Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2100 – Patentability (2)
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:
MPEP 2113 – Product – By – Process Claims (2)
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:
Patent Law (2)
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:
Patent Procedure (2)
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: