Comments by Venable partner Michael Gollin were featured prominently in an August 2009 Inside Counsel story about the Federal Circuit’s May 2009 Abbott decision.

This ruling on product-by-process patents resolves a split in Federal Circuit law, but opens up new issues in prosecuting and litigating patents. The ruling also narrows the protection given to product-by-process patents. "The ruling may hurt those in the biotech, chemical, pharmaceutical and machinery industries," said Gollin, who leads Venable’s Life Sciences Practice Group.

Product-by-process patents traditionally have been used to protect innovative products with structures that were not fully known, such as new drug molecules. Instead of describing a product by its structure, the patent describes a product in terms of the process used to create it.

According to Gollin, the ruling does not offer guidelines for determining when something is a product-by-process claim and opens up a new line of defense in patent infringement suits. "Accused infringers for the foreseeable future will argue that any patent claim [the plaintiff asserts] is a product-by-process claim, and they are not infringing the claimed process," Gollin said.

Although product-by-process claims have become less popular in recent years, and Gollin believes the decision may accelerate that decrease. However, Gollin believes it would be a mistake to abandon them all together as they can be an important part of a patent portfolio. "Abbott underscores the importance of claim diversity," Gollin said. "You shouldn’t put all your types of claims in one basket."