A patent claim construction is the foundation for any infringement case, and if you do not eloquently explain what you are trying to protect, that foundation will crumble. You might not prevail in the infringement analysis because there can be no analysis without a credibly constructed patent claim.
To prove a company or person is infringing on your patent you must provide a patent claim that explains what you invented, how it is used, and its makeup. Following this, legal teams for both parties will conduct an infringement analysis. This analysis, and the one in patent court before judges or juries, focuses on the written claim rather than setting two products side by side and trying to determine if they are the same. That is why claim construction is crucial, and a poorly written claim will likely threaten the outcome.
Under the Patent Act, when you register your idea with the U.S. Patent and Trademark Office (USPTO), it must include a claim. This claim must describe the inventor’s idea, what they created, how it is used, and for what purpose, and it must be written in language easily understood by the average person. This is especially important, since technological inventions over the past few decades have put a strain on Patent Officers who are exposed to new terms and ways of doing things that never existed before.
If the claim is written too broadly, it will not be distinguishable from other inventions, and if it is too narrow, small changes could amount to a different invention entirely.
Take, for example, the 2015 case of Teva Pharmaceuticals USA vs. Sandoz Inc. Teva’s patent claim for a multiple sclerosis drug discussed an active ingredient with a specific molecular weight but did not discuss how the company calculated the molecular weight or determined the active ingredient. This made the patent claim construction so broad that other companies were able to replicate the drug.
Writers generally break claims construction into three parts. The preamble discusses the type of invention being patented, the transition lists what the invention is comprised of, and the limitations further identify the invention.
A well-construct patent claim dissuades patent trolls from accusing you of infringing on their patent when they have no intention of producing a product, but instead have fine-tuned your claim and registered it as their own. Filing infringement actions and demanding licensing fees is how they make money and, although it is not illegal, it has cost many businesses a lot to settle or litigate these claims.
These patent sharks also stifle competition. They can buy patents from bankruptcy auctions and then accuse competitors of infringement on the recently acquired patents. If you are the target for infringement and your patent is not constructed as well as the troll’s, you could lose the right to produce your company’s product.
These claims are prevalent in the United States because patent trolls may not face any consequences for bringing a frivolous lawsuit. Many experts believe that if trolls who lose a case are required to pay the attorney’s fees of the party they are accusing (as happens in Europe), the number of trolls would diminish.
The best way to ensure that your patent claims construction will satisfy the USPTO examiner is to consult with an intellectual property attorney who has filed many of these claims and understands how to draft them. Your invention is crucial to your business, and if your claim is vague, you will have to fend off infringers and trolls. Call Lomnitzer Law today so we can talk about your invention and properly protect it.
