May 20

May 20 What is a Patent Specification Support Chart?

Patent Prosecution, Tools of the Trade, Patent Due Diligence

As noted at the end of my prior post, What do Contingent Fee Lawyers Look for When Considering Specification-Based Defenses?, a "specification support chart" is a tool that can be used to analyze the question of specification based defenses under 35 USC 112 when evaluating a case for contingent fee representation.

A specification support chart is a two column chart with each element of the claim language in the left column, and the corresponding specification support from the specification and figures as filed in the right hand column.

For illustrative purposes, I have modified Claim 1 (for simplicity) from US Patent 6,913,165 and created a very basic support chart shown here.

While support charts are used during due diligence for a potential contingent fee matter, they should also be used during original prosecution.

Support charts prepared during original prosecution and continuation practice can mitigate the risks of specification based defenses being an issue later during the enforcement phase. Inventors and patent owners that contemporaneously verify claim support as each claim is drafted can ensure that they are not filing invalid claims and further strengthen their validity positions in this regard by noting the support when filing or new or amended claims. For example, when claims or claim amendments are submitted to the USPTO in an application, the Applicant can highlight the corresponding support for the claims:

“Claims 1 is supported by Applicant’s specification at least by Figures 4 and 7 items 11, 12, 16, 20, 21, and 23, and the corresponding discussion of those items in the specification as filed at pages 6 line 16 through page 7 line 11.”

While validity is technically a separate question from infringement, it often makes sense to consider these two issues contemporaneously when considering a contingent fee patent matter, as the claims must both be valid and infringed. In subsequent posts, we will discuss what contingent fee lawyers look for when considering infringement.