Claim charting
In the world of Intellectual Property, patent claim charting acts as a bridge between the technical and legal domains. It requires precision, technical understanding, and legal acumen.
What is claim charting?
Claim charting, also known as claim mapping, is a technique of systematic and visual comparison of the claims of a patent against the elements or features, or functional aspects of a product, service, or technology of the challenged product or process.
Importance of claim charting
A claim chart helps us to identify whether a product infringes another patent’s claims or not. An effective claim charting plays a crucial role in Patent Infringement study, Patent Prosecution and portfolio management, Strategic decision-making, Competitive Positioning, Design-around, Due diligence during mergers and acquisitions or patent portfolio sales, Patent Valuation & monetization, Patent Invalidity Analysis, Prior Art Analysis, Patent Enforcement, Patent litigations, Strategic licensing and negotiations, including damages calculations and royalty determinations.
Patent infringement analysis is the procedure for determining if someone is utilizing, making, selling, marketing, or providing a good or service that is protected by a patent owned by another person without that person’s consent.
Freedom to Operate entails determining whether you can produce, utilize, or market your idea without violating the patent rights of others.
Due diligence means conducting research prior to making a significant choice, particularly when purchasing, investing, or negotiating.
Patent valuation determines the economic worth and commercial potential of the patent.
Patent Invalidity Analysis is the process of determining whether a granted patent is legitimate by identifying prior art that could invalidate the patent’s claims.
Prior art analysis is the process of searching and examining for existing information (like patents, nonpatent literature, articles) to determine whether any invention is truly novel and nonobvious.
Patent Enforcement entails ensuring that no one produces, utilizes, or sells your patented invention without your consent.
Key Steps required for the preparation of an effective claim charting are given below: –
1. Understanding Patent Claims:
Understanding patent claims for an effective claim charting involves the interpretation of the language of claims, considering the patent specification, prosecution history, and accurately determining the scope of the protection.
The patent’s language is a crucial factor to take into account while assessing patent claims.
Both independent claims, dependent claims, and complete specifications should be studied in detail.
Independent Claims: Independent claims define the broadest scope of the patent and must be mapped against the challenged product or process first.
Dependent Claims: Dependent claims add specific details to narrow the interpretation of the original (referenced) claim.
Jepson Claims: Jepson Claims refer to a specific category of patent claims that distinguishes between the new and improved portion of an invention and the portion that is already known.
Markush Claims: A Markush claim refers to a specific category of patent claims when several related chemical compounds or processes are protected under a single patent.
Omnibus Claims: Omnibus claims are patent claims that use the description or figures of the patent document to explain the invention rather than providing a detailed description of it.
Product claims: Product claims are claims made by a producer on their goods that are frequently utilized in advertising to emphasize characteristics, advantages, or functionality.
Product-by-process: Product-by-process are patent claims that define a product in terms of the process or method used to make it, rather than just describing the product’s structure or features.
Swiss-type claim: Swiss-type claim is used to protect a well-known medication’s innovative use in a new medical context.
Complete Specification: The specification (description and drawings) provides context for understanding the technical scope of the claims. Understanding the embodiments of the specification can help clarify the intended use of the claimed technology.
2. Conducting a comprehensive Technical Analysis of the challenged Product Patent /Process Patent or challenged technology:
Conducting a comprehensive technical analysis of the challenged Product Patent/Process Patent or challenged technology of an effective claim charting involves understanding and identifying the features and functional aspects of the challenged product or process.
3. Claim Charting or Mapping claim features of the challenged Product patent or Process Patent :
Charting or Mapping claim features of the challenged Product Patent or Process Patent involves thorough evaluation of each claim element about the relevant functional characteristics or attributes of the alleged method or product. If the challenged product patent or challenged Process Patent does the same function as the patent, then equivalents are considered rather than merely searching for only exact matches.
Moreover, while performing claim charting or claim mapping, it is ensured that claim charts are easily understandable, especially for non-technical stakeholders such as attorneys, judges.
4. Performing a detailed analysis and providing supporting evidence:
Performing a detailed analysis and providing supporting evidence involves demonstrating the relationship between claim elements and product features by performing a diagrammatic and visual representation. It also involves providing supporting evidence, expert opinions, or other evidence to support the claim chart’s findings. Direct and clear evidence is preferred for providing supporting evidence while analysing challenged product patents or process patents.
5. Review of the claim chart:
Reviewing and Revisions of the claim chart are essential to ensure accuracy, legal soundness, consistency, and comprehensiveness.
6. Documentation and Organization:
Documentation and organization involve maintaining detailed records of the claim charting process, including all evidence and analysis.
Conclusion
Finally, after claim charting conclusion is drawn, which states whether all claim elements are satisfied by the challenged product or process or not.
In conclusion, we can say that the quality of the claim chart plays a crucial role or toolset in deciding the success of Patent Infringement analysis, Freedom to operate, Due diligence, Patent invalidity Analysis, Prior Art Analysis, Patent Enforcement, Patent litigations studies.
At R.K. Dewan & Co., we believe that your ideas deserve the strongest protection, not just in the marketplace, but in the legal landscape as well. With over 83 years of legacy in Intellectual Property (IP) law, we offer end-to-end IP solutions tailored to support innovators, startups, growing businesses, and multinational corporations alike. Our team of experienced patent attorneys, technical experts, and legal professionals at R.K. Dewan & Co. is here to assist you at every stage of your IP journey.
- Dewan & Co. provide services in various technical domains such as Chemicals: Mainly Polymers, Organic Chemistry, Paints, Coatings, Petrochemicals, Cosmetics, Catalyst Systems, Agrochemicals, Specialty Chemicals, and Materials Science, Life Sciences mainly Pharmaceuticals, Medicine, Medical Equipment, Biotechnology, Biochemistry, Medical Devices, Biologics, Alternative Medicine, Vaccines, Nutraceuticals, and Supplements, Engineering Mainly Information Technology, Civil Engineering, Architecture, Electronics, Telecommunication, Aeronautical Engineering, Defence, Electrical, Power, Transmission, Process Equipment, Alternative Energy, Industrial and Chemical Engineering, Automotive, Mechanical, Complex Tools, Machinery, Textile Engineering, Metallurgy, and Packaging Technology, Computer-Implemented Inventions, Nanotechnology, Robotics and Artificial Intelligence and Internet of Things, Inter-Disciplinary Technologies.
We offer comprehensive infringement analysis to help in determining the risk of infringing third-party patents before launching your product/process.
We also craft Patent Specifications that clearly define your invention, ensuring the strongest protection. Our FTO searches provide you with a clear pathway for product/process commercialization, while our patentability searches determine the novelty and inventive step of your invention before filing.
We are also specialized in patent landscaping and white space analysis to help identify R&D gaps, monitor emerging trends, and anticipate competitive threats. In addition, we provide trademark search and registration services to preserve your brand identity across markets, and copyright protection for your creative works, software, designs, and more. Should disputes arise, our team offers strong support in IP litigation and IP enforcement, including infringement and oppositions. We also deliver expert IP portfolio management, giving you strategic guidance to manage and monetize your IP assets effectively. Whether you are launching a new product/process, entering a new market, or seeking to better understand your position in the IP landscape, R.K. Dewan & Co. is your trusted partner every step of the way.
For more information or any services related to claim charting, please feel free to contact https://www.rkdewan.com/