Several elements may be included in national laws to deal with the issue of the scope of claims. If a country wishes to ensure that the scope of protection is defined as precisely as possible, on the basis of structurally defined claims, it may follow Option 1.
Option 1 would not allow for claims defined solely on the basis of the function that an invention performs, nor the definition of a product through the process for obtaining it.
If, however, a country wished to establish a broader scope of patenting, option 2 would be preferable, since it would permit the granting of patents even if claims are defined in non-structural terms and also “product-by-process claims” but, in this latter case, only in relation to the product that is “obtained” (not “obtainable”) with the process.
Scope of Claims
1. The claims of a patent shall define the invention for which protection is sought in terms of its purpose, constitution and effects. A claim which only recites the operation and effects of an invention shall not be accepted. A product claim shall not be admitted if the product is not sufficiently defined as such.
2. Product-by-process claims shall be accepted only when a structural description of the invention is not possible. The protection shall be limited in these cases to the product obtained with the claimed process.
It also may be possible to combine the first part of Option 1 with Option 2, or consider other alternatives.
Policy makers should recognize that, while health-related inventions may require special attention, the rules adopted will apply to all fields of technology, and that the personnel of the Patent Office should be well trained in order to adequately apply the provisions on this matter.