INTRODUCTION

Infringement analysis assesses if a product or process violates existing patents, helping avoid legal disputes. When earlier versions of a target product are prior art, they provide context that can weaken a patent’s validity or highlight differences. This article outlines a strategic approach for accurately analyzing infringement in these cases.

UNDERSTANDING THE PATENT

• Review Patent Claims: Identify and comprehend the specific claims of the patent that may be infringed.
• Analyze Patent Details: Study the patent background, description, and specifications to grasp the scope of protection.
• Interpret Claim Language: Understand the language and limitations of the claims to accurately assess potential infringement.

ANALYZING THE TARGET PRODUCT

• Review Product Versions: Examine both current and earlier versions of the target product.
• Identify Key Features: Focus on features and functionalities relevant to the patent claims.
• Assess Prior Art: Determine which elements from earlier versions constitute prior art and cannot infringe on the patent.
• Evaluate New Elements: Identify new features in the current version that could potentially infringe on the patent.
• Compare with Patent Claims: Check if the current product meets all limitations outlined in the patent claims.

PERFORMING SIDE-BY-SIDE COMPARISON

• Interpret Patent Claims: Understand the scope and meaning of each claim using intrinsic evidence like the patent specification and prosecution history.
• Compare Features: Align each claim’s elements with features from both earlier and current versions of the target product.
• Document Findings: Record similarities and differences between the patent claims and the product versions for detailed analysis.

IDENTIFYING NOVEL FEATURES

• Highlight Novel Elements: Focus on the unique features of the patented invention not present in earlier product versions.
• Differentiate Innovations: Determine how these novel features set the patented invention apart from the prior art and earlier versions.
• Assess Infringement Potential: If novel features are present in the current product but absent in earlier versions, they could indicate potential infringement.

DOCUMENTATION AND REPORTING

• Detail Patent Claims: Summarize patent claims and their construction.
• Document Prior Art: Include analysis of prior art and earlier product versions.
• Compare Versions: Record the comparative analysis of claims with earlier and current product versions.
• Assess Infringement: Conclude the potential for infringement based on the comparison.
• Highlight Novel Features: Identify and document novel features and their relevance.

CONCLUSION

Conducting infringement analysis with prior art involves a detailed understanding of both the patent and earlier product versions. By following the structured approach outlined, you can effectively assess potential infringement by the current product version and address challenges posed by prior art.

About Effectual Services

Effectual Services is an award-winning Intellectual Property (IP) management advisory & consulting firm offering IP intelligence to Fortune 500 companies, law firms, research institutes and universities, and venture capital firms/PE firms, globally.

Through research & intelligence we help our clients in taking critical business decisions backed with credible data sources, which in turn helps them achieve their organisational goals, foster innovation and achieve milestones within timelines while optimising costs.

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