9.19. Analogy processes

The effect of a process manifests itself in the result, i.e. in the product in chemical cases, together with its internal characteristics and the consequences of its history of origin, e.g. quality, yield and economic value. It is well-established that analogy processes are patentable insofar as they provide a novel and inventive product. This is because all the features of the analogy process can only be derived from an effect which is as yet unknown and unsuspected (problem invention). If, on the other hand, the effect is wholly or partially known, e.g. the product is old or is a novel modification of an old structural part, the invention, i.e. the process or the intermediate therefore, should not merely consist of features which are already necessarily and readily derivable from the known part of the effect in an obvious manner having regard to the state of the art (T 119/82, OJ 1984, 217; see also T 65/82, OJ 1983, 327).

According to T 2/83 (OJ 1984, 265), so-called analogy processes in chemistry are only claimable if the problem, i.e. the need to produce certain patentable products as their effect, is not yet within the state of the art.

In T 1131/05 the board found that the conditions for granting a claim to an analogous process defined in T 119/82 and T 2/83 applied to the subject-matter of claim 10. It thus deemed a process claim directed to an analogy process to be new and inventive.