‘Fencing off’: Protecting market products under US patent law
A company manufacturing and selling a product typically deals with various counterparties including suppliers, contract manufacturers, integrators, distributors, customers, and reprocessing manufacturers (refurbishers).
Ensuring that the company can maintain control over its product throughout each stage of manufacturing and in the marketplace can be difficult. In the US, one way a company can maintain control over its product is through a carefully thought-out patent strategy designed to create advantageous positions against each counterparty.
Fence-off
Patents can be enforced against “whoever without authority makes, uses, offers to sell, or sells any patented invention” (35 U.S.C. § 271). A patent’s claims define the ‘patented invention’. Claims are the metes and bounds of the patented invention and are analogous to a fence around a parcel of land (ie, market for a product). Properly designing the fence requires consideration of who the fence should keep out—counterparties.
The main patent claim types are process claims and device claims (35 U.S.C. § 101). The type of claims one includes in a patent application should be based on the counterparty the company wants to keep out of the market or otherwise force to work with the company.
A process claim can cover a method of manufacturing a product or a method of using a product. A company may decide to contract with a manufacturer to make a product (or a product subcomponent) in order to achieve cost savings or because the company lacks resources to make the product itself.
During the manufacturing process the company may share know-how with the manufacturer. Obtaining a patent including a method of manufacturing claims can ensure that the manufacturer does not use that know-how to produce products for competitors.
