(Invited) The Importance of Patent Claim Language on the Path from Invention to Product

Patents often offer significant competitive advantage for inventions on the path from discovery to product. Specifically, the inventors/owners of a patent are given the right to prevent other parties from making, using or selling the subject invention. The claims of the patent define the scope of competitive advantage for the subject invention. Regarding patents,[1] “...the name of the game is the claim.” The wording of claims has been called,[2] “...one of the most bizarre sentence structures in the English language.” And, the courts have noted that,[3] “...the nature of language makes it impossible to capture the essence of a thing[invention] in a patent application[claim].” Consequently, electrochemical scientists, engineers and technologists involved in transitioning discoveries to product are well advised to understand the meaning and scope of the claims in their patented inventions. In this presentation, we will compare and contrast claims as analogous to real estate property. We will provide a brief history of U.S. patent law in terms of the requirements of claims in a patent application. We will review claim construction, i.e., establishing the meaning and scope of an invention, beginning with the inventor internal Invention Disclosure, the preparation of the patent application with a patent attorney, and the examination of the patent application by the U.S. Patent & Trademark Office. Once the patent application is allowed and issues as a patent, the meaning and scope of the claim is settled, unless the patent becomes the subject of a patent validity or infringement challenge. During patent infringement challenges, the meaning and scope of the patent claims are determined in order to decide if the patent is valid and/or if infringement has occurred. We will review the rationale and evolution of claim construction from a factual inquiry by juries to a matter of law determined by the courts. We will present the hierarchy of factors used by the courts during claim construction. Finally, we will conclude the presentation with a brief review of claim construction during a lithium battery infringement case.[4] We conclude the inventor can play a significant role in claim construction with the initial preparation of the internal Invention Disclosure, the preparation of the patent application with a patent professional, and during the examination of the patent application by the U.S. Patent & Trademark Office. Acknowledgements: The financial support of Faraday Technology, Inc. corporate R&D is gratefully acknowledged. References: Judge Giles S. Rich, “The Extent of the Protection and Interpretation of Claims-American Perspectives” Int’l Rev. Indus. Prop. & Copyright L., 21: 497-499 (1990). S. Jay Plager “Challenges for Intellectual Property Law in the Twenty-First Century: Indeterminacy and Other Problems” U. IL L. Rev. 69-81 (2001). Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002). The Board of Regents of the University of Texas System and Hydro-Quebec v A123 Systems, Inc., Black & Decker Corp., and Black & Decker (U.S.) Inc. U.S. District Court, Northern District of Texas, Dallas Division, Civil Action No. 3:06-CV-1655-B March 29, 2011.

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