IP professionals need to track and record amendments, arguments and prosecution estoppels that limit the scope of the patent, and substantiate existing rights in cases of infringement. CPA Global’s Jeff Maddox explains how CPA Global Claimkey can help ease the burden
For the uninitiated, the reliance on patent claims in US legislation appears to be a confusing and often convoluted method of protecting and enforcing patent rights. Not only is it a challenge to submit an adequately comprehensive – and accurate – claim to protect your device from infringement in the first place, it can also be a costly and time-consuming process to uphold the patent claim once the application has been filed.
Following a series of judicial rulings in the past 10 years, US rights holders must now prove infringement under the ‘doctrine of equivalents’; in other words, patent holders must prove that elements of the allegedly infringing device are ‘insubstantially’ different from those they disclosed in their patent claims. This may protect rights holders against competitors who make minor design changes to their patent; however, it only protects the device as described in the original claim, leaving patent rights holders with no method of preventing competitors from designing around the literal elements of the patent described in the claim.
The US courts attempted to resolve this problem by limiting the scope of equivalents through a doctrine called ‘prosecution history estoppel’. It gives added weight to the amendments, arguments and representations that an applicant makes to obtain and protect a patent. However, it also means that any statement made during infringement action that limits the scope of the patent is then binding – the applicant is ‘estopped’ (forbidden) from using the claim during litigation in the future.
Unsurprisingly, this has put IP practitioners under additional pressure when drafting initial claims and debating and recording amendments.
A helping hand
Accurate claim management can make all of the difference between smooth case management and damaging prosecution history estoppels; but, keeping on top of patent claims can be a costly and time-consuming process. That’s why one us-based attorney firm in the Twin cities asked CPA Global to help it improve its claim management in early 2005. CPA Global responded by launching the world’s first comprehensive claim-centric service, CPA Global Claimkey. Easily accessible online, this new service provides users with instant access to all of their claims, attorney and examiner remarks and cited references via one centralized database, allowing them to more accurately assess ongoing cases.
The ability to see prosecution history of claims in one location, and how art references have been used by both patent examiners and prosecution attorneys, is an exciting opportunity
Patent claim interpretation may still be a challenge, but at least with CPA Claimkey, attorneys can benefit from instant access to the information needed to make the right decision. ‘CPA Claimkey makes claims and the related prosecution instantly accessible, allowing for rapid review of ongoing file histories while prosecution is in progress,’ says Russel Slifer, chief patent counsel at micron Technology, which has been using the software for several months. ‘The ability to see prosecution history of claims in one location, and how art references have been used by both patent examiners and prosecution attorneys, is an exciting opportunity. CPA Claimkey not only improves quality, but also saves a lot of money and wasted effort.’
Five ways CPA Claimkey can help keep claims on track:
1. More time to make a difference
CPA Claimkey provides access to all the relevant information about patent cases under your supervision, reducing research time to a matter of minutes and freeing you up to concentrate on higher-value work.
2. Filing with focus
Never underestimate the power of an effective filing system. as the only comprehensive, claims-specific and fully searchable software tool, CPA Claimkey details how many patent claims you have pending or issued, the status of each claim and how many have been allowed, rejected more than once or limited by amendments.
3. Information at your fingertips
Patent claims cannot be tackled successfully in isolation. In order to guard against inconsistencies in your claims and arguments, instant access to strategic information is vital. by comparing pending and issued patent prosecution histories, as well as prior art references, CPA Claimkey can help you assess what other claims in us or international patent cases could potentially affect your portfolio.
4. No risk worth taking
No IP professional wants to be an unwitting accomplice in the issuance of patents with misinformed claims. To mitigate risk and minimise human error, CPA Claimkey provides tools to make informed judgements.
5. Theory into prosecution practice
When was the last time you evaluated your patent practices or compared cases to predict possible outcomes? CPA Claimkey can help you chart the pattern of rejections on your cases and the prosecution practices of others, and give you the knowledge to anticipate responses and offer clear direction.
For further information on how CPA Claimkey could help your business, visit www.cpaglobal.com or contact
This article first appeared in IP Review, issue 17