There is an underlying understanding of avoiding product-by-process claims, which prompted me to research whether a product-by-process claim has any benefits. A product-by-process claim is a specialized type of apparatus or composition claim that defines a product in terms of the process by which it is made. In other words, a product-by-process claim is a claim to the product itself. Further, the MPEP states, “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself.” MPEP 2113. In other words, a product defined by a product-by-process claim infringes that claim only if the competitor uses the same method to produce it. Abbott Labs, 554 F.3d at 1389. Regrading patentability, a product-by-process claim is unpatentable if the product is in the prior art, even if the process steps recited in the product-by-process claim are new. Id. Because product-by-process claims are very limited in their applicability to an invention, it is unclear what benefits are derived from utilizing product-by-process claims. A common benefit, a plurality of articles recited, is that product-by-process claims permit an applicant to claim an invention that could not otherwise be adequately defined. Citation omitted; Citation omitted. However, this benefit is significantly truncated because the applicant bears the burden to establish the novelty between the claimed product and the prior art product. Citation omitted. Additionally, product-by-process has a narrower scope of protection to stop infringers—the product must be made by a process recited in the claim to infringe a product-by-process claim. Citation omitted; Citation omitted. Randy Nguyen is a current 2L at UNH Franklin Pierce School of Law.
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