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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

    Intermediate

  • work Practice Area

    Patent

Date & Time
  • event Date

    Thursday, December 28, 2023

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE course will provide guidance to patent counsel on product-by-process claims. The panel will discuss the advantages and disadvantages of this type of claim as well as the challenges of these claims. The panel will examine recent treatment by the courts and the PTAB and offer best practices for product-by-process claims.

Faculty

Amanda K. Murphy
Partner
Finnegan Henderson Farabow Garrett & Dunner LLP

Dr. Murphy focuses her practice on client counseling and patent prosecution for a range of clients. She prepares new patent applications, prosecutes U.S. and foreign applications, and represents applicants at appeals and oral hearings before the PTAB. She has experience in prosecuting inter partes and ex partes reexamination applications, reissue applications, and patent term extension applications for approved pharmaceuticals, including obtaining supplemental protection certificates in Europe.

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Adriana L. Burgy
Partner
Finnegan Henderson Farabow Garrett & Dunner LLP

Ms. Burgy focuses on opinion work, client counseling, patent prosecution and management, and litigation in the chemical, pharmaceutical, and biotechnology arts. She counsels her clients on a diverse range of patent issues. She assists clients on single-patent issues as well as complex matters involving multiple patents and applications requiring ongoing advice on patent portfolio strategy and development, with an eye towards litigation. She has assisted clients in the early stages of development through due diligence and patent portfolio analysis.

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Thomas L. Irving
Partner
Marbury Law Group

Mr. Irving has 47 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.

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Description

At least for infringement, product-by-process claims use process information to define a product according to the en banc Federal Circuit decision in Abbott Lab. v. Sandoz Inc. (2009). For patentability, however, the process limitations are not considered. See MPEP 2113 and 2173.05(p). This sets up a most interesting asymmetry in the law.

This type of product-by-process claim format can provide patent protection to new products that are otherwise incapable of structural characterization, or at least for purposes of proving infringement. Whether use of the product-by-process format is warranted in any particular case will depend, in a highly factual manner, upon the balance between the benefits and the practical disadvantages of the format, in light of the unique circumstances of each case. A

Product-by-process claims are construed differently depending on whether the claim is being analyzed by the USPTO, including in AIA post-grant proceedings, or the courts. In proceedings before the USPTO, product-by-process claims are interpreted as not limited by the process steps recited in the claims, because product-by-process claims define a product rather than a process. The principle is an accommodation to the burden that product-by-process claims place upon the USPTO. Before the courts, however, as clarified by the en banc Federal Circuit decision in Abbott Lab. v. Sandoz Inc., process terms in product-by-process claims serve as limitations in determining infringement. The Federal Circuit and the PTAB have provided some guidance on the patentability of these interesting, asymmetric claims.

Listen as our authoritative panel of patent attorneys examines product-by-process patent claims and their treatment both before the USPTO, including AIA post-grant proceedings, and the courts. The panel will discuss the advantages and disadvantages of this type of claim as well as the challenges of these claims. The panel will examine recent decisions and offer best practices for product-by-process claims.

Outline

  1. Product-by-process claims
    • Advantages
    • Disadvantages
    • Challenges
  2. Court treatment
  3. USPTO treatment
  4. Best practices

Benefits

The panel will review these and other key issues:

  • What lessons can be learned from recent court treatment of product-by-process claims?
  • What steps should counsel take when pursuing product-by-process claims?
  • What steps should counsel take when addressing infringement of such claims?