title: The limited benefit of "product-by-process" claim.
abstract: A product-by-process claim was initially developed when the invention could not otherwise be adequately defined. In the US, a patent applicant can use a product-by-process claim for a new product, no matter whether the product can also be defined by using structure features. However, the applicant mainly bears the burden to establish the novelty between the claimed product and the prior art product. Moreover, in terms of infringement, the very recent CAFC cases indicate that the product must be made by a process recited in the claim to infringe a product-by-process claim. Thus, an assignee almost can not take advantage from product-by-process claims during the patent enforcement by comparing with process claims. From the points of the burden during patent prosecution and confined scope in determining infringement, the benefit of using a product-by-process claim would be very limited.
authors.affiliation: a Rehabilitation Center, Taipei Veterans General Hospital , Taipei , Taiwan.
authors.forename: Bao-Chi
authors.initials: BC
authors.lastname: Chang
authors.affiliation: b Division of Experimental Surgery, Department of Surgery, Taipei Veterans General Hospital , Taipei , Taiwan.|c Institute of Hospital and Health Care Administration and Institute, National Yang-Ming University , Taiwan.
authors.forename: Shyh-Jen
authors.initials: SJ
authors.lastname: Wang
mesh_terms: D001688:Biological Products / Q000494:pharmacology*; D001709:Biotechnology; D006801:Humans; D010330:Patents as Topic; D014481:United States
chemical_list: D001688:Biological Products
keywords: claim; development; infringement; patent; patentability; product-by-process; viral