T 0847/24: Adding A Production Step Can Extend Scope Of Protection

Can a production step be added to a claim for a method of design after grant?

The EPO Board of appeal has held that amending a method claim with an abstract output, such as data representing a design for a product, to include a step of actually producing a product according to the design unallowably extends the scope of protection. The decision arises from T 0847/24, which discussed the impact that Article 64(2) EPC can have on the scope of protection even when making a narrowing amendment.

Background

The granted patent related to a computer implemented method for configuring a surgical guide and an implant to be used as a part of a facial surgery. The broadest claim of the granted patent was to a method including steps of generating a 3D anatomical model, simulating an osteotomy (a surgery involving the cutting and repositioning of bone portions), defining a plurality of attachment points on the cut bone portions for attaching the implant, and then determining a structure for the implant and the surgical guide. Although in practice an implant and a surgical guide for use in the surgery would then be made according to the determined structure, the granted claim did not include such a manufacturing step. Instead, the granted claim only included the steps required to determine the configuration of the surgical guide and implant. During opposition proceedings, the proprietor attempted to strengthen arguments that the claim achieves a technical effect by limiting the broadest method claim to include producing the implant and surgical guide.

The decision of the Board of Appeal

The main point at issue was whether the addition of a step of producing the implant and surgical guide extended the scope of protection of the claim, which would be unallowable after grant. The appellant (the patent proprietor) argued that the language of the granted claim did not exclude carrying out further steps, and so the granted claim already encompassed performing the method with the addition of a production step. Given that the granted claim already encompassed such a production step, stating the step explicitly could not have expanded the scope of protection. The respondent argued that introducing a production step would extend the scope of protection provided to the direct product of the process under Article 64(2) EPC. Article 64(2) EPC states that a claim to a process provides protection to a product directly obtained from the process. As the original process did not result in a physical product, and the protection of Article 64(2) EPC does not extend to products obtained by carrying out further steps, the original claim would not have directly protected an implant made according to the design, but rather the process of generating the design of the implant. In contrast, the amended claim includes a step of producing an implant and so would protect the implant itself.

The Board of Appeal agreed with the appellant that a method comprising the additional step of producing the implant would fall within the scope of claim 1. However, the Board did not agree that this meant that the scope of protection was not extended. As mentioned, Article 64(2) EPC states that a claim to a process provides protection to a product directly obtained from the process. The Board agreed with the respondent that the granted method claim protects the design data that is directly obtained from the method. However, the physical implant and surgical guide would not have been “directly” obtained from the method, since further steps were required to make them, and so were not protected by the granted claim under Article 64(2) EPC. If a production step were to be added to the method claim, the implant and surgical guide would be directly obtained from the process covered by such a claim, and so would be protected under Article 64(2) EPC, meaning that the scope of protection is extended.

There is little EPO case law on what is meant by “obtained directly” from a process since this is an infringement issue, which is generally the realm of national courts. However, G 2/88 held that a process that merely uses an entity to achieve a technical effect does not provide protection under Article 64(2) EPC to that entity, as no product is obtained from the process. UK and German case law considers the word “directly” to mean “without intermediary”, meaning that a product must result from the claimed process without further steps. However, a product is still considered to be directly obtained if the product is subjected to further processing which does not cause it to lose its identity and its essential characteristics (Pioneer Electronics Capital Inc v Warner Music Manufacturing Europe GmbH, [1979] GRUR 743 (Düsseldorf Oberlandesgericht, 15 September 1977)). On this basis, it is clear that a physical product would not be the direct product of a process that ends with creation of a design since further steps are needed to create it.

The decision also discussed previous case law, concluding that the cases cited by the appellant did not discuss the application of Article 64(2) EPC, and so were not relevant. The appellant had pointed to sections of the description stating the existence of a production step, arguing that the skilled person would consider the claims to also cover the act of making an implant, even though the step was not explicitly claimed. However, the board noted that the description only specified that a physical implant “may be produced”. Therefore, even considering the description, the skilled person would not interpret the original claim as protecting a physical implant.

As the other requests filed by the appellant were found to lack inventive step, the appeal was subsequently refused and the patent remained revoked.

Takeaway points

The protection provided by a method claim that ends with an abstract output in the form of data (such as a design used to manufacture a product) does not extend to a physical product embodying that abstract output. An amendment introducing a step of manufacturing the product would therefore likely extend the scope of protection, since, by virtue of Article 64(2) EPC, the claim would protect the manufactured product, and so cannot be made after grant. As the inclusion of a manufacturing step may be desirable to establish a technical effect for some abstract inventions, downstream steps relating to the production of a final product based on data produced by a process should be included in drafting or during prosecution, at least in dependent claims.

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