a process without the product element are normally common to a manufacturing process for a myriad of products, which in turn means that a process claim nowadays can be distinguishing or patentable only when a product element is introduced as a single step somehow or into one or more of the basic steps, which trend have unconsciously excused the mix-up between a process claim and a product-by-process claim or a mixed or hybrid type claim, which, however, shall not blur our clear mind to make a distinction among the product claim, the process claim and the product-by-process claim;
8. A person is entitled to inadvertently make a mistake but is obliged to diligently rectify such mistake.
9. As a matter of fact, there involve two issues for amendment upon the opposition or even cancellation proceedings, i.e. whether the applicant can broaden the claim scope and whether the applicant is entitled to move subject matter from the specification to the claims.
10. It might be creatively possible that what a European product-by-process claim in fact wants to protect or encourage the patentee, or declares to the public are how great the relevant applicant has taught this world that such product needs not be conventionally made and that the applicant deserves a big prize by being conferred with a scope to be construed irrespective of what process, except the conventional one, is used to produce the product in a product-by-process claim, if all ensuing questions can be solved.
11. Observing differently, the involved process or product constituents might be so common in themselves, the situation changes when a specific process is utilized to manufacture a specific product because many an advantages are brought forth through such novel combination, which ultimately turns an old product into one being regarded as a new product to be qualified for a special product-by-process claim protection although the resulting product, as a matter of fact, does not change a lot from a certain point of view.
12. In terms of classical definitions, a process claim must have a step or procedural feature compared to a conventional process, and a product claim must have an implicit or explicit structural feature compared to a conventional product whereas a product-by-process claim must bring forth a new product at a critical situation statutorily improper for protection under a product or a process claims where there is an old product being generally the same with the new product but different therefrom in respect of a specific attribute of the product involved.
13. Although there is a difficulty here that no matter how fine or subtle we desire to or could analyze to define the advantages a subject matter may have, it is always impossible for us to provide delimitations for demarcating the lowering, facilitating and/or increasing extents over which all people in this world will feel convinced as to the qualification of said subject matter for the inventiveness or creativeness, it might be suggestible that, as long as a significant, substantial or meaningful improvement or advantage is achieved thereby, the patentability be found therefor so long as the claim therefor has been distinguished over the prior art.
14. No one would like to deny the patentability of a mixed claim since its basic product or process independent claim has been proved patentable so that any old or new feature depends on a patentable new feature must also be new and patentable, which appears to be true and fully acceptable, since the patentee will never reap an illegal interest thereby because the infringement on such dependent mixed claim is based on the necessitated infringement on the independent claim, but some examiners would still like to reject such mixed claim in that regardless of whether the basic independent claim is a product or a process one, its dependent claim shall also have the same category or type and shall be patentable only when it contains a further feature of the category or type so that a feature of a different category or type will never bring a patentable weight to the dependent claim.
15. Although it is readily clear that the more civilized, advanced and ideal a society is, the happier, luckier and more fortunate people in the society will be, it is not necessitated that people in the society will always behave themselves in a way driving their society to be so built or established.
16. The rule that a claim dependent on an allowable claim must be allowable is very nutritious to foster the viability of the mixed type claims or the proposed 2-G product-by-process claims while the rule that a dependent claim can be patentable only when it contains a further feature of the same category or type with that of its allowable depended claim is helpful to build the fort in defending the conventional product-by-process claim totem requiring and demanding that there be no room for presentation of a product-by-process claim unless there is an exceptional or extreme case where a patentable subject matter can be put in neither a product claim nor a process claim.
17. It might be the core defect of a European product-by-process claim that a feature in a claim needs not be a limitation thereof, which, however, violates the basic rule of the claim interpretation that a feature is a limitation since a feature capable of bestowing a patentable weight to a specific claim must act as a limitation whenever the specific claim is to enforce its rights in order to balance between rights and obligations.
18. A product feature to have a patentable weight in a process claim is referred to one which is not featured in itself merely in a product attribute where the process claim is unpatentable without inclusion of the product feature and might be patentable simply because the product feature is patentable in itself even without inclusion of other elements of the process claim, but is featured in an interaction between a physical product and one or more specific steps involved in the process claim where the process claim, after integrating therein the product feature, becomes patentable due to attributes or patentable features or weight derivable from interaction among elements of a general process claim although the product feature in itself is not patentable.
19. So far as the protecting scope is concerned, firstly, a process claim, a product claim and a product-by-process claim respectively cover in principle the claimed specific process and the product produced thereby regardless of what kind of eventual product has been produced thereby, a product regardless of what kind of process is used to produce the product and a product produced with a process feature defined in the product-by-process claim when it is inappropriate to the subject invention in either a product claim or a process claim, and secondly, it has been getting truer and truer that a process claim can only be used to produce a specific product since a process claim has nowadays incorporated therein one or more product features, a product normally is produced by the same process since a product has nowadays been put in mass production and exhaust its lifecycle before the product is to have an opportunity to be produced otherwise, and it is getting harder and harder to tell a product-by-process claim apart from a mixed up claim, with the even more delicate interaction between the product attribute and the process attribute under the present technological level.
20. Normally, it is not so important for us to compare among the scopes of a product claim, a process claim and a product-by-process claim or find out which one of these three scopes is larger in a specific circumstance since for a claim drafter having strict and subtle logic experiences, it is readily clear for her/him to understand by which claim type s/he should adopt for a specific subject invention in order to best protect therefore.
Comments from Mr. Engelhard on the above article
¡§Dear Mr. Tsai:
Thank you for your letter dated November 7, 2005 enclosing your new article about product-by-process claims.
I really enjoyed reading your article, because you have written your article in such a refreshing and free-spirited style. Some of your thoughts are really interesting. However, I cannot agree to all of your points.
In the following, I would like to provide you with my comments on some of these points. I have chosen the most important ones from my point of view.
Decision T 0020/94
Beginning on page 4, you discuss the decision T 0020/94, I would like to point out that my interpretation of the decision and in particular of the headnote of the decision is completely different form your point of view. On page 5, lines 7 to 8 you point out that ¡§even if the granted claims are solely process claims, a change from a process claim for preparing a product to a product-by-process claim may be made.¡¨ In my opinion, this is not correct. The decision T 0020/94 concludes the other way round:
In the decision it was found that the extent of protection of a product-by-process claim is broader than the extent of protection of a claimed process. It is a general rule that a granted patent may not be amended in such a way that the extent of protection is broadened in an opposition procedure (see Art. 123(3) EPC). Therefore, a change from the category of process to the category of product-by-process claim was not admissible in the cited case. A change in category from a process claim to a product-by-process claim would violate Article 123(3) EPC. Therefore, the amendment carried out by the applicant in the opposition procedure was not allowable, and the B9ard refused this amendment.
Of course, this understanding of T0020/94 has also got consequences for items B to E listed on the top of page 5 of your article.
Category of claims in Europe
With respect to your statements provided for example on pages 17 and 20 of your article concerning different types of claims, I¡¦d like to comment as follows: In Europe, there exist only two main classes of claims: The first category is the category of product claims, the second category is the category of process claims. A product-by-process claim is a very special claim that is seldom realized, and falls into the category of product claims.
When judging whether a product-by-process claim is present in a set of claims, this is done in Europe in a rather formal way. The key features that have to be found in a claim that is considered to be a product-by-process claim are found by a rather formal analysis of the grammar and structure of the claims, and not by interpreting the content of the whole application.
That means that a product-by-process claim is always regarded as a product-by-process claim when the wording of the claim in question is somehow as follows: ¡§Product X obtained/obtainable¡K by process Y¡K¡¨. If a claim shall not be regarded as a product-by0pprocess claim, another structure of the claim has to be chosen, that means a different claim formulation is necessary unavoidably.
In Europe, no strict classification into hybrid-type claims exists. The only two categories are product claim type and process claim type. This already enables first statements about the extent of protection of a claim. Finer shades of the extent of protection of a claim are then evaluated by the interpretation of the concrete wording applied in the claim.
Definition of a product
On page 21 of your article, you doubt that it is justified to allow a product-by-process claim because of difficulties when defining a product, because it would be possible to give an exact definition of a substance when exercising more efforts and patience to explore an approaching solution. In my opinion, a strict definition of a product by a formula is not possible in all cases and such a requirement would also be not appropriate. There really exist cases in which it is not possible to give the exact formula of for example a macromolecule. Other processes for analyzing substances might help to distinguish differences between the claimed substance and already known substances. That means these methods help establishing novelty of a substance. NMR might be such a method. However, even when using all known methods there still remain cases in which a concrete and complete definition of a substance is still not possible.
On the other hand, in my opinion, many important inventions have been made in the past where it was not known in detail how the inventive substances were built up. A famous example is for example the protection of insulin which was first extracted from the pancreas of dogs and cows in order to provide it to a patient suffering from diabetes. Nobody knew the exact structure of insulin at that point of time.
Therefore, in my opinion, it is an adequate premise for the allowable formulation of the product-by-process claim that the product claimed cannot be exactly defined in another way and that additionally, of course, the product claimed has to be new over the prior art.
Extent of protection of a product-by-process claim
On page 24 of your article, it seems that you are of the opinion that the extent of protection of a product claim and a product-by-process claim are different from each other. Please let me stress once more that from the European point of view, the extent of protection of a product claim and the extent of a product-by-process claim is exactly the same. This is definitely what the decisions of the relevant courts in Germany and Europe teach. There are only some single opinions that criticize this kind of Case Law. One of them is Mr. Rudiger Rogge. However, he does not question that the present Case Law in Germany and Europe (Except for England) is like it is, saying that the extent of protection of a product claim and a product-by-process claim is exactly the same.
Citation of decisions
The last topic I would like to point out is a formal one. On pages 17 and 23 of your article, you cite the second and third decisions I sent to you. However, the decisions are normally cited in a shorter manner: On page 17 the decision is normally cited as ¡§T 0205/83¡¨ and not as ¡§T0205/83-3.3.1.¡¨ On page 23, the decision is normally cited as ¡§T 0423/89¡¨ and not as ¡§T0423/89-3.3.1¡¨.
I really hope that my above comments are helpful for you. When your article is published, I would be happy to get a copy of that article from you.¡¨
Comments from C. F. Tsai on comments from Mr. Engelhard: Any third party, especially from the US or the Europe, who is interested in resolving any potential controversy regarding the product-by-process issue is hereby urged to render opinions thereon.