Patent Claims Analysis
engineer or other layman reads patent claims for the first time, they often appear to be
almost unintelligible. Patent claims are full of terms like "means" this, and "said"
that "coupled" to the "said" other thing. What does this all mean? Why are patents written this
does anyone make sense out of all this?
The intent of the language of a patent claim is to define the
essence of an invention in such a way as to remove ambiguity about
what the inventor is claiming that he or she has invented. (Well ...
that is the intent, anyway. If the claim language really did remove
ambiguity, there would be no need for Markman hearings and court
construction of claim terms as a matter of law). The reason that patent claims are sometimes difficult for a lay
person to understand is that they are written using special patent claim lingo and special patent claim grammar. For example, the word "comprising" has a specific meaning in patent claims. The word "said" must refer to something already introduced in the claim. Each "said" term must have an "antecedent basis".
Patent claims drafting is the patent attorney's
art. Patent claims are the most important part of the patent because
they are the measuring stick the court uses to decide whether someone
is infringing a patent. Patent claims analysis is the process of applying the measuring stick of patent claims to a potential
infringer's device, process, method, or system. To apply the measuring stick
properly, it is incumbent upon the expert to understand not only the technology involved, but also claim language and
construction, and at least a few of the legal concepts that patent attorneys take for granted. How many inexperienced expert witnesses have been trapped during cross-examination into espousing a legally incorrect view of what one of ordinary skill in the art is, or how one properly applies the doctrine of equivalents! The best technical experts in Intellectual Property (IP) cases will understand these important legal concepts as well as the technical field of the invention.
experience in performing patent claims analysis. I have done it for patent law
firms, and directly for clients who want to investigate whether they
should seek revenue or royalties through a technology
licensing agreement. I also have experience testifying in IP cases both by deposition and in jury trials.