How to Evaluate Patent Claims
The most important step in evaluating a patent claim is to determine whether it covers all aspects of the invention. The patent claims should adequately cover the inventive feature and sufficient elements around it to describe the invention in detail. Similarly, a claim must be supported by the description. The description must contain all the characteristics of the invention, and the claims must include those characteristics. Additionally, terms in the claims must be inferred from the description or defined there.
Points of novelty
Patentees may be challenged for a lack of novelty when they include a range of parameters in their claims. A range that is substantially different from prior art is novel. A recent case involving a process for clarifying water with an alkalinity of 50 ppm or less is clear proof of this. In the case of ClearValue Inc. v. Pearl River Polymers Inc., the patentee’s claims covered an alkalinity range between 50 and 150 ppm. However, the court found that these parameters were not novel.
The point of novelty test is used to distinguish conventional elements from unknown ones. Points of novelty may also be known as a point of departure from prior art. The point of novelty test is also used to determine whether a patentable element is new when compared to known elements. The concept is applied to patent-eligibility after dissecting the conventional parts. However, there are two main problems with this point-of-no-nothing approach.
The application should provide enabling information that will support the claims. The Federal circuit has applied the point of novelty approach to enablement in a case where the claims were supported by a prior art document. The case of Automotive Technologies International v. BMW North America Inc. (01-CV-71700, July 21, 2005) involved mechanical airbag sensors. The company argued that electronic sensors were known in the prior art, but the court noted that the application’s disclosure of mechanical airbag sensors was novel.
The scope of a patent claim may be limited in many ways. For example, an examiner may refuse to grant a patent if it fails to clearly define the invention. In such cases, the applicant’s statements are irrelevant, since they do not support the claims. In such cases, the applicant may choose to rewrite the claims in a different way to address the examiner’s concerns. Similarly, an applicant may keep an application pending for several years while closely monitoring the market.
While it is possible to grant a patent to a competitor who implements your invention, you must be sure that the claim scope is broad enough to protect the technology. Otherwise, you will risk wasting valuable time in the patent office. This is why it is important to know the scope of your patent claims and the financial returns that can be realized from exploitation. The commercial value of a patent depends on the ability of the innovating firm to exploit the invention and the extent of its scope.
Patents protect ideas or products that have been used before, as long as they meet a number of legal requirements. The applicant must be the first person to make the claimed invention, and he must have performed research and development on the subject matter. Besides, he or she must be the first to publish or use the claimed invention. However, this does not mean that a mere discovery is an invention. Neither can an idea be patented.
One of the most common ways to limit the scope of a patent is through continuation practice. The written description requirement is an example of how continuation applications can restrict the scope of a patent. In many cases, continuation applications are used to change patent claims, and some judges have argued that this is the proper role of a continuation application. If the patent is not wide enough, the applicant may not be able to rely on the doctrine of equivalents.
When evaluating a patent for infringement, you must first determine if the claimed invention actually infringes the patent. Many times, the drawings or specification are broader than the actual patent claim. This means that you may have to narrow the claims during the examination process. For example, a drawing may show the entire product, but the patentee may have changed the claims to exclude the product from their patented invention.
One way to limit the scope of an accused process or device is by applying the doctrine of equivalents, which imposes a lower standard on infringement than literal infringement. This doctrine requires a substantial similarity between the accused device or process and the claimed invention. The accused device or process cannot simply read on prior art, nor can it recapture a patentee’s costs. The prosecution history estoppel and prior art are also considered in evaluating the scope of the claimed invention.
Once you have determined whether your patented invention has been infringed, you must consider the potential remedies. You may seek a temporary or permanent injunction, as well as damages for the loss of profits that you suffered as a result of the infringement. Damages are not capped at a fixed amount, and if the technology is licensed, you cannot ask for less than a reasonable royalty. Moreover, if the alleged infringements have been involved in the creation or sale of the patented item, you may ask for damages up to treble that amount.
Patent infringement is a complicated subject. To get the best outcome for your case, you should first know the details of how the court will evaluate the infringement. There are two types of damages: actual damages and royalties. The actual damages that you’ll receive will depend on the specific products and the length of the patent. The costs of the litigation will also include the lawyer fees of the patent holder. These expenses can be substantial.
The complaint for patent infringement must provide notice to the accused infringer. This notice should be concise and clear. It doesn’t need to be full of detailed factual allegations. Moreover, you must make a plausible claim for relief. You should note that the term “probable” does not necessarily mean that the claim is true. Rather, the patent infringement complaint must make the claim more probable than facially plausible.
Often, the process of evaluating a patent claim involves assessing whether a claimed invention has been made known or is already known. For example, comic books and movies cannot serve as prior art because they do not provide enough information to support a patent suit. However, certain types of non-enabling prior art can be useful to show whether a claimed invention is obvious. This includes abandoned patent applications or provisional patent applications that were not converted to non-provisional applications.
Regardless of the reason for prior art, the effective date of the prior art must be at least one year before the patent application filing date. Prior art published one year earlier may also be relevant in determining if a claimed invention was already known. However, it is not uncommon for a publication to become prior art even after the patent owner files a patent application. This can lead to an overly broad scope of patent claims.
Various countries have different definitions of prior art. Some recognize oral disclosures as prior art. Others grant grace periods for inventors to publish before the filing date. In the United States, the prior art published during the grace period is not considered prior art under 35 US Code 102(b). Japan, on the other hand, gives an inventor six months to publish an earlier version of an invention. This period does not reduce the inventor’s novelty.
The most common ways in which prior art can be evaluated include: publication in an enabling document, publication in a journal, and public display. However, the audience of the publication is not relevant. The invention may have been described in a highly technical electrical engineer’s journal or in a junior high school textbook. The latter is considered prior art if it is known to the public before the filing date of the patent application.
As you can see, prior art can be a valuable tool for patent claim examination. When evaluating patent claims, examiners must evaluate whether the prior art relates to the claimed invention. This can help establish the validity and patentability of the claimed invention. When prior art is identified, it may help the patent applicant to avoid litigation. The patent owner may even offer a license for the invention. But the patent is only valuable if it is not obvious to competitors.