Is it patent infringement to import a product made with a patented process?

An inventor is entitled to a patent on an invention in the United States if the inventor can demonstrate that the invention meets the requirements set out in in United States Patent Law. Several different types of inventions are eligible for patent protection including a process, machine, manufacture, or composition of matter. To be granted a patent the inventor must file a patent application with the United States Patent and Trademark Office which demonstrates that the invention is new, useful and not obvious. If the United States Patent and Trademark Office grants the inventor’s patent application, then the inventor will be granted the exclusive right to make, use, sell and import the invention into the United States. If someone other than the owner of the patent attempts to exercise one of these exclusive rights, that can be considered patent infringement.

In the case of process patents, it is possible to claim products made using the patented process even if the products themselves cannot be patented. For instance, bricks cannot be patented, but if an inventor was able to get a patent on a new process to produce bricks, the inventor could claims bricks produced by the patented process. This is known as a product by process claim. Product by process claims allow an inventor to claim products, which themselves are not eligible for patent protection, if they are produced using the process claimed in the patent.

Patents are geographically restricted. The exclusive rights conferred by a patent in one country do not extend to other countries. A patent owner cannot do anything to stop infringing activity outside countries which have issued a patent. A United States patent will not help an inventor if a company in Thailand produces products using a patented process and the products are imported in Germany.

The question then becomes – is it patent infringement to import a product which was produced using a patented process into the United States? The answer is Yes, for two reasons.

First, if a patent on a process includes a product by process claim, importation of the product would violate 35 U.S.C. Section 271(a) which provides:

Whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent therefore, infringes the patent.

Second, if for some reason the inventor forgot to include a product by process claim in the patent, importation of a product of a patented process is covered by 35 U.S.C. Section 271(g) which provides:

Whoever without authority imports into the United States or offers to sell, sells, or uses within 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…. A product which is made by a patented process will, for purposes of this title, not be considered to be so made after – (1) it is materially changed by subsequent processes; or (2) it becomes a trivial and nonessential component of another product.

It is important to note that 271(g) has two exceptions which can excuse the importation of a product produced by a patented process. Those exceptions deserve a whole article on their own.

If you have questions or comments for the authors of this blog please email us at: admin@uspatentlaw.cn