Exploring the Limited Benefits of Product-by-Process Claims

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Marshall, Gerstein & Borun Partner Discusses the Scope of Product-by-Process Claims for Intellectual Property Professionals in New Article

Recent Federal Circuit decisions clarify the benefits of claiming an invention by the process used to make it, better known as product-by-process claims

Marshall, Gerstein & Borun LLP partner Sandip H. Patel and summer associate Vivien C. Nielsen help intellectual property professionals understand the nuances of obtaining and enforcing product-by-process patent claims by identifying exemplary cases and extrapolating conclusions all patent applicants should consider. See their article in the December 2009 issue of Intellectual Property Today (http://www.iptoday.com/issues/2009/12/limited-benefits-product-by-process-claims.asp).

"Recent Federal Circuit decisions clarify the benefits of claiming an invention by the process used to make it, better known as product-by-process claims," said Patel. "These claims were once an essential part of chemical and biotechnology patents, but the recent decisions will force applicants to carefully reconsider whether or not to pursue such claims and will force patentees to reconsider its ability to enforce such claims where its competition employs a process other than the one recited in such claims."

These recent decisions state that when determining the validity of a product-by-process claim, the focus is on the product itself, not the process of making it, whereas when determining the infringement of a product-by-process claim, the focus is on the process of making the product. Patel emphasizes that these analyses can lead to conclusions that a product-by-process claim is not invalid and is infringed. But, "it is becoming more and more difficult for patent applicants to rely on the process of making a product to give it patentability," said Patel. "Consequently, if the presence of process limitations will be required to determine infringement of a product-by-process claim, yet these limitations do not aid in establishing patentability, why should applicants submit product-by-process claims?"

Sandip H. Patel is a partner with Marshall, Gerstein & Borun, LLP, and has written and prosecuted hundred of patent applications, and served as counsel in numerous inter partes matters in his 13 years with the firm. Marshall, Gerstein & Borun summer associate Viven C.Nielsen, Ph.D., co-authored the IP Today article.

For more than 50 years, Marshall, Gerstein & Borun LLP (http://www.marshallip.com) has maintained an exclusive focus on the practice of intellectual property law. The firm's strengths include patent and trademark prosecution, copyrights, trade secrets, licensing, litigation and technology transfer. Throughout its history, the firm's attorneys have handled many matters that established fundamental principles in patent law, and they have always been at the forefront of intellectual property issues involving the latest developments in the sciences and engineering. Clients include FORTUNE 250 corporations, universities, research foundations, and international companies.

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Tom Ciesielka
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