Patent Update: Escape Infringing a Patented Method of Manufacturing — Legally

Your competitor has a U.S. patent protecting a method of manufacturing, which prevents you from practicing that method in the U.S. But you (and your competitor) may be surprised to learn that does not completely prevent your company from using that same patented method to sell products in the U.S. — legally — and without a license.

Every patent has what are called “claims,” the part of the patent that defines what others are prohibited from making, using, and so forth. Some patents claim a product, and some patents claim a method of making or using a product. Method patents can provide a degree of protection for products that are so well known that they can no longer be patented as products (think bulk commodities, as opposed to a new electronic gadget). Method-of-manufacturing patents are commonly used in such cases. They protect a novel way of making a product, even an old product.

While a company cannot simply practice a method of manufacturing protected by a U.S. patent within the U.S. (that is patent infringement), there are opportunities to legally avoid patent infringement by manufacturing a product abroad and then importing it into the U.S. under certain scenarios.

Scenario 1: Intermediates and minor components. If your competitor’s patent claims a method to make an intermediate, a component, or something for use in completing...