Streamlines Claims Test/Claims Chart Development (06/05/04) from Mondaq

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United States: PatentCafe Streamlines Claims Test/Claims Chart Development
Web-based Claims Charting Breaks Long Tradition of Hand Comparison

06 May 2004
Article by Andy Gibbs
Not long after patent attorneys, R&D researchers or patent drafters being comparison of inventions or patents, the focus converges on the patent claims. The process of comparing claims is cumbersome, time consuming, and when relevant patents remain elusive to traditional Boolean search engines, frustrating. Nevertheless, claims comparison remains the critically important core to patentability searches, invalidity searches, infringement studies, and even in testing proposed claims prior to filing new applications.

Litigation: Infringement Analysis:

In instances of infringement litigation, the Rules of Practice often require the parties (Claimant, as well as Adverse Party) to submit a clear outline of the infringed claims of the patent. Of course, this applies to trial preparation as well as Markman hearings.

The Adverse Party’s Obligations typically include the serving on all parties an Adverse Party’s Claim Chart. The Adverse Party’s Claim Chart usually includes separately, with respect to each claim in Claimant’s Claim Chart, the identification of all items of prior art that anticipate the claim or render it obvious. For each item of prior art, a position must be made as to whether it anticipates the claim or renders it obvious. If a combination of prior art references makes a claim obvious, that combination must be identified.

The prior art must be identified as specifically as possible, including:

(a) prior art patents must be identified by their number, country of origin, and date of issue; and (b) identify where, specifically, within each item of prior art each element of the claim is found.

Assessing Patentability:

Patent searches result in a stack of prior art patents deemed to be relevant to the present invention. Thumbing through a stack of papers is an inefficient method of quickly assembling the most important prior art, especially when extracting the claims for comparison to the present invention are in paper form, making compilation in an opinion document requires re-typing.

Yet again, a digital means to evaluate and assemble comparative claims from a variety of patents would not only streamline the claims charting process, but in reality short-circuit the fatigue that creeps in after digesting the dozens of patents relevant to the present case.

Drafting New Patent Claims:

In some circles, Festo established a new standard of application writing – that is, draft a high volume of independent and dependent claims so that, in the event of disallowance of a particular claims as written, the claim can be deleted (rather than amended) and there will be another more appropriate claim in the set upon which to rely.

More appropriately, had the robust claims analysis tools been readily available, the proposed claims could be tested against all prior art and amended prior to application filing. The specification can then be amended as appropriately to support the amended claims.

First Web-Based Claims Charting System:

In all of the above instances, and more not specifically addressed, development of a Claims Chart is a reasonable and appropriate method of capturing and evaluating claims of one patent with many others.

PatentCafe’s Claims Charting system incorporates its advanced Semantic patent search tools that extract claims directly from the most relevant patent returned in the concept-based search results.

Input to the Claims Test / Claims Chart system can be a valid patent number, text of claims copied and pasted into the text box, or the full text of a proposed claims set for a new application.

Prior Art Claims are then generated by mining the ICO Global Patent Database using the company’s advanced Latent Semantic Analysis search technology. The more relevant patents (and claims) are presented at the top of the results set for immediate claims comparison to the baseline patent of set of patent claims.

The system then takes those claims and immediately builds a Claims Chart online, allowing the side-by-side comparison of claims from a Baseline Patent or proposed claims, against the claims of one or more patents of interest.

Output is in PDF format, creating a document that presents the claims of a pair of patents on opposing sides of the page. PDF claims Charts are created “on the fly”, creating Claims Charts in a mater of minutes. (sample:

Notes, comments and annotations, along with “copy and paste” text from any source are integrated into the claims chart document, appended to the end of the claims test document.

The claims Chart utility is included in PatentCafe’s Infringement Litigation Suite, and is available separately as a stand-alone solution for patent or claims drafters or patent researchers.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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