What Is Claim Mapping?
A patent application is accompanied by claims, abstract, drawings to fully describe the invention in detail. Claims are the most essential part of the application as it defines the scope of any invention. Claim mapping is a process by which we break down the claim into constituent elements and compare it with the process or product of another patent. Claim mapping or claim charts is graphical representation of all the elements of a claim and their corresponding overlaps.
Benefits of Claim Mapping
Claim mapping allows IP professionals to break down complex claims into more manageable parts, making it easier to interpret and clarify the scope and limitations of each claim and avoid overlapping with prior art. This furthers streamline the drafting and prosecution process by ensuring all claim elements are addressed clearly and consistently and thereby reducing the chances of rejection.
It helps to assess infringement risks. In a recent case of F- Hoffmann -La Roche Ag & Anr v. Zydus Lifesciences Limited, the court highlighted the significance of claim mapping in an injunction suit. The court firstly differentiated between claim construction and claim mapping. While claim construction is the process to interpret the meaning and scope of the claims, claim mapping is to draw comparative analysis of the features, types, components, compositions, functions of plaintiffs’ claims with that of another. The court stated that it is quintessential for the plaintiff to map his patent claims with that of defendants to showcase potential infringement for obtaining an ad-interim injunction. Since, in the present case plaintiff failed to show claim mapping, the court refused to grant injunction.
Claim mapping further helps in portfolio management by identifying the gaps in patents and strategically categorizing patents and claims, identifying redundancies, and recognizing key assets. Separate categorization of higher value patents also facilitates the process of licensing and negotiations.
Types of Claim Mapping
There are mainly two types of claim mapping: First, in which the elements of the claims are compared with present technical standards and then each element is mapped alongside their corresponding standards. Second, is to compare the patent elements with similar products in the markets. The second types is also known as Evidence of use or Patent to Product Standards.
Methods of Claim Mapping
First and foremost step is to identify the keywords from the claims and use those keywords to extract relevant patent documents from the database. This process of keyword extraction of data is known as text mining. Text mining is a useful technique as it is based on machine learning however it has its own limitations. The efficiency of this process reduces drastically when there are huge data sets for extracting information as a lot of useless data also gets collected.
The next step in the process involves clustering patents based on the similarity of their keyword vectors using various clustering techniques. Once patents are grouped into clusters, we will analyze claim overlaps within each group and develop a profile that highlights the number of overlapping claims. These claims will be categorized according to their degree of similarity, such as “identical” or “partly related.” To identify overlapping claims, we can employ both literal and functional methods. The literal method involves a direct comparison of the language used in the claims to identify exact matches, while the functional method focuses on identifying claims or inventions that share similar purposes or functionalities, even if their language differs.
And lastly we create a matrix between patents based on the number of overlapping claims and use network analysis software to generate visual maps or claims charts to make informed decisions.
Challenges in Claim Mapping
The language used in patent claims are often beyond technical or engineering language; it is much more complex. It is important that the words used in patent claims precisely describe the invention without much ambiguity. Also, the claim can be written in different formats using synonyms. This makes it even more challenging to identify infringing inventions.
A patent can either be a product or a process. However, when a patent is filed, it is often the case that the product has not yet been designed, developed, or commercialized. As a result, the patent application may not provide specific details about the product, making it more likely to be excluded during claim mapping. On the other hand, there are situations where the product is already on the market, and the patent is filed much later. In such cases, the prior existence of the product can raise challenges in meeting the novelty and non-obviousness requirements of the patent.
A complex patent with multiple hardware, mechanical and software components can be more challenging to understand and map those claims. Furthermore, the product may evolve over its lifecycle, with continuous enhancements or improvements being incorporated, which can result in significant changes to its design and configuration. As part of this evolution, the bill of materials (BOM) may also undergo revisions, with nearly identical components sourced from alternative suppliers, further complicating the mapping effort. It further becomes very difficult to map the claims of companies with a large portfolio of patents.
Conclusion
In conclusion, understanding claim mappings is essential for effectively navigating the patent process, from filing and prosecution to addressing potential patent infringement. Claim mapping serves as the foundational step in drafting a patent application, ensuring that the invention is distinguishable from prior art by conducting a thorough patent search to identify similar inventions. Moreover, in the context of infringement, a detailed claim mapping allows for a clear identification of the accused patents, facilitating the assessment of whether infringement has occurred. By accurately mapping the claims, patent holders can strengthen their intellectual property rights, while also enabling more efficient and informed decision-making in the complex landscape of patent law.
Written by Khushee, an assessment intern at Intepat IP
