6.1.11.3 Searching Product by Process Claims

Date Published

When interpreting ‘product by process’ claims, examiners should follow the approach given in Appendix A5.26[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 for examiners to provide a citation directed to the product per se. However, it may not be necessary to conduct an additional search to find a citation that anticipates the claim. Relevant documents may be found while 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 6.1.7.1.1 PCT Guideline References and Flow Chart should be followed. However, since 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.

Amended Reasons

Amended Reason Date Amended

Edited for better readability. Edited for consistency with Style Manual. Updated link text.

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