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| On the Extended Protection for Process Patents |
| He Huaiwen |
| Guanghua Law School, Zhejiang University, Hangzhou 310008, China |
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Abstract It is widely accepted that rights conferred on a process patent should not be limited to such process but extended to the products directly obtained by such process. The extended protection is stipulated in Article 28 entitled “Rights Conferred”of the Agreement on Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). However, WTO members differ in its application. The Supreme Court of People’s Court insists that “product directly obtained from a process patent” is the original product produced from such process (hereafter “original product test”). Germany and UK courts apply the “loss of identity test”, namely, a product could be obtained directly from a claimed process despite further processing if there is no loss of identity. US patent law provides that a product made by a patented process is protected except that it is materially changed by subsequent processes (hereafter “material change test”) or becomes a trivial and nonessential component of another product (hereafter “trivial component test”).It is misleading that the extended protection is subsumed under “rights conferred on a patent”, as in Article 28 of TRIPS, Article 63 of European Patent Convention and Article 11 in Chinese Patent Law. Indeed, it is the scope of protection of subject matter of a process patent—as defined in a process claim—that is extended from such process to the product obtained from it. As such, the extended protection is an exception to the generally accepted principle that the scope of protection for a patent is determined by the claims. Accordingly, rights conferred on a process patent is composed of rights conferred on the claimed process and rights conferred on the extended subject matter—the product obtained directly from such process.Consequently, the scope of extended protection should be governed by the same principle for scope of protection for a patent. It should combine fair protection for the patent proprietor with a reasonable degree of legal certainty for the third parties.To guarantee a reasonable degree of legal certainty for the third parties, for the purpose of “product directly obtained from such process”, “such process” should be determined by the claimed process, not by the “general inventive concept” of the patent description. Traditionally, Germany courts held that the inventor did not merely enjoy the protection of that which he claimed to be protected but also, according to the true inventive accomplishment, that which he could have claimed in the light of the whole state of the art at the time of the application. Not surprisingly, it was German patent practice which gave birth to the extended protection for a process patent and Germany courts still apply the “loss of identity test”. The identity of the product of the patented process is necessarily determined by its general inventive concept. Under this test, the problem is that nobody could tell where the extended protection stops. To illustrate, in 2012, Bundesgerichtshof in a patent case concerning MPEG-2 decided that the extended protection may apply to “data”, extending the extended protection further to “digital product”. As computer programs are never considered as manufacturing process with technical character eligible for patenting under Article 53 of European Patent Convention, their products “data” should not be treated as “product” under patent law. The extended protection should apply only to tangible products manufactured by a claimed process, with no reference to the general inventive concept of such process. Otherwise, there is no reasonable degree of legal certainty for the extended protection on the part of third parties.To be fair for the patentees of process patents, patented processes for manufacturing new products and those for existing products should be distinguished for the purpose of “product directly obtained from such process”, for patent protection should be proportionate with inventive contribution. Existing product are those which could be produced by prior art and new products are those which could not be produced by prior art. “New” means novel and non-obvious. Natural substances found in nature when produced through human efforts is new, even though they are not eligible for patenting. The extended protection for patented manufacturing process for existing products should cover only originally obtained products, while the extended protection for patented manufacturing process for a new product should cover any products which are new in view of prior art. This proposed test can account for the divergence of case law of US and UK courts for the extended protection.In conclusion, the scope of subject matter of a process patent should be extended to the product originally obtained from the claimed process, and if such product is new, to any product produced by subsequent processes which is new against prior art.
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Received: 21 July 2022
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2023, Vol. 53 
