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Expert Witnesses Clear Up Patent Eligibility Confusion


Patent applications and processes are sometimes confusing and complicated situations with one person needing to hire an expert witness for the claim against a company or individual that violates the stipulations of the patent owner’s claim on the item or design in question. Additionally, it may require the knowledge or experience of an expert to clear up any confusion about eligible patent protections.

For a patent to remain protected when an inventor creates a product, it must have existing eligibility within legal safeguards. Requirements for eligibility process through mandated statutes through federal procedures. A test for these eligibilities within a patent ran through the United States Supreme Court in 2014 to decide if a patent protection existed for the invention. This may involve software, computer-related claims and online inventions that users around the world may use. However, decisions by courts and the Court may become confusing, and an expert may become necessary to remove the confusion and explain the eligibility requirements in place for these protections.

Patent Infringement Explained

When an inventor creates a new work, he or she may process the invention through the patent offices by way of application. He or she usually has protections in place when the invention passes the application process and reaches the distribution phase for use as a purchasable product. However, some items may not remain eligible without further requirements such as online software applied for computer use or with the interaction between a computer and the internet. Other problems may arise when the inventor is not aware that he or she needs to satisfy these requirements. This could lead to litigation when a breach of protections occurs with a company or other person reproducing the patented item.

Patent Protection Eligibility

Expert witnesses play a significant role in patent eligibility cases between the judge and lawyers over the protections that remain in place or are not available based on the patent. The most confusion surrounding computer-related patents and software are sometimes made clearer through the help of an expert witness testimony. The expert may need to use an Alice Test which consists of two parts. The claim at issue in the courtroom may have an ineligible concept such as an abstract idea, some law of nature or a natural phenomenon and cannot remain eligible for the protections. The other possible issue is that of additional elements that are more important than the ineligible concept for the patent.

The expert in these cases may need to clarify and detail how these two factors of the Alice test matter to the case. For a computer-related or software patent, the patent owner must prove eligibility outside of an abstract idea. The logarithms of a code, code lines that equate to an action or the concepts of computing that create and sustain a piece of software may prevent a claim from failing in the courtroom. However, if the patent has an abstract idea that is difficult to understand or apply, it may not remain eligible for patent protections for duplication.

The Problem and Need for an Expert

Because the Alice test is not a fundamentally sound test, there are instances where the testing may cause more confusion than it clears up. Additionally, an expert is generally necessary to determine if the patent will retain eligibility with protections as other patents. The expert may need to assess the entire circumstances and explain to the courts if the patent owner will keep the safety of protections as other patents receive or will become ineligible due to an abstract idea that may have too wide a concept that the patent may safeguard. Federal Circuit district courts and state courts may need to hire the services of an expert to help ascertain if the patent is ineligible. These professionals need to explain how the abstract idea is not patentable and why the owner of the patent may lose his or her eligibility through the expert’s opinion based on the evidence.

Testimony in the courts may provide a better understanding of the seriously confusing matter to the judge or jury. The claim is to ensure that the patent owner may proceed with his or her invention creation and distribution through sales without another party infringing upon his or her intellectual property. However, the expert’s opinion may provide a greater chance of success in removing confusion and ensuring that the owner may retain his or her eligibility for patent protections. Then, the claim may succeed in a cease or desist or another remedy.


Provided by HG.org


Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer.

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