Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2100 – Patentability (3)
Product-by-process claims and method claims are distinct types of patent claims with different scopes and considerations:
- Product-by-process claims are directed to the product itself, defined by the process used to make it. The patentability is based on the product, not the process.
- Method claims are directed to the process or steps used to make a product or achieve a result.
According to MPEP 2113:
“The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art.”
Key differences include:
- Focus: Product-by-process claims focus on the end product; method claims focus on the process steps.
- Infringement: Product-by-process claims are infringed by identical products, regardless of how they’re made; method claims are infringed only when the specific steps are performed.
- Examination: Product-by-process claims are examined based on the product structure; method claims are examined based on the specific steps and their order.
Understanding these differences is crucial for proper claim drafting and patent strategy.
To learn more:
In product-by-process claim rejections, the burden of proof is initially on the patent examiner, but it’s lower than for conventional product claims. According to MPEP 2113:
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion.
Once the examiner provides a rationale showing that the claimed product appears to be the same or similar to a prior art product, the burden shifts to the applicant. The applicant must then provide evidence establishing a nonobvious difference between the claimed product and the prior art product.
To learn more:
According to MPEP 2113, the evaluation of product-by-process claims focuses on the final product, not the process of making it. The MPEP states:
“If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”
This means that examiners will compare the claimed product to prior art products, regardless of how those products were made. If the claimed product appears to be the same or obvious in light of a prior art product, it may be rejected under 35 U.S.C. 102 (anticipation) or 35 U.S.C. 103 (obviousness).
To learn more:
MPEP 2113 – Product – By – Process Claims (3)
Product-by-process claims and method claims are distinct types of patent claims with different scopes and considerations:
- Product-by-process claims are directed to the product itself, defined by the process used to make it. The patentability is based on the product, not the process.
- Method claims are directed to the process or steps used to make a product or achieve a result.
According to MPEP 2113:
“The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art.”
Key differences include:
- Focus: Product-by-process claims focus on the end product; method claims focus on the process steps.
- Infringement: Product-by-process claims are infringed by identical products, regardless of how they’re made; method claims are infringed only when the specific steps are performed.
- Examination: Product-by-process claims are examined based on the product structure; method claims are examined based on the specific steps and their order.
Understanding these differences is crucial for proper claim drafting and patent strategy.
To learn more:
In product-by-process claim rejections, the burden of proof is initially on the patent examiner, but it’s lower than for conventional product claims. According to MPEP 2113:
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion.
Once the examiner provides a rationale showing that the claimed product appears to be the same or similar to a prior art product, the burden shifts to the applicant. The applicant must then provide evidence establishing a nonobvious difference between the claimed product and the prior art product.
To learn more:
According to MPEP 2113, the evaluation of product-by-process claims focuses on the final product, not the process of making it. The MPEP states:
“If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”
This means that examiners will compare the claimed product to prior art products, regardless of how those products were made. If the claimed product appears to be the same or obvious in light of a prior art product, it may be rejected under 35 U.S.C. 102 (anticipation) or 35 U.S.C. 103 (obviousness).
To learn more:
Patent Law (3)
Product-by-process claims and method claims are distinct types of patent claims with different scopes and considerations:
- Product-by-process claims are directed to the product itself, defined by the process used to make it. The patentability is based on the product, not the process.
- Method claims are directed to the process or steps used to make a product or achieve a result.
According to MPEP 2113:
“The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art.”
Key differences include:
- Focus: Product-by-process claims focus on the end product; method claims focus on the process steps.
- Infringement: Product-by-process claims are infringed by identical products, regardless of how they’re made; method claims are infringed only when the specific steps are performed.
- Examination: Product-by-process claims are examined based on the product structure; method claims are examined based on the specific steps and their order.
Understanding these differences is crucial for proper claim drafting and patent strategy.
To learn more:
In product-by-process claim rejections, the burden of proof is initially on the patent examiner, but it’s lower than for conventional product claims. According to MPEP 2113:
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion.
Once the examiner provides a rationale showing that the claimed product appears to be the same or similar to a prior art product, the burden shifts to the applicant. The applicant must then provide evidence establishing a nonobvious difference between the claimed product and the prior art product.
To learn more:
According to MPEP 2113, the evaluation of product-by-process claims focuses on the final product, not the process of making it. The MPEP states:
“If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”
This means that examiners will compare the claimed product to prior art products, regardless of how those products were made. If the claimed product appears to be the same or obvious in light of a prior art product, it may be rejected under 35 U.S.C. 102 (anticipation) or 35 U.S.C. 103 (obviousness).
To learn more:
Patent Procedure (3)
Product-by-process claims and method claims are distinct types of patent claims with different scopes and considerations:
- Product-by-process claims are directed to the product itself, defined by the process used to make it. The patentability is based on the product, not the process.
- Method claims are directed to the process or steps used to make a product or achieve a result.
According to MPEP 2113:
“The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art.”
Key differences include:
- Focus: Product-by-process claims focus on the end product; method claims focus on the process steps.
- Infringement: Product-by-process claims are infringed by identical products, regardless of how they’re made; method claims are infringed only when the specific steps are performed.
- Examination: Product-by-process claims are examined based on the product structure; method claims are examined based on the specific steps and their order.
Understanding these differences is crucial for proper claim drafting and patent strategy.
To learn more:
In product-by-process claim rejections, the burden of proof is initially on the patent examiner, but it’s lower than for conventional product claims. According to MPEP 2113:
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion.
Once the examiner provides a rationale showing that the claimed product appears to be the same or similar to a prior art product, the burden shifts to the applicant. The applicant must then provide evidence establishing a nonobvious difference between the claimed product and the prior art product.
To learn more:
According to MPEP 2113, the evaluation of product-by-process claims focuses on the final product, not the process of making it. The MPEP states:
“If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”
This means that examiners will compare the claimed product to prior art products, regardless of how those products were made. If the claimed product appears to be the same or obvious in light of a prior art product, it may be rejected under 35 U.S.C. 102 (anticipation) or 35 U.S.C. 103 (obviousness).
To learn more: