6.1.11.3 Searching Product by Process Claims

Also in this Chapter:

• 6.1.11.1 Overview - Novelty / Inventive Step
• 6.1.11.2 Inventive Step
• 6.1.11.4 Dates Searched
• 6.1.11.5 Conducting the Search
• 6.1.11.6 Useful Techniques (“piggy” back/forward searching)
• 6.1.11.7 Obtaining Full Copies
• 6.1.11.8 Considering and Culling the Documents
• 6.1.11.9 Ending the Search
• 6.1.11.10 Categorising the Citations
• 6.1.11.11 Grouping the Claims​​​​​​​​​​​​​​​​​​​​​

Key Legislation:

PCT ISPE Guidelines:

• para A5.26 Product by Process Claims

Related Chapters:

• 6.1.7.1.1 PCT Guideline References and Flow Chart

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 6.1.7.1.1 PCT Guideline References and Flow Chart 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.