Page 10 - February 2021 PPIAC Newsletter FINAL

invention purports to accomplish, and claims of a patent define the invention and the

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extent of the grant. Patent claims are notoriously difficult to read for non-technical
people, but they provide the most in-depth description of what a patented item is or

does. Patent claims are normally provided in the form of numbered points and

define in very technical terms the extent of the protection granted by a patent. It

typically takes a skilled patent attorney to sort things out. Patent attorneys are not

only adept at understanding the federal rules and laws involved, but they also have

specific technical knowledge as well. Most have engineering or science-related

degrees in addition to their law degrees and must pass the patent bar exam.

Understanding the claims made in a patent is important in defending patent

infringement cases, because the most common defense is to attack the validity of the

patent itself. Once the United States Patent and Trademark Office issues a patent,

the patent is presumed to be valid. The burden of proof is on the patent holder to

establish that their patent was infringed. There are several ways for a defendant to

allege that the patent is invalid. Patents can be found invalid if the patent holder

provides fraudulent or incomplete information on the patent application. For

instance, if a patent application states that the process it is seeking to patent has

never been done before—yet the applicant was aware (or should have been aware)

that the process was used for years by a competitor—that is fraud. Another form of

fraud occurs when the patent holder fails to disclose knowledge of prior art. As an

investigator in a patent infringement case, you may be tasked with finding out

whether the patent holder was aware of the process, or failed to disclose prior art.