Written by Mark Terry
Yes, it can. A product can most definitely infringe a method of manufacture patent. I recently sent a cease a desist letter to a retailer of a luggage product that was manufactured using my client’s patented method of manufacture. His attorney – a patent attorney who’d been practicing for many years – responded with a letter that tersely stated, “all of the claims of the ‘226 patent are method claims and this no product could infringe a claim, only the practicing of a method could infringe.” That’s it – that’s all he had to say about that. Besides the fact that this attorney’s statement of law was embarrassingly incorrect, he also put it in writing. It’s unbelievable to me that in today’s internet age, anyone would knowingly write something so incorrect on paper, for everyone to see.
Imagine the internet storm that would ensue had I imaged the letter and put it on Twitter or Instagram? How badly would his online reputation suffer? Getting back to the law, prior to 1988, importation was not one of a patent holder’s exclusive rights under U.S. patent law. But the 1988 Process Patent Amendment Act added section 271(g) to the Patent Act, making the importation of a product made by a patented process an act of infringement. Today, the owner of a U.S. patent claiming a process for manufacturing a product can, under 35 U.S.C. § 271(g), bring suit in U.S. federal court against a party who manufactures the product using the patented process even in a foreign country and then imports the product into the United States. If the importer is found liable for infringement, the court can award damages to the patent owner and/or enjoin importation of the product manufactured using the patented process. 35 U.S.C. §§ 283-284. The patent owner can additionally institute an exclusion action under 19 U.S.C. § 1337(a)(1)(B)(ii) at the U.S. International Trade Commission.
A success by the patent owner at the ITC can result in an exclusion order that blocks importation of the product made by the infringing process. Foreign manufacturers who import the product into the United States should be particularly aware of the potential for liability under each of these provisions. 35 U.S.C. § 271(g) provides: Whoever without authority imports into the United States or offers to sell, sells, or uses within the United States a product which is made by a process patented in the United States shall be liable as an infringer, if the importation, offer to sell, sale, or use of the product occurs during the term of such process patent. As you can see the federal statues are very clear that product can most definitely infringe a method of manufacture patent. If you are involved in a dispute infringement of method of manufacture patent, call the Mark Terry, P.A. law firm for a no-cost evaluation of the dispute and an assessment of your rights.
Mark Terry and Derek Fahey are registered patent attorneys and Mark is a Board Certified Intellectually Property lawyer practicing patent, trademark and copyright lawyers in Fort Lauderdale, Miami, Naples, and The Palm Beaches.