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On the Use of Experts for Patent Enforcement and Defense
As we know, patent attorneys are experts in IP and are also engineers or applied scientists/mathematicians. While patent attorneys are generally very knowledgeable about law and particularly patent law, they tend to vary in their technical abilities or the time they can devote to working in their technical field.
To augment the capabilities of an IP centered legal team, it often makes sense to complement the team with a technical expert. In an ideal world, one would seek a technical expert who is experienced in patent law, but is first and foremost a technical expert. With such an asset, one could give commands like: “prepare an infringement claim chart,” “do a 112(6) analysis of the claims and outline our options for defense,” “search the client’s portfolio and the target’s web site and identify potential reads,” “evaluate this computer code and develop a Powerpoint presentation showing where each of the claim elements are practiced” or “search for 102B references, select the best and write up an invalidity claim chart.” If the expert is also a patent agent, other commands like: “evaluate this product information (or standard, or software listing), and email a proposed set of 112-supported claims to the team.”
As can be seen from the above, the right technical expert can make a patent attorney more agile and effective. The relationship often works best when the technical expert understands the legal issues involved and has done this type of work before. For example, while the patent attorney tends to his work load, the technical expert can be aiding in any of the following ways:
- Searching a target company’s web site and evaluating its product literature
- Researching international standards to see which claims of a clients portfolio read on a standard
- Mapping a portfolio of patent claims onto a target company’s product literature
- Evaluating detailed information that came up in discovery and mapping one or more claims onto the information
- Reading software code listings and showing the software is practicing a claim
- Performing document review on boxes of technical documents received in discovery to look for infringing materials
- Searching for prior art to invalidate a patent
- Identifying and/or researching product details and writing new supported claims to read on the device
- Evaluating a letter alleging infringement and writing a non-infringement claim chart to show why there is no infringement
- Writing claim charts for claim construction analysis, infringement analysis, validity analysis, and invalidity analysis
- Preparing PowerPoint presentations with arrows indicating where in a target company’s product literature each of the claim elements are practiced
- In litigation, performing detailed technical research, writing expert reports, and testifying
- Providing a range of technical information, research and advice to help the team understand the technical issues and to thereby guide strategy
As can be seen from the above, an IP-attuned technical expert can act as a valuable assistant to a patent attorney. The technical expert is best used to address the more technical problems, and to then work with the attorney to put together the best legal approach to succeeding at the project at hand.
- Eric M. Dowling, Ph.D.
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