We are currently developing a new site to host the Patent Manual of Practice and Procedure. The BETA version of this site is now available for you to review. The information and content displayed in the BETA site is only available for testing purposes. Do not use or reference the information in the BETA site when making any decisions or actions regarding IP rights. Searching Product by Process Claims

Date Published

When interpreting ‘product by process’ claims, the approach to be followed is given in Appendix A 5.26[1] of the PCT International Search and Preliminary Examination Guidelines.  That is, a product is not rendered novel merely by the fact that it is produced by means of a new process.

Where an international application contains a product by process claim in relation to a known product, it will be necessary to provide a citation directed to the product per se.  However, it may not be necessary to conduct an additional search in order to find a citation that anticipates the claim.  Thus relevant documents may be found during the course of searching the process, or the application may contain relevant admitted prior art.  Where an application contains a broad product by process claim that encompasses a wide range of compounds, the procedures outlined in 1.1.7 Claim Interpretation; Broad Claims; PCT Articles 5 and 6 should be followed.  However, bearing in mind that the inventive concept lies in the process and not the product per se, the amount of time spent searching the product should be kept to a minimum.

Back to top