A product-by-process claim is a product claim

What happened

A patentee whose claims were framed as a product obtained by a particular process sought to enforce them against products made by a different process.

What the fight was about

Whether a product-by-process claim is limited to products made by the recited process, and whether the same standard applies at grant and at infringement.

What the court decided

Product-by-process claims are product claims. Where the product itself is novel and inventive, protection extends to the product per se regardless of the process used to make it. The Court rejected applying a different standard at grant than at infringement, describing that as an impermissible pruning of scope, and grounded the reasoning in the statutory language - section 48(a) uses obtainable by for product claims, against the narrower obtained directly by that process in section 48(b) for pure process claims.

Why an inventor should care

If the product is genuinely new, the way you describe how it is made does not hand competitors an escape route.

What a patent professional should take from it

Significant for chemical and pharmaceutical drafting, where product-by-process framing is common. Note the corollary: it depends on the product itself being novel and inventive.

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This is an editorial case note prepared by Ragulika IP - a summary of a decision, not the text of the judgment, and not authority. Read the judgment itself before relying on any point.