tag:blogger.com,1999:blog-6851300.post4138995704548075143..comments2023-11-05T06:06:12.057-06:00Comments on The 271 Patent Blog: CAFC Rules En Banc: Terms in Product-by-Process Claims are Limitations in Determining InfringementTwo-Seventy-One Patent Bloghttp://www.blogger.com/profile/02481083706071978817noreply@blogger.comBlogger2125tag:blogger.com,1999:blog-6851300.post-80362434204381864432009-11-05T01:43:50.327-06:002009-11-05T01:43:50.327-06:00Also, I believe that the court was correct to find...Also, I believe that the court was correct to find that a product by process claim includes the process. As I noted on Brian Galvin's blog earlier today, product by process claims often are a "lazy" way to describe an invention. Many prosecutors merely refer to a process and say the "product formed by the process of claim x" without even trying to describe the actual metes and bounds of what the patentee seeks to own. This effectively gives many owners of product by process claims a broader exclusionary patent right than they are entitled to--a competitor cannot make the claimed compound even by a wholly novel and unobvious (eg cheaper, better, faster) method. <a href="http://www.gachisites.com/" rel="nofollow">small business web design</a>aasihttps://www.blogger.com/profile/00870313874788168854noreply@blogger.comtag:blogger.com,1999:blog-6851300.post-65100183554625394542009-05-19T11:25:00.000-05:002009-05-19T11:25:00.000-05:00As someone who has practiced in the chemical arts ...As someone who has practiced in the chemical arts for many years, I am glad this issues is finally settled (albeit under odd procedural circumstances). <br /><br />Also, I believe that the court was correct to find that a product by process claim includes the process. As I noted on Brian Galvin's blog earlier today, product by process claims often are a "lazy" way to describe an invention. Many prosecutors merely refer to a process and say the "product formed by the process of claim x" without even trying to describe the actual metes and bounds of what the patentee seeks to own. This effectively gives many owners of product by process claims a broader exclusionary patent right than they are entitled to--a competitor cannot make the claimed compound even by a wholly novel and unobvious (eg cheaper, better, faster) method. <br /><br />Examiners hate product by process claims because they are effectively unsearchable, which often leads to ineffective and off point examinations. Of course, it is this relatively unsearchability that made product by process claims desirable to chemical patent prosecutors such as myself.<br /><br />As for the comment about 2 of the dissenters having PhD's in chemistry, Judges Newman and Lourie of them respectively received their degrees 57 and 44 years ago, according to your post. While I typically greatly respect these judges' views on patent law as it applies to the chemical arts, my view is that product by process claims are a relic of a time when chemistry was effectively indescribable. Judges Newman and Lourie are products of that time. As confirmed to me by many PhD chemist clients over the years, today, we can describe and therefore claim new compounds etc in any number of ways that did not exist in the past. <br /><br />The result of this case is that chemical prosecutors will have to learn new "tricks" to broadly gain patent coverage for their inventors by developing new ways to definitely claim compounds. In my view, this change is needed and will in the long run be a good thing for patentees.Anonymoushttps://www.blogger.com/profile/12023310886433949839noreply@blogger.com