A patent claim is in a written form which explains what a patent applicant is trying to protect. Mostly, courts ask judges to read the claim instead of making a comparison between two finished products and analyze what the patent inventor was trying to make and decide whether the party can be granted patent rights or not. So, the construing of a patent claim is crucial to get a patent granted and to continue as a patent holder.
CHALLENGES TO PATENT CLAIM CONSTRUCTION
There are mainly three members, including two professionals who face challenges with patent claim construction:
a) Patent holder/ Patent inventor
b) Patent Attorney/ Patent Agent
CHALLENGE OF PRIOR ART/ NOVELTY
Prior art means that a particular product was already known to the public before the effective filing date of the one’s patent application. During litigation, a party may utilize prior art to reveal that the patent holder’s invention is not “novel”. It is a great challenge for a patent holder to have an idea of the entire relevant prior art before he/ she files a patent application. So, patent claims must be construed duly, after doing adequate Prior Art Search. If the patent holder construes the patent claim with inadequate prior art search, then he has to face challenges before judges/ juries when the judge/ jury starts determining the question on prior art and novelty.
While at the same time, another challenge is because of the inconsistency in the wording of Manuals/ Statutes. For instance, according to section 3(d) of the Patent Act, 1970 and according to Novartis v. Union of India, it was stated that the mere discovery of any new property of a known substance is not an invention, whereas even in the landmark case of, judgment was rendered by stating that mere discovery of any new property of a known substance is not an invention. Whereas, in the Patent Drafting Manual provided by WIPO, it was stated that novelty does not mean revolutionary and further states that even little things can be considered new. Here, one can observe an inconsistency in the meaning of the term “little things”. So, even the wording in Manuals and statutes sometimes creates challenges for patent holders.
CHALLENGE OF CONFIDENTIALITY
The significance of confidentiality while construing patent claims cannot be neglected. The fact is that yet an idea is not patented, as this step of patent claim construction is just before the last step of a grant of patent. Patent holders may get many doubts while construing a patent and they may get confused at this stage, which may make them take assistance from others by disclosing all about their patent product, which is not yet public. If the patent holder does not effectively preserve the confidentiality of his or her invention at this point of claim construction, he or she runs the risk of the invention being leaked to competitors who may obtain a patent before him or her.
A similar situation of disclosing confidential information happened in the case of Sionyx LLC v. Hamamatsu Photonics K.K., where the court found that in case the aforementioned patents are derived from confidential information supplied by the disclosing party, then the party who provides confidential information subsequently might be eligible to ownership. Actually, in this case, both the parties entered into a Non – Disclosure Agreement (NDA) for the joint development of a patent product, where the brief facts are that one party disclosed information about the product and another party developed the product without informing the same to the disclosing party. The court ruled in favour of disclosing the party, by basing the NDA. So, patent holders have to face this challenge, even though they have any doubts for clarification while construing.
CHALLENGE OF BROAD V. NARROW CLAIMS
Patent agents make an effort to construe patent claims as wide as possible so that they can include every feature of the invented product. Conversely, the patent examiner attempts to limit the claims to the actual invention rather than allowing wider claims which cover more than just what the patent holder initially invented. Therefore, even though broad claims are appealing to the applicant as they encompass wider items or circumstances, they are more challenging to secure and maintain a patent. Narrow claims in patent claim construction are actually specific to any particular invention in a product. Claim constructions with narrow claims are simple to obtain or enforce. They will, on the other hand, be less helpful as they permit other persons to easily enter the same market by inventing products with just slight changes to the product which was already patented.
So, the ideal scenario for claim construction is that the claims should be a mixture of broad and narrow claims, which is a major challenge for a patent holder. For instance, the use of “maybe” v. “is” or the “the invention may include” v. “is” is preferable.
In LG v. Mondis case, Mondis Technology Limited lodged a petition against LG, alleging that the latter was infringing on patent claims of their patented product. LG replied by asking that the asserted patent be reexamined. The majority of Mondis’ claims were overturned during the IPR procedure and only three of the 29 patent construction claims persisted. However, this was sufficient for Mondis to proceed with its infringement suit. Mondis couldn’t have predicted that those three specific claims would be the ones to survive. As a result, having a large number of claims enhances the likelihood of at least one valuable claim surviving. Of course, a patent examiner will not allow broad claims that cover more than what the inventor has invented actually. Hence, the patent attorney ought to concentrate more on broad claims that cover only the inventor’s inventions. At the same time, a few narrow claims should also be there as stated above, because sometimes, the patent gets rejected because of a lack of at least a few narrow claims. Patent agents should combat this challenge by including broad and narrow claims, to win a patent.
CHALLENGE OF IMPRECISION IN THE WORDS OF PATENT CLAIM
While construing a patent claim, the patent holder/ patent attorney should be cautious about the words when they are drafting the construction. It is on the patent inventors/ attorneys to make sure that the words in the claim mean exactly what the Patent inventor actually wants them to mean.
In Chef America v. Lamb Weston, facts are that the interpretation has to be made to the patent claim phrase “heating the resulting batter- coated dough to a temperature in the range of about 400° F. to 850° F.” Court observed that what ought to be there in the patent claim was “heat the oven to a temperature in the range of about 400° F. to 850° F.” Sadly, the patent holder had a worthless invention since what was mentioned actually needed is the interior temperature of the dough to achieve a temperature somewhere between 400° F. and 850° F. The output might resemble a charcoal briquette if the dough were really heated to between 400° F. and 850° F., as the patent claims specifically demanded, but that was not the Federal Circuit’s issue. Because the terms used had a clear and unmistakable meaning, and so a charcoal briquette was, regrettably, what was protected. This is the major challenge with which the patent holder is usually confronted.
In conclusion, there are critical challenges which are being faced by almost everyone who is involved in patent claims- Patent inventors, patent attorneys and judges. Patent inventor faces challenges with patent claim construction in the beginning level of construing patent claim i.e., he faces challenges with regard to prior art and confidentiality. Further, patent attorneys face challenges with patent claim construction mainly practically. He faces challenges with Broad v. Narrow claims, and in balancing obviousness and enablement. Further, both patent inventors and patent attorneys face challenges while dealing with the imprecision of words in patent claims and when there is a mischaracterization of facts/results. Lastly, the main challenge of choosing between thesis and antithesis in the adoption is being faced by the judges.
Author(s) Name: Chidige Sai Varnitha (Damodaram Sanjivayya National Law University (DSNLU), Visakhapatnam)
 ‘WIPO Patent Drafting Manual’ (WIPO, 2022) <https://www.wipo.int/edocs/pubdocs/en/wipo-pub-867-22-en-wipo-patent-drafting-manual.pdf> accessed 08 August 2022
 The Patents Act, 1970, s 3(d)
 Novartis v. Union of India 2013, 6 SCC 1
 ‘Why should a patent application be treated as confidential information?’, (Business Queensland, 2 September 2020) <https://www.business.qld.gov.au/running-business/protecting-business/ip-kit/browse-ip-topics/trade-secrets/patent-application-confidentiality> accessed 08 August 2022
 Sionyx LLC v. Hamamatsu Photonics K.K.,(2018) 330 F. Supp. 3d 574
 ‘IP and Business: Quality Patents: Claiming what Counts’(WIPO, February 2006) https://www.wipo.int/wipo_magazine/en/2006/01/article_0007.html accessed 25 August 2022
 Louis M. Troilo, ‘Common Pitfalls in Drafting and Prosecuting a Patent Application’ (WIPO) https://www.wipo.int/edocs/mdocs/aspac/en/wipo_ip_bkk_19/wipo_ip_bkk_19_p_3.pdf accessed 25 August 2022
 LG v. Mondis (2015) WL 7012747
 Chef America v. Lamb Weston (2004) 358 F.3d 1371 Fed. Cir.