The Extent Of Protection Of The Product-by-process Claim

The patent law divides claim into two parts, including product and process. Generallyspeaking, the claim of product is described by structure. For process, it’s described byprocedure.The subject of patent-by-process claim is the product other than the procedure. It isnoted that for such kind of patent, their patent claim focus on the procedure,not the structure.Because the inventor can’t describe the product by structure as conventional, although theinvention does comply with the patent law. There is always controversy about how todetermine the novelty and creativity when inventor applying for patent-by-process, and it isnot clear that how to determine the scope of the patent-by-process. In china, the scope of suchproduct patent protection in the licensing stage is different from the infringement stage.According to the regulation of Patent Office, the key point to determine whether thepatent-by-process possess novelty depends on the structure caused by procedure,not theprocedure itself. That is to say if the structure possess novelty,the product possess novelty.The examiner can’t determine the novelty of the product just based on the procedure’sdiffering from existing technology. It is called broad-interpretation. In the perspective ofCourt, the scope of protection for patent-by-process claim aims at the technology feature butnot the product,which is called narrow-interpretation.As can be seen from the provisions of ‘guidelines for patent examination’ over the years,the Patent Office has been using broad-interpretation, which is also consistent with thepractice of other national patent offices. However, in order to correct the principle which isjust take the product into consideration, and established the principle that takes all technologyfeature into consideration Although the explanation to the same problem from the twoagencies are different, both of them have certain rationality, from their respective point ofview of historical development.As far as I am concerned, it is definitely that the Patent Office should adhere to thenarrow-interpretation. It is the basis of patent law. In the practice, the patent office still obeythe principal of broad-interpretation. This is restricted to the nature of the patent office as aexecutive branch. What’s more, the seemly ‘conflict’ doesn’t lead to real confusion, anddoesn’t damage the obligee’s rights and interests. The patent contract theory can give a reasonable explanation to the present patent regulation.This paper analyzes the product-by-process claims, point out that the inconsistentexplanation on the scope of product-by-process claims between the Patent Office and thepeople’s court is reasonable. There is no need to argue about amend the patent law.