How Patent Claims Make or Break Patents – Yours and Your Competitors’

If you've been an inventor on a patent or read a patent, you know how long and detailed the technical description (called the “specification”) in the patent can be, and how much work goes into writing it.  As important as the specification is, it is the patent claims that define the legal protection provided by the patent.

The claims describe what the patent's owner can block competitors from doing.  That is why Judge Giles Rich famously said, “The name of the game is the claim.”  If you own a patent and want the ability to use that patent to stop your competitors from copying your invention, or you want a potential acquirer to conclude that they need to buy your company and its patents to succeed in the marketplace, then the claims of your patents must cover the technology that those competitors or that acquirer want to make and sell.  The most detailed and technically accurate patent specification in the world will not provide you with any benefit if the claims do not cover your invention accurately and broadly enough.

Patent claims are interpreted using legal principles that differ in many ways from those that apply to normal English.  As a result, it is risky for anyone who is not an experienced patent attorney to attempt to write patent claims that will cover the invention as intended.  Patent claims written by engineers often are very accurate from a technical perspective, but so narrow from a legal perspective that they are essentially worthless because competitors can easily make minor changes to the way they implement the invention and thereby avoid infringing the patent claims while still copying the inventive features of the invention.  Sometimes a patent claim that provides significant legal protection to an invention may barely resemble the invention from the perspective of a layperson.

The claims are equally important to understand when you are evaluating your competitors' patents.  Clients often come to us with concerns that their competitors' patents broadly cover widely-used technology because the specifications of those patents describe such technology.  Remember, however, that the specification of a patent does not indicate what legal rights the owner of the patent has in the invention.  Patent specifications often describe old technology that is not owned by the patent's owner.  Instead, the patent's owner only has legal rights in what is described by the patent's claims, which is often much more limited than what is described in the patent's specification.

Therefore, if you are concerned about what is (and what is not) covered by one of your competitor's patents, it is important that you understand what is (and what is not) covered by the patents' claims, and only an experienced patent attorney should be relied on to interpret those claims, because the legal meaning of those claims may be quite different from their meaning according to the normal rules of English.  Furthermore, if you have knowledge of a competitor's patent and are concerned that you might infringe that patent, receiving an opinion from a patent attorney that you do not infringe can help you to avoid being found liable for “willful infringement”–resulting in a tripling of the damages against you–if your competitor successfully sues you for infringement.

Please contact us if you need help obtaining patent protection, understanding the claims in your own patents, or understanding the claims in your competitors' patents.




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