Product-by-Process Patent Claims: Definiteness, Obviousness, Recent Court Treatment

Description

At least for infringement, product-by-process claims use process information to define a product according to the en banc Federal Circuit decision in Abbott Lab. v. Sandoz Inc. (2009). For patentability, however, the process limitations are not considered. See MPEP 2113 and 2173.05(p). This sets up a most interesting asymmetry in the law.

This type of product-by-process claim format can provide patent protection to new products that are otherwise incapable of structural characterization, or at least for purposes of proving infringement. Whether use of the product-by-process format is warranted in any particular case will depend, in a highly factual manner, upon the balance between the benefits and the practical disadvantages of the format, in light of the unique circumstances of each case. A

Product-by-process claims are construed differently depending on whether the claim is being analyzed by the USPTO, including in AIA post-grant proceedings, or the courts. In proceedings before the USPTO, product-by-process claims are interpreted as not limited by the process steps recited in the claims, because product-by-process claims define a product rather than a process. The principle is an accommodation to the burden that product-by-process claims place upon the USPTO. Before the courts, however, as clarified by the en banc Federal Circuit decision in Abbott Lab. v. Sandoz Inc., process terms in product-by-process claims serve as limitations in determining infringement. The Federal Circuit and the PTAB have provided some guidance on the patentability of these interesting, asymmetric claims.

Listen as our authoritative panel of patent attorneys examines product-by-process patent claims and their treatment both before the USPTO, including AIA post-grant proceedings, and the courts. The panel will discuss the advantages and disadvantages of this type of claim as well as the challenges of these claims. The panel will examine recent decisions and offer best practices for product-by-process claims.