Process Patents: Are They Worth It?

What protection does a process patent provide? And how easy are they to enforce?

TODAY, plastics are everywhere, but 120 years ago the realisation of a useable plastic product had been frustratingly illusive. The potential of phenol-formaldahyde resins was well known, but scientists had been unable to make anything other than a hard, insoluble, infusible mass. That was, until Baekeland developed a new process to create the first synthetic plastic.

Baekeland obtained his most significant patent for this revolutionary process in 1907 (US 942,699) and launched the plastics industry which today generates approximately £23.5bn/y in the UK alone. Through his patent, Baekeland was able to establish a competitive advantage and in 1927, when his patents began to expire, his plastic products faced significant competition, showing just how commercially valuable his process patents had been for the 20 years prior.

Over 100 years ago, Baekeland showed that process patents were commercially useful. However, what protection do they actually confer? Are they worth filing for inventions that might not be as pioneering as Baekeland’s? How easy are they to enforce against a competitor you suspect may be using your protected process?

What is a process patent?

A patent contains "claims" that define the scope of protection. There are different types of claims, which can be broadly divided into two main categories: product claims and process claims. Product claims protect "things", whereas process claims protect "ways of doing things".  A product claim is the strongest, since it offers protection against any unauthorised party making (irrespective of the method used), using, selling, offering to sell, importing, or keeping the patented product. (Note that the UK Patents Act (s60) refers to the "disposal" of products, which is broader than merely selling, and can include acts such as giving a product away in a sample.)

A process claim might read: "A process for preparing polymer X comprising steps A, B, and C’. Process claims are sometimes considered to be inferior to product claims, as process claims notoriously suffer from enforcement issues. After all, how do you prove what a competitor is doing behind closed doors in its chemical plant? How, for example, would you prove that the competitor is preparing polymer X by using steps A, B, and C?

Process claims can also be separated into two sub-categories: a process that makes a new product, and a new process that makes a known product. If the product is new, you would likely seek protection for the product itself, as well as protection for the process. However, many chemical engineering inventions relate to improved processes for making known products.

What protection does a process patent offer?

In the UK, process patents offer two-fold protection: protection for the process itself, and protection for the products obtained directly from the process. A person infringes a process patent if they use the patented process (or, in some cases, offer the process for use), or if they sell, offer to sell, use, import, or keep any product obtained directly by the process.  A product to which a patented process has been applied is also protected.

Protection for products obtained directly from a process are of most use when there is no claim to the product as such, and when the process is carried out abroad and the product is imported into the UK. However, to what extent is a product "directly" obtained by a process? How much modification is allowed?

In the above claim reading "A process for producing polymer X (…)", it would be expected that "polymer X" would be the direct product of the process. Typically, to determine whether a product is a "direct" product, it is necessary to consider whether the product has lost its identity or not. If polymer X has been turned into a cable sheath without any chemical modifications, then the identity of polymer X is still present. If, however, further steps have been applied such as cross-linking polymer X with a different polymer, the identity of the product would be materially affected and infringement would be difficult to argue.

(Note that patents are territorial, and different countries have different, but often similar, infringement laws. Everything discussed here relates to the UK).

How hard is it to prove infringement of process claims?

With a "product" patent, it is (comparatively) easy to obtain information about a competitor’s potentially infringing activities – one could simply buy the competitor’s product, analyse it, and see whether it infringes the patent. But what about process patents?

The challenge is often in getting sufficient details of your competitor’s process to demonstrate infringement. As a result, it can seem daunting to enforce a process patent, especially if the process is carried out abroad and the product imported into the UK. Once you know the details of your competitor’s process, however, process claims are arguably just as enforceable as product claims. Details of competitors’ processes often crystallise during commercial/licensing negotiations, or might be obvious from their own patents or marketing literature.

In patent law, the burden of proof for infringement is almost always on the patent holder. However, this seemingly daunting challenge for process patents is somewhat mitigated when the process creates a new product. In that case, it us up to the alleged infringer to prove that they are not using the protected process.  

Is it worth getting patent protection for a process?

Why not just keep the process secret? After all, Coca-Cola famously keeps its manufacturing recipe a trade secret and can potentially do so indefinitely. In contrast, a patent has a maximum lifetime of 20 years. However, with trade secrets there is the obvious risk of the secret leaking out and trade secrets don’t protect against independent creation like patents (ie it is tough luck on someone who independently "invents" the same process as you, but you filed a patent application first).

Irrespective of the enforcement issues of process claims, patents have many potential commercial advantages.  They can offer additional income streams, act as deterrents, and serve as powerful negotiating tools. Only a small proportion of patents are actually litigated in court. The value of patents is more often seen in dealings between companies.  

Patents have many potential commercial advantages.  They can offer additional income streams, act as deterrents, and serve as powerful negotiating tools.

Instead of taking a suspected infringer to court, a patent holder’s first act would typically be to send them a copy of the granted patent (note, this should only be done after taking legal advice). Companies would not generally continue to knowingly infringe a process patent without taking further action, or at least as patent attorneys we would strongly advise against it! They might seek a licence to use the process (opening up revenue possibilities) and a mutually beneficial business relationship might ensue. For example, a patent owner might not have sufficient manufacturing facilities to satisfy the market demand and so licensing to a larger manufacturer might be attractive. A patent is also an asset that can be sold. Moreover, a well-drafted patent will provide a broader scope of protection than the specific process actually being used. This avoids trivial workarounds by competitors.

What relief can you get during civil proceedings?

If patent negotiations do not offer fruitful results (eg licences, agreements to stop using the process etc), a number of reliefs are available to a patent owner through the courts, for example damages, injunctions (to stop the infringer from carrying out the infringing process), or orders to deliver up or destroy the infringing products. In court proceedings, orders may also be obtained to inspect manufacturing facilities and establish whether an infringing process is being employed.

Summary

The enforcement of process patents is certainly more difficult than product patents because infringement is harder to prove. However, process patents remain powerful business tools that not only offer protection for the process itself, but also for products obtained directly from the process. Even though not all process inventions are as ground-breaking as Baekeland’s patents for the first synthetic plastic, companies that come up with genuine technological advancements in chemical engineering should consider patent protection to protect their business interests and bolster their market position.

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This article was written by Jonathan Bailey and Alexandra Tyson on behalf of The Chartered Institute of Patent Attorneys.