DISTINCTION BETWEEN A METHOD/PROCESS PATENT AND A PRODUCT PATENT

05/01/2001

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On 21 March 2001, IPO issued a letter in re-sponse to the inquiry made by Taiwan Watch & Clock Industrial Association with respect to the distinction between a method/process patent and a product patent. The IPO's response is as fol-lows:

For a method/process patent, its owner may exclude others from committing any of the following four kinds of activities if without the patent owner's consent:

1.to use the patented method/process;

2.to use products directly manufactured based on the patented method/process;

3.to sell products directly manufactured based on the patented method/process; and

4.to import products directly manufactured based on the patented method/process.

In case of a patent infringement suit, if the shape, structure or construction of products directly manufactured based on the patented method/process is not publicly known and the patentee alleges that the defendant's products are manufactured directly based on the pat-ented method/process, in principle, the de-fendant must bear the burden in proving that the products in question are manufactured based on another method/process and that there is no improper use of the patented method. On the contrary, if the shape, struc-ture or construction of such products is pub-licly known, the patentee must bear the burden in proving the fact that the defendant has used the patented method/process.

For a product patent, its owner may exclude others from committing any of the following four kinds of activities if without the patent owner's consent:

1.to manufacture the product protected by the patent;

2.to use the product protected by the patent, including using the product as a single product or using the product as a part of another article;

3.to sell the product protected by the patent or another article in which the product is used as a part; and

4.to import the product protected by the patent or another article in which the product is used as a part.

In case of a patent infringement suit, in prin-ciple, the plaintiff (i.e., the patentee or his ex-clusive licensee) should bear the burden in proving that the concerned product is sub-stantially same as the claim scope of the product patent.