Claim defines the scope of the patent. The other parts of the patent such as specification, title, abstract etc would be used to support the scope of the claim. However they would not be used to assess the infringement or invalidation of the claim. Hence, the claim is a crucial part in the patent as it defines the boundary of the patent. Claim chart/ mapping involves breaking of a claim into its constituent elements and comparison of each element of the claim with the third party’s process or technology or product in the case of infringement analysis. In case of invalidation, the claim elements are compared with the prior art(s).
One of the core services offered by Singhwal is claim charting, or claim mapping, which is also known widely as Invalidity Search, wherein one can invalidate the other’s claims for benefits-which may vary according to the situations. Patent claims are your first line of defense as they put the world on notice to the subject area and boundaries of your invention.
Claim charting is the art of finding a needle in a hay stack, and using the needle to either defend yourself from an infringement suit or filing an infringement suit against the other. When a competitor crosses those lines, just saying foul, or infringement isn’t going to stop them, you have to prove it.
Singhwal’s IP Analysts, take it up as a challenge to find out if there is any possible way, by the book, to prove the invalidation. And one of the prime and most effective way is to go for the claims, and prove it existed before, or at least was being claimed indirectly before.
Singhwal has found many scenarios where it has delivered its claim charts as one of its prime results, during primary infringement suits, Infringement Analysis, Freedom to operate (FTO) , Invalidity Analysis or Invalidity Searches and during Litigation Support sourcing.
As depicted above the ‘what’ and ‘when’ a claim chart is done, it is also equally important to know that claim mapping can be done by any party. First Party can be the one trying to find an infringer of his claims, second party can be the one trying to invalidate the accuser’s claims. And third party may be a genuine investor, or business prospect trying to figure out if there is any existing claims that may stop him/her to start a business at a specific location/region.
Claim Chart analysis is a tedious process, where it is not just important to find the exact claims that express the search target, these claims are called Explicit Disclosure. There are those claims that may not directly explain the search target but express the concepts or the implementation in such a way that the search target is hidden within it, these are called Implicit Disclosure. It doesn’t end here , if a thorough investigation is taking place where the plaintiff is sure that an infringement is taking its course or already has , there will be many things that may be taken itto consideration and charted or mapped against the claims, for example , the user manual, the feature descriptions report and the products final report that may talk directly or indirectly about the plaintiffs claims. All such things may be taken in place and used against the accused. For example Apple accused infringement against HTC two Patents and indirectly on every android devices, 2011.
The patentee uses this tool in order establish infringement of the claim against third party’s technology. Alternatively, a third party uses this tool to check the possibility non-infringement/ infringement option of their technology against the claim. Specifically, a third party evaluate the freedom to operate the technology against the patent claim in the specific geography. During the validity/ invalidity analysis of the patent claim, the prior art references are compared with the claim at issue to arrive at conclusion. Therefore, before the claim chart/ mapping study one must understand the purpose of the task.
In general, claim chart/ mapping is used in patent litigation, infringement analysis, claim construction process (it is called as Markman hearing in US), patent license and patent validity analysis.
Evidence of claim chart (EoU) is used to analyze the extent in which the accused infringer’s technology falls into the patent claim. There are two types of claim mapping/ chart is available in EoU. The first type is patent to product approach. In this approach the product, machine, apparatus, or process is compared with the claim elements in order to assess the infringement of the patent claim. In addition, this patent to product approach helps the applicant / patentee to evaluate that how many patent in their patent portfolio really cover their own product. Also, this is used during the prosecution of the patent application to compare the amended claim with their product thereby the claim related to the product will be prosecuted in order to get the claim granted. This helps the client to avoid cost and time associated with the prosecution of irrelevant claim.
The second type involves patent to patent approach. In this approach a patentee compares a claim of his patent with a claim of third party’s patent in order to find out the potential licensing opportunity or cross licensing opportunity.
Another approach is that patent to standard. In this approach, the patent claim is broken into its constituent element and compares those elements with the proposed technology thereby to understand if any granted patent covers the proposed technology; means if any standard essential patent covers the proposed common design/ technology.
As per All Elements Rule in US, the patentee has to prove that all the elements of the claim are present in the accused product or technology. In addition, this All Elements Rule is used by the examiner/ applicant to assess that if all the elements of the claim are present in the prior art. During the invalidation analysis of claim, all the elements of the claim is compared with the prior art(s). Therefore, the claim chart/ mapping is helpful to assess the likelihood of infringement and invalidity of the patent claim.
During the evidence of use analysis, the product available in the market, advertisement, or the product being ready for commercialisation can be considered for comparison with the claim elements. It should be noted that any prototype product or the product under development should not be considered for evidence of use claim chart and should not initiate a patent lawsuit/ infringement action based on the prototype product. This is because, the infringer or a third party might changed the prototype product by either excluding or including the claim element in the final product. Therefore, updated brochure of the product or the real product has t be compared with the patent claim as element by element basis.
Usually the claim mapping/ chart is prepared in a tabular or graphical format. The left column of the table contains independent claim which is segregated into its constituent element. The right column contains the features of the product or the prior arts as the case may be. Based on case by case, it may be required to include independent claim also in the table or chart.
In the case of infringement analysis using the patent to product approach, once the claim is copied into the table and formatted into element by element, the feature of the product are compared. If all the elements of the claim are matching with the product features then it is considered as infringement. If, any one of the claim elements is missing in the product then it is not considered infringement under direct infringement. The process is similar in the case of invalidation. The prior art disclosure is compared with the claim elements. If all the elements of the claim are matching with the prior art disclosure then the claim is invalid under anticipation and/ or obviousness. In case, any of the elements is not present in the prior art then the claim is not invalid under anticipation. Hence, other invalidity grounds such as obviousness must be considered for validity analysis.
Ideally, all the features of the product must be literally matched with the respective elements of the claim. It may be noted that the product feature may not be same as of the claim element. However, it is recommended to mention the closest feature of the product against the particular element of the claim. As mentioned above, the product brochure, product guide and the information available in the infringer’s website etc can also be considered for claim mapping.
In order to avoid any confusion in the report, it is recommended to include comments or analysis in the claim chart/ mapping. The comments/ analysis must be kept separately.
During the infringement analysis using claim mapping, the product may not exactly contains the claimed elements. Hence, it is necessary to review the closest feature of the product thereby to establish infringement under doctrine of equivalents. In addition to direct infringement, one has to always keep in mind that there is a possibility that infringement may happen under indirect infringement such as induced infringement and contributory infringement.
An important rule to follow in the claim mapping process is All Elements requirements. All the elements in the claim must be addressed and shown to be matches with the product and/ or its features thereby to conclude whether infringement is happened or not. It should be noted that each and every word or sentence in the claim are important in the claim mapping analysis and hence need to be addressed.
The claim chart also used by patent prosecutor during the prosecution of the patent application in order to convince the examiner easily. Here the prior art disclosure cited by the examiner and the claim are compared element by element basis to conclude that the prior art does not disclose each and every limitations or elements of the claim and hence patentable over the cited references.
At the time of license of a patent, the claim chart helps the patentee to easily establish the fact that the third party’s product is infringing the claim. The features of the product are matching with all the elements of the claim. Similarly at the time of cross licensing the patent, the party can use the claim chart to show the fact it is necessary to cross license the patents as neither party can practice the invention without infringing other’s patent.
Also, the claim chart is used to maintain patent infringement claim out of the court. Based on claim chart the party can make their argument for better negotiation thereby to avoid lengthy trial and high cost associated with the litigation. A well prepared claim chart makes high impact in the litigation to decide the case.
Below is a model claim chart for easy understanding and knowledge purpose.
The claim chart compares the claimed invention against the prior art thereby to concludethe validity of the claim at the time of invalidity contest.
| Claimed invention | Prior art Disclosure | Comments |
|---|---|---|
| Claim 1: A process for preparation of chemical compound of formula (X) comprising the steps of | Preparation of compound of formula (X) | The claimed element is present in the prior art. |
| Reacting the compound “A” and “B” in alcohol solvent | Reaction of “A” and “B” in water | This element of the invention is not present or different from the prior art. By reviewing the entire prior art document it is clearly mentioned that only water is used in this step of the process. There is no alternate solvent apart from water is described in the prior art. |
| Addition of non-polar solvent | Addition of ester solvent | This claimed element is present. The ester solvent disclosed in the prior art is a non-polar solvent. |
| Treating the aqueous phase with activated carbon | Carbon treatment | This element is present. Prior art process also involves carbon treatment. |
| Filtering the aqueous solution | Filtering the solution | This element present in the prior art. |
| Isolation by precipitation at the temperature range of 1-5°C. | Isolation by evaporation | This element is present. The prior art generically discloses that isolation f compound “X” also can be carried out by evaporation method, in addition to precipitation method. |
In view of the above claim chart, the claimed invention is valid. The prior art does not disclose one of the claimed element. As per All Elements Rule, one of the element of the claim is missing in the prior art. The element which is missing is not obvious to the person skilled in the art and involves inventive step. Hence, the claim is valid in view of the cited prior art and infringed by a third party. It should be noted that the common portion of the claim chart is important. This is because, in most of the cases the claimed element may not be explicitly disclosed in the prior art and hence the generic disclosure in the prior art must be mentioned and highlighted that the claimed element is present in the prior art.
Singhwal, follows a procedure where it combines the Claim Chart or Claim Mapping in Invalidity Searches, FTOs (Freedom to Operate), Infringement Analysis, using both the implicit and explicit disclosures. Hence providing thorough suggestions or guidance to the clients depending on their scenarios and the kind of party they are as to what should be their strategic next step or next action.
Experts at Singhwal are proficient in the preparation of claim chart/mapping. We have multi domain experts who closely work with the client to understand the purpose of the claim chart. Based on the purpose or requirement, our claim chart contains patent to product comparison or patent to patent comparison. We advice our clients based on the claim chart the way forward such as filing a patent infringement lawsuit, licensing, invalidation, cross licensing etc.
Our experts carefully compare all the elements of the claim with the product features or prior art or third party’s patent claim as the case may be. The patent attorney/ experts at Singhwal give importance to each word and phrase of the claim at the time of mapping against the product at issue or the prior arts available. We also assist the client during the prosecution of a patent application by providing a claim chart wherein the invention and the prior art are compared in order to show patentability of the claimed invention. The claim charts which we prepared used by our client during the litigation in order to prove infringement of a patent claim. At the same time our claim mapping also used by our client to show invalidation/ non- infringement of the claim at issue during the patent litigation process.