Mastering Patent Claim Construction with LLMs (3): Injecting Guidelines for Claim Chart Drafting

Practical Framework Part 3

Mastering Patent Claim Construction with LLMs (3)

Injecting Claim Chart Drafting Guidelines Drawn from Practical Experience

The next step is a research phase aimed at establishing the format of the final deliverable.

Rather than organizing claim construction results into a simple narrative report, I prefer to structure them in the form of a Claim Chart specifically designed for claim interpretation. This is not merely to make the output look polished, but to secure a practical tool that can be used under a consistent standard in all downstream tasks, including infringement analysis, invalidity review, and opinion drafting.

1. Why Claim Chart Standards Must Be Established First

There is one important point here. A Claim Chart is not just a “format for organizing results,” but a core framework that determines the quality of the interpretation itself.

The problem, however, is that the method for decomposing claims, the standards for extracting elements, and the actual drafting approach are not systematically organized in textbooks or case law. In other words, this is an area where methodology is built largely 👉 through practical experience.

Through handling a wide range of cases, I have gradually developed my own standards for claim decomposition, element extraction, and chart structure in a way that is suitable for claim construction.

2. Teaching the LLM the “Drafting Method” First

At this stage, what I do is simple. I organize the standards I use in practice 👉 the way I would teach a junior associate, and then register them as a source in NotebookLM.

A Critically Important Point

This step is not simply about “adding reference materials.” It is the process of pre-training the LLM on the interpretive framework and the output format so that it will reason under the same standards in all later interpretation tasks.

• This is the step where you inject, before adding any source materials, how the analysis should be conducted and how the results should be organized.
• If this step is skipped, the LLM will analyze each task under a different set of standards, which in turn prevents the overall work product from losing consistency.

3. Claim Chart Drafting Guidelines (Draft)

Below is a draft of the practical Claim Chart drafting guidelines that I prepared and asked the model to review.

DRAFT INSTRUCTION

**1. Methods for Claim Decomposition and Extraction for a Claim Chart Used in Claim Construction** Claims should be broken down into the smallest units that serve as the basis for invalidity and infringement analysis. The language of the claim should be separated according to context, while also being divided into sub-elements in a way that clearly reveals the invention’s distinctive features. The specific methods of decomposition and extraction are as follows. * **Structure- and Function-Based Decomposition:** Break the claim down into **structure**, which reflects the physical form of the elements and how they are connected, and **function**, which reflects the operation and role performed by each element. * **Identifying Organic Relationships:** Go beyond merely listing the components and derive the relationships showing how each component connects with the others and contributes to solving the technical problem. * **Extracting Interpretive Terms and Limitations:** From among the separated sub-elements, extract as the key interpretive targets those terms that **specifically require claim construction or are directly tied to the invention’s distinctive features**. In particular, major extraction targets include terms expressed functionally (for example, “means for ~”) that may need to be examined to determine whether limiting interpretation to the embodiments is required, as well as terms to which the principle of claim differentiation may apply because of dependent claims. **2. The Most Desirable Methodology for Drafting a Claim Chart** The most practical and desirable output format for visualizing claim construction results in a logical and clear manner is to prepare a **Claim Chart** in tabular form. For that purpose, I propose the following table format composed of **six items (columns)** as the output format. | No. | Claim Language | Claim Element (Interpretive Target) | Specification / Drawing Support | Interpretation Result and Legal Analysis (from the PHOSITA Perspective) | Notes (Prosecution History / Limiting Construction) | | :-- | :--- | :--- | :--- | :--- | :--- | | 1 | Decomposed claim language | (e.g., screw) | [paragraph number], [figure number] | (e.g., a low-speed pressing member having a spiral structure) | (e.g., vertical-type limitation based on an argument submission) | **[Drafting Guide and Explanation for Each Column]** * **Claim Language:** Set out verbatim the minimum unit of claim language as decomposed in a way that clearly reveals the invention’s distinctive features. * **Claim Element (Interpretive Target):** Extract from the decomposed language the core target terms or limitations that especially require interpretation or are written as functional expressions (e.g., “means for ~”). * **Specification / Drawing Support (Mapping of Intrinsic Evidence):** Identify and map the specific [paragraph numbers] and [figure numbers] in the detailed description of the invention that define or support the meaning of the term. * **Interpretation Result and Legal Analysis:** From the perspective of a person having ordinary skill in the art, apply intrinsic evidence first and clearly state the objectively and substantively established technical meaning of the claim element. * **Notes (Review of Prosecution History and Limiting Construction):** Record legal points of note, such as any intentional exclusion (prosecution history estoppel) reflected in the submission of arguments or amendments during prosecution, or any reason why, due to a clear disavowal of claim scope in the specification, limiting construction to the embodiments should apply.

This type of Claim Chart format allows intuitive one-to-one textual mapping between the relevant product (or prior art) and the claim elements in later infringement litigation or invalidity proceedings, making it the most effective practical analytical tool for preventing errors caused by improper narrowing or overbroad claim interpretation.

4. The Process of Validation → Refinement → Redesign

Rather than simply using the above guidelines as-is, I validated them in the following way.

“Are these guidelines sufficiently valid under actual legal doctrine and case law standards?”

To answer that question, I instructed the model in the chat to reflect the points requiring refinement and present again the most appropriate concrete Claim Chart format and drafting guide.

5. Refined Claim Chart Drafting Guidelines (Final Version)

The result is as follows, and this too was saved as a memo and then converted back into a source and integrated into the knowledge base. This process of turning good results into knowledge that can be continuously reused rather than a one-off answer is extremely important.

FINAL FRAMEWORK

**1. Methods for Claim Decomposition and Extraction for a Claim Chart Used in Claim Construction (Reflecting Special Issues)** When decomposing claims to apply the All Elements Rule (AER), which is central to infringement and invalidity analysis, it is essential to go beyond a simple listing of claim language and instead perform a more multidimensional extraction that reflects the legal characteristics of **special types of claims (functional claims, PbP claims, and numerical limitation claims)**. * **Identifying Structure, Function, and Organic Relationships:** Break the invention down into the physical structures that make it up and the functions those structures perform, while clearly deriving the relationships showing that each element does not exist in isolation but is organically connected with other elements to solve the technical problem. * **Extracting Targets for Limiting Construction of Functional Claims:** Because elements expressed in abstract or functional terms, such as “means for ~” or “~ step,” carry a risk of making the claim scope unduly broad, they should be extracted as targets for focused review to determine whether there are clearly unreasonable circumstances requiring the claim to be limited to the embodiments disclosed in the specification. * **Extracting the “Structure / Properties” of PbP (Product-by-Process) Claims:** Even when a manufacturing process is recited in the claim, the subject of the invention is still a “product,” so the manufacturing process itself should not be mechanically extracted as an independent element. Instead, the true technical element to be extracted is the “structure or properties of the product” ultimately defined by that manufacturing process. * **Extracting the “Critical Significance” of Numerical Limitation / Parameter Inventions:** Where a specific numerical range or a newly created parameter is involved, it should be separated as a core interpretive target in order to assess whether the specification enables the full claimed range without undue experimentation (support requirement), and whether the claimed range or parameter shows a remarkable effect (critical significance) that distinguishes it from the prior art. **2. The Most Desirable Concrete Claim Chart Format (Top-Tier Practical Template)** By upgrading the existing six-column structure, I propose a **seven-column framework that can fully map both Doctrine of Equivalents (DOE) defense / attack logic in cases of literal non-infringement and the analytical guidance for special types of claims**. | No. | Decomposed Claim Language (Including Organic Relationships) | Core Interpretive Target (Special Issue: Functional / PbP / Numerical) | Specification / Drawing Support (Mapping of Intrinsic Evidence) | Objective Technical Meaning and Result of Literal Interpretation (from the PHOSITA Perspective) | DOE Comparison: Identification of the Principle for Solving the Problem | Defense Logic: Prosecution History Estoppel and Grounds for Limiting Construction | | :-- | :--- | :--- | :--- | :--- | :--- | :--- | | 1 | (e.g., a cleaning unit that supplies cleaning water by electrolyzing filtered water) | cleaning unit (functional claim) | [paragraph 0045], [figure 3] | (e.g., an internal module that performs physical cleaning through electrodes without sterilizing chemicals) | (e.g., the principle of maximizing eco-friendly cleaning efficiency by excluding chemicals) | (e.g., conscious exclusion of a “chemical additive method” during argument submission) | | 2 | (e.g., a tablet manufactured by direct compression) | manufactured by direct compression (PbP claim) | [paragraph 0022] | (e.g., a porous tablet structure having a 15% inter-particle porosity formed by the direct compression process) | (e.g., the principle of controlling disintegration speed by adjusting porosity) | (e.g., structurally / physically different from tablets made by wet granulation) | | 3 | (e.g., a lens assembly having TTL ≤ 6.5 mm) | TTL ≤ 6.5 mm (numerical limitation) | [paragraph 0110], [Experimental Example 2] | (e.g., the physical limit of a miniaturized lens with a total track length of 6.5 mm or less) | (e.g., the principle of achieving an ultra-short focal length through refractive-index redistribution) | (e.g., target for lack of enablement across the full range of 6.5 mm or less) | **3. [Drafting Guide and Explanation for Each Column]** * **Decomposed Claim Language:** Set out verbatim the claim language decomposed into the minimum unit defining the scope of the invention, while describing it in a way that reveals not just a simple list but also the physical and functional relationships among the elements. * **Core Interpretive Target (with Special-Issue Label):** From the decomposed language, extract the key terms that present issues—such as functional expressions (“means for ~”), product-by-process (PbP) language, or numerical limitations / parameters—and identify the type in parentheses so the focus of the analysis is clear. * **Specification / Drawing Support (Mapping of Intrinsic Evidence):** Map the specific [paragraph numbers] and [figure numbers] in the specification that show where the term is defined under the lexicographer rule, where embodiments support a functional claim, where a manufacturing process in a PbP claim causes a specific change in physical properties, or where the technical threshold for a numerical limitation is demonstrated. * **Objective Technical Meaning and Result of Literal Interpretation (from the PHOSITA Perspective):** From the perspective of a person having ordinary skill in the art, apply the principle of construing the claim in light of the specification and describe the objectively and reasonably derived substantive meaning of the element. In the case of PbP claims, the description should not merely repeat the manufacturing process itself, but should clearly translate the structure or properties defined by that process. * **DOE Comparison: Identification of the Principle for Solving the Problem (New):** This column is used to assess possible infringement under the Doctrine of Equivalents when differences are found in a literal one-to-one comparison with the accused product. By considering both the content of the specification and the prior art existing at the time of filing, this column states in advance the “core of the technical idea underlying the specific means for solving the problem unique to the patented invention” (i.e., the principle for solving the problem) to which the relevant element belongs. * **Defense Logic: Prosecution History Estoppel and Grounds for Limiting Construction (New / Refined):** Record the history of any intentional exclusion (prosecution history estoppel) of specific subject matter reflected in arguments or amendments submitted throughout the prosecution of the original application and any divisional applications. Also record whether a functional claim should be limited to a specific embodiment because a broader reading would be clearly unreasonable in light of the specification, or whether a numerical limitation invention may be invalid for failure to satisfy disclosure requirements (such as enablement) because the full claimed range cannot be practiced without undue experimentation.

6. The Core Meaning of This Stage

The most important insight to gain at this stage is the following.

“A Claim Chart is not merely an organizational tool, but a structural mechanism that controls the accuracy of claim interpretation.”

And when using LLMs, the key is not simply getting good results, but building a system in which the results are always generated under the same standards.

7. Key Points for Practical Application

When this process is applied directly in practice, it can be summarized as follows.

1. First, establish the “drafting format” (the structure of the table).
2. Next, inject the “interpretive standards” (legal doctrine and drafting guidelines).
3. Then, input the “source materials” (the specification and evidence).
4. Finally, carry out the “claim interpretation and chart drafting”.

Most people reverse this order. Because they start by asking for the interpretation right away, the results become unstable and lose consistency.

This stage is not simply about creating a Claim Chart, but about designing how the LLM will think. When this work is done properly, all later analytical work becomes far more stable.

© 2026 ChinSu Lee. All rights reserved.

Mastering Patent Claim Construction with LLMs (2): Enhancing the Claim Interpretation Framework and Expanding the Knowledge Base

Mastering Claim Construction with LLMs: Refining the Framework and Expanding the Knowledge Base

How practical experience and AI can work together to evolve beyond simple analysis into an expert-level knowledge asset

Building on the previous post, this time I focused on refining the claim construction framework and expanding the surrounding knowledge system.

In the previous post, I supplied additional practical heuristics that I had separately compiled from experience and instructed the model to compare and verify them against the existing case law analysis. The framework I asked it to review was the “Five-Step Claim Construction Framework under Korean Case Law.”

System Directive

This is a five-step interpretive structure that takes the claim-centered approach (literal interpretation) as the governing principle, while supplementarily referring to the specification and drawings to determine the technical meaning in an objective and reasonable manner. Five-Step Claim Construction Framework under Korean Case Law 1) Step 1 (Principle of Literal Interpretation): The scope of the patent right is first defined based on the ordinary meaning of the terms used in the claim, as understood in the relevant technical field. 2) Step 2 (Reference to the Specification and Drawings): From the perspective of a person having ordinary skill in the art (PHOSITA), the claims are interpreted in light of the overall context of the specification. If the applicant explicitly defined a term in the specification (the lexicographer rule), that definition takes precedence. More specifically, the meaning of the term is determined through the detailed description of the invention so that the intended function and operation of the invention are properly implemented. The Korean Supreme Court has made clear that, when consulting the specification, courts must go beyond simply reading the surrounding context and must instead objectively and reasonably examine the “technical meaning” that the language was intended to convey, including the problem-solving principle and technical effect. 3) Step 3 (Prohibition on Undue Narrowing or Expansion): Even when consulting the specification, the claims must not be improperly narrowed based on specific embodiments, nor unreasonably expanded beyond what is supported by the specification. In practice, one of the most common errors in Korean patent litigation is confusing “interpreting claims in light of the specification” with “importing limitations from the specification into the claims.” The Supreme Court has taken a firm position against improper narrowing based on the description of the invention (for example, in the Cream case and the Display Structure case). 4) Step 4 (Reference to Prosecution History and Estoppel): If a particular feature was consciously excluded or narrowed during prosecution, later attempts to reverse course and broaden the interpretation are restricted. 5) Step 5 (Application of the All-Elements Rule and Doctrine of Equivalents): In infringement analysis, the all-elements rule (AER) applies, while the doctrine of equivalents (DOE) serves as a supplementary doctrine to capture design-arounds.

As a result, I received a favorable assessment regarding its consistency with the case law, along with suggestions for areas that still needed improvement. The purpose of this stage was not simply to add more information, but to verify whether the existing framework was sufficiently supported for practical use and systematically reinforce the parts that were still lacking.

1. Method of Knowledge Expansion: “Turning Results Back into Sources”

The key method used in this round of work was as follows.

• Save meaningful analytical outputs generated during the conversation as NotebookLM Studio notes
• Convert those notes back into sources and reinject them into the existing knowledge base

In other words, instead of merely consuming answers, this creates a structure in which useful outputs are continually accumulated, refined, and converted into knowledge assets. As this process repeats, the LLM gradually comes closer to functioning like a case-specific expert model.

2. Results of Framework Validation: Strong Structure, but Foundational Legal Support Still Needed

Based on an analysis of 23 sources, the five-step claim construction framework I had previously developed was confirmed to be a highly sophisticated and practical structure. At the same time, however, NotebookLM pointed out several important issues.

The current source set is overly concentrated on specialized issues such as product-by-process claims, numerical limitation inventions, and the fifth requirement of the Japanese doctrine of equivalents. As a result, while the framework’s overall skeleton is strong, the general body of Korean case law needed to support that structure is still relatively thin.

3. Summary of Areas Needing Reinforcement by Step

(1) Steps 1–2: The Lexicographer Rule

• Current status: The principle that claim terms may be interpreted according to definitions in the specification is partially reflected, but there is not yet enough explicit discussion of the lexicographer rule itself.
• What needs to be reinforced: The requirements for recognizing the rule and the level of “clarity” needed to displace the ordinary meaning of a term.
• Further research direction: Supreme Court decisions and academic materials analyzing the standard for clear claim-term definitions.

(2) Step 3: Interpretation of Functional Claim Language

• Current status: The possibility of narrower interpretation is partially reflected, but the applicable standard remains unclear.
• Core issue: It is difficult to determine when the general rule of literal interpretation should apply and when an exception permitting narrower interpretation should be recognized.
• Further research direction: A comparison of cases that accepted limiting interpretation versus those that rejected it, with emphasis on the underlying factual circumstances.

(3) Step 4: Prosecution History and Estoppel

• Current status: Some recent issues are well reflected, but the broader doctrine of prosecution history estoppel is still underdeveloped.
• Core issue: Compared with Japanese authorities, there is still not enough Korean case law grounding.
• Further research direction: Leading cases on conscious exclusion and estoppel, decisions addressing the full course of prosecution responses, and whether the dedication doctrine has been recognized in Korea.

(4) Step 5: AER and the Doctrine of Equivalents

• Current status: The explanation of the all-elements rule (AER) is still very limited, and the criteria for applying the doctrine of equivalents are only summarized at a high level.
• Core issue: There is still a lack of practical, case-usable standards for application.
• Further research direction: Cases involving omission-type infringement and indirect infringement, standards for determining whether the same problem-solving principle is present, and the way prior art should be considered.

4. An Important Insight: “Special-Issue Data Is Actually a Strength”

One interesting takeaway is that, despite the gaps noted above, a substantial portion of the current sources focuses on high-difficulty issues such as product-by-process claims, numerical limitation inventions, and in-depth Korean and Japanese doctrine-of-equivalents cases. That is not a weakness. If anything, it is a strength. Most practical frameworks cover only the general rules and tend to break down when they encounter specialized issues.

5. Proposed Expansion of the Framework

Taking that into account, the existing five-step structure could be expanded as follows.

“Step 6: Interpretation of Special Claim Types (PBP Claims and Numerical Limitation Inventions) and the Limits of Applying the Doctrine of Equivalents”

Adding this step would allow the framework to evolve beyond a simple theoretical summary into a practice-oriented structure capable of handling high-complexity cases.

6. Supplementing the Proposed Sources and Closing Remarks

I copied the reinforcement points identified above directly back into NotebookLM’s source window and then activated the deep research function to gather additional case law and doctrinal materials that had been missing. Through this process, I was able to strengthen the weaker parts of the existing framework and expand the knowledge base in a more balanced way.

What This Stage Ultimately Accomplished

1. Verified the structural completeness of the framework
2. Identified areas where doctrinal support was still weak
3. Confirmed the existing knowledge bias (specialized issues vs. general doctrine)
4. Established a repeatable process for knowledge expansion

In claim construction, what matters is not simply gathering a large volume of materials, but whether the framework is actually built to digest and organize those materials effectively. Strong results come less from the model itself and more from the design of the knowledge structure and the reinforcement process.

© 2026 ChinSu Lee. All rights reserved.

Is “Hunting Patent Trolls” a Thing of the Past? Corporate Survival Strategies as the USPTO Raises the IPR Bar

 

“What if your business license had to be reviewed every year?” A bold statement from the Acting Director of the USPTO heralds a major upheaval in the U.S. patent system! In this deep analysis, we examine what patent holders and companies need to know in the face of a sweeping paradigm shift brought about by Acting Director Stewart’s pro-patent policies.

 

Recently, Acting Director Coke Morgan Stewart delivered a keynote speech at the IPOA annual meeting that sounded like a seismic shift in the U.S. patent landscape. In unusually strong terms, he criticized the current IPR system, saying, “Imagine if your college degree or your home ownership were reviewed every year, endlessly, by anyone and everyone.” He argued that this kind of system undermines the constitutional rights and certainty afforded to patent holders.

Stewart asserted, “A stable patent system is essential to a stable economy,” and directly targeted the structural flaws of the current system—particularly the ease of repeatedly challenging patents under a low burden of proof. He further suggested that PTAB’s high invalidation rates may be a “statistical illusion” caused by repeated challenges, and that the Federal Circuit’s “reasonableness” standard alone cannot ensure the substantive accuracy of PTAB decisions. This speech makes it clear that the USPTO will actively promote policies that significantly strengthen patent stability. So, how should companies prepare amid this large wave of change? Let’s dive into the core issues. 😊

 

📜 What's Changed at the USPTO: Stewart’s Three Key Pro‑Patent Initiatives

Stewart has rolled out distinctly different policies under the banner of a "strong and stable" patent system. Most notably, the bar for challenging already-issued patents through IPR has been raised—making it significantly harder to invalidate patents. We can break down these major changes into three key points:

1. Resurgence of Discretionary Denial & bifurcated proceedings: Not only has the flexibility introduced under former Director Kathi Vidal been reversed, but as of March 2025, IPR proceedings have become two-tiered—split between “discretionary denial assessment” and “merits review.” This shift is paving the way for more discretionary denials in favor of patent holders.
2. New grounds for denial: “Settled Expectations”: This concept is critical. If a patent has been valid for a long time, protecting the social and economic reliance on that patent—i.e., ‘settled expectations’—becomes paramount. Thus, older patents are now much harder to challenge via IPR.
3. Separate briefing process introduced: Under the USPTO’s interim procedures issued March 26, 2025, patent owners may now submit a separate brief arguing for discretionary denial—known as the Discretionary Denial Brief—and it’s capped at 14,000 words. This matching word limit ensures that patent holders have a robust opportunity to defend their rights.

 

🤔 Who Benefits More—Patent Holders or Challengers?

Clearly, these changes affect market players differently. Patent owners stand to gain, while challengers face increasing hurdles. Here's a summary in a convenient table:

Category	Patent Holder	Practicing Entity (Challenger)
Advantages	Stronger IPR defenses, increased patent value, more leverage in licensing	–
Disadvantages	Risk of prosecution laches (though difficult to establish in practice)	Harder to invalidate patents via IPR, increased legal costs, vulnerability to NPEs
Key Strategy	Leverage continuations, strengthen discretionary denial arguments	File IPRs early and in compliance, utilize defensive patent communities

💡 Quick Tip: What Is Prosecution Laches?
Prosecution laches refers to the doctrine preventing patent owners from intentionally delaying prosecution to target competitors later. However, courts apply this doctrine very sparingly—especially where normal continuation strategies are used. In practice, it’s very hard for a challenger to neutralize a patent by relying on prosecution laches alone.

 

🚀 Tailored Strategies for Your Company

Given these sweeping changes, how should your company navigate the IPR landscape? We’ve outlined actionable strategies for both patent holders and challengers:

👑 “Aggressive Value‑Maximization” Strategy for Patent Holders

Your patents are now more powerful than ever—use that to your advantage.

• Maximize Continuations: Secure core technologies early, then build a dense patent portfolio through strategic continuations—this allows you to block competitors and set up for stronger licensing opportunities down the line.
• Invoke the “Settled Expectations” Principle: Emphasize that your patent has been relied upon in the marketplace—especially if it’s been six years or more since issuance—to argue against IPR initiation.

🛡 “Strategic Workaround” & “Rapid Response” Strategy for Challengers

IPR isn’t as powerful as it used to be—but a smart, rapid approach can still make a difference.

• Timing and compliance are critical: IPR is now a race. You must file within 9 months after patent issuance or within one year of being sued—but beware that the USPTO may also deny IPR if a patent has been around for ~6 years or if civil or ITC proceedings are well underway.
• Target exceptions to “Settled Expectations”: Older patents can still be challenged if you uncover powerful new invalidity evidence or show the patent was never practiced or licensed—thus no settled expectations apply.
• Use defensive networks like LOT Network & Unified Patent: If you're a small company concerned about NPE attacks, joining a collaborative defense community can offer collective patent risk mitigation.

💡 Legislative Spotlight:
Beyond administrative changes, Congress is also pursuing pro-patent legislation. These bills highlight where the U.S. patent system may be headed:

• PREVAIL Act: Aims to revamp PTAB structure and bolster patent holder protection—designed to curb challenger abuse of IPR and stabilize issued patents.
• RESTORE Patent Rights Act: Would make it easier for patent holders to secure permanent injunctions following infringement victories—adding pressure on infringers.
• PERA (Patent Eligibility Restoration Act): Seeks to clarify §101 patent subject-matter eligibility—especially for software and business methods—to make it easier for such inventions to obtain patents.

 

💡

Key Takeaways from USPTO’s 2025 Policy Shifts

Pro-Patent Era: Stewart’s policies significantly strengthen patent holders’ rights.

Higher IPR Bar: Fintiv and “Settled Expectations” make invalidating patents older than six years much harder.

Patent Holder Strategy: Leverage continuations and assert discretionary denial to maximize patent value.

Challenger Strategy: File timely IPRs and consider collective defenses such as LOT Network.

Understanding these shifts is the first step to success in the U.S. market.

 

Frequently Asked Questions (FAQ)

Q: What’s the most important timing restriction when filing an IPR?

A: You must consider both statutory and discretionary limits. Statutorily, you must file within one year of being sued for infringement. Discretionarily, the USPTO is more likely to deny IPR if a patent has been issued for ~6 years or if other litigation has already advanced significantly.

Q: Does that mean older patents can never be invalidated?

A: It’s very difficult, but not impossible. If you uncover a strong “smoking gun” prior art reference, or show the patent has never been practiced or licensed, you may argue the “Settled Expectations” doctrine doesn’t apply. You can also pursue invalidity in federal court.

Q: We’re a small startup. Are these changes especially challenging for us?

A: Yes, startups face tougher conditions, as large corporations’ patent portfolios become even stronger. That’s why collective defense is key—joining groups like LOT Network (where members agree not to sue each other with patents) or Unified Patent (focused on invalidating NPE patents) can provide cost-effective protection.

Today we reviewed major changes in the U.S. patent system for 2025. It’s a pivotal moment: an opportunity for patent holders, but a serious challenge for challengers. As always, companies that read the shifts correctly and act quickly will prevail. Still, given that much of America’s innovation is driven by startups, policymakers may need to fine-tune these changes to ensure small businesses remain protected. I hope this analysis helps your business. If you have questions, feel free to ask in the comments! 😉

*This post is for general informational purposes only and does not constitute legal advice. For specific issues, please consult with a qualified professional.

※ This blog post is intended for general informational purposes only and does not constitute legal advice on any specific matter. For individual legal issues, please consult a qualified professional.

기업특허전략 체크리스트

특허의 가치는 특허 건수나 청구범위와 같은 특허자체보다 그 특허를 어떻게 활용하는 가에 더 종속된다. Apple이 양적으로 그리 많지 않은 특허를 가지고 있음에도 공격적이고 적극적인 특허활용 정책으로 어느 기업보다 특허력과 가치를 높이 평가받고 있다는 사실을 떠올려보자 (이러한 상관관계는 언제한번 다루어 보도록 하겠다).

따라서 기술중심의 기업에게 특허전략의 수립과 전개는 매우 중요한 사업계획 중 하나이다. 그러나 대부분의 특허전략은 계획적인 전개가 아니라 우연히 발생하는 이벤트로 전락하기 쉽다. 자신의 기업에 맞는 특허전략의 수립 또는 평가를 위해서 체크리스트를 마련하여 활용하는 것은 큰 도움이 될 것이라고 믿는다. 

마침 Rajiv Patel 변호사가 Fenwick & West LLP 에서 공표한 “Developing a Patent Strategy A Checklist for Getting Started”라는 제목의 Article에 도움이 될만한 특허전략 Checklist가 소개되어 이를 공유하고자 한다. IBM 엔지니어 출신이라서 그런지 비즈니스적인 통찰력이 상대적으로 돋보인다. 참고로 본 Checklist는 기업 특허전략/법무팀에서 수행하고 있는 세부 Action item과 대동소이하다. 상세한 설명은 Fenwick & West LLP 사이트에서 다운받아 읽어보실 것을 권유한다.

A. Business and Patent Portfolio Goals

• List the business, technology, and product goals for the company.

• Identify key industry players (competitors, partners, customers).

• Identify technology directions (within company and within industry).

• Determine whether a patent portfolio be used offensively (i.e., asserted against others; revenue generation, etc.), defensively (i.e., used as a shield or counterclaim against others who file suit first), for marketing purposes (i.e., to show the outside world a portfolio to demonstrate company innovation), or a combination of these.

• Meet with a patent attorney to align goals, industry information, technology information, and core portfolio use strategy.

B. Evaluation of Company Assets

• Identify team members that will lead the mining and analysis process.

• Identify employees that create intellectual assets for the company.

• Identify the intellectual assets. To help determine this, gather and organize documented materials. Examples of documented materials include business plans, company procedures and policies, investor presentations, marketing presentations and publications, product specifications, technical schematics, and software programs. It may also include contractual agreements such as employment agreements, assignment and license agreements, non-disclosure and cofidentiality agreements, investor agreements, and consulting agreements.

• Identify the anticipated life span for each intellectual asset.

• Identify the market for each intellectual asset.

• Identify products/product lines incorporating each intellectual asset.

• Identify those intellectual assets best suited for patent protection.

• Review risk analysis with attorney involving competitor studies.

• Prepare budget for patent strategy and patent procurement.

C. Procurement Phase

• Establish a budget for patent portfolio development.

• Draft invention disclosures (see attorney for Invention Disclosure Form).

• Critically evaluate each invention disclosure in the context of the patent strategy.

• Weigh risks vs. reward of a prior art search.

• Evaluate benefits and risk of provisional vs. utility patent application with attorney.

• Forward invention disclosure to attorney for patent application drafting.

• Over time, determine whether to conduct further competitive analysis to study industry trends and technology directions and identify patent portfolio coverage in view of same.

• Over time, evaluate risk vs. reward of studying patent portfolios of competitors and other industry players to identify how to further strengthen its patent portfolio.

D. Deployment Phase

• Review patent portfolio to identify those assets that company can sell for cash or use to spin out new business.

• Study competitor products for infringement considerations and determine risks vs. rewards of cease and desist strategy or licensing strategy.

• Evaluate the strength of competitor patent portfolios to access the potential for counter-attacks.

• Determine risks and benefits of various enforcement options cease & desist; cross-license; etc.).

저자의 소개 : 

Rajiv P. Patel is a partner in the Intellectual Property/Patent Group of Fenwick & West LLP.  He develops, deploys, and manages patent portfolios for clients in high technology spaces, including wireless communications, clean technology, media (audio and video), gaming, and Internet (e.g., search engines, language processing, CDNs). His experience includes patent disputes (litigation and reexamination) and transactions (patent due diligence and analysis).  Prior to his law practice, Mr. Patel was engineer for IBM Corporation. As an attorney, Mr. Patel was an adjunct professor of law at the University of California, Hastings College of the Law and currently chairs Patent Law education programs for Practising Law Institute.  Mr. Patel is a member of the State Bar of California and is registered to practice before the U.S. Patent and Trademark Office.