Product-by-process patent claims have traditionally provided a useful way for protecting products, like chemical compounds, that are difficult to describe by chemical make-up or structure, but can be described by the way they are made. As with other patent claims, the claim—insofar as the product is concerned—must be new and non-obvious to be patentable, regardless of the process for making the product. But the approach is not the same for infringement.
Before Abbott Labs v. Sandoz, Inc., 566 F.3d 1282 (Fed. Cir. 2009) (Abbott/Sandoz), there were two competing lines of cases in the United States for determining infringement of product-by-process claims—one limiting the patent protection to the methods recited in the patent claim and the other not so limited. Abbott/Sandoz ended the division and ruled that the recited process must be satisfied in order to infringe.
