Partial back-reference, so to speak
Published on: 20 May 2015
by Dr. Christian Köster, Patent Attorney at Dennemeyer & Associates, Munich
There seems to be an interesting patent category under the European Patent Convention (EPC), namely claims containing partial back-references.
In decision T81/14 of 12 March 2015, a Board of Appeal of the European Patent Office summarized its conclusion about use claims, which refer to the use of a product obtained according to a method claimed in a preceding claim, as follows:
“When considering the definition of a product in terms of its production process the principles developed in the jurisprudence for the ‘product-by-process claims’ are in general to be applied, also in the case of a claim directed to the use of that product (points 3.2 to 3.7).” (see Catchword)
In order to better understand the Board’s view, it is helpful to read the claim which led to the above conclusion:
"8. Use of the sintered cemented carbide body obtained according to the method of any one of claims 1 to 7 for the production of a cutting tool."
The Board interpreted this claim such that it comprises process and product features and is notionally equivalent to a claim directed to a process for the production of a cutting tool using the sintered cemented carbide body. The Board concluded from this interpretation that the steps of the method for the production of the sintered cemented carbide body do not form part of the claimed activity. In other words, the reference in claim 8 to the steps of the method for the production of the sintered cemented carbide body was considered not defining process features, but solely the features of the product, i.e. of the sintered body, used in the claimed method (see T 81/14, at no. 3.3 of the Reasons).
Hence, despite the explicit back-reference to “the method of any one of claims 1 to 7”, this back-reference did not incorporate all method steps into the use claim. This was because of the additional language “obtained by”. It could therefore be said that a back-reference can be limited; or partial.
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