Potential Questions for a Patent Expert Witness
Patent litigation is often heavily dependent on expert witnesses. Indeed, patent litigation often becomes a battle of the experts. Below are over 25 potential questions for an intellectual property expert witness.
- Just what is the idea?
- Can the idea be distilled into a single sentence? A single image?
- How does it work?
- Can you describe the function to a layman?
- Can you explain the novelty to a layman?
- What exactly is novel about this idea in comparison to prior art?
- What criticisms of prior art are stated in the patent that the current invention addresses?
- Is the patent novel and useful?
- Would the idea be obvious to one skilled in the art?
- Is the invention revolutionary or incremental?
- Have others tried and failed to achieve the function or outcome that this idea provides?
- After disclosure, have other designers or manufacturers adopted aspects or the totality of this idea, thus demonstrating its utility?
- Has a thorough patent search of prior art been conducted?
- Both domestically and internationally?
- Is there prior art that has not been patented?
- Are there any omissions of prior art cited in the patent application that would be fatal if they had been considered?
- Has the idea been validated via experiment or other methodology?
- What are the patent claims?
- Does the patent stand within the light of the claims, and the claims only?
- Are the claims sufficiently specific to show viability?
- Are the claims sufficiently broad in order to prevent infringement?
- What do the words of the claims mean?
A. Are there any words that are jargon that are not defined within the patent application?
B. Are there any words which are being used in a way other than their customary dictionary definition?
C. Do any of the words change meaning within the patent application?
- What’s the idea worth? At least? At most?
- What’s the invention’s timeline?
A. What are the key dates?
B. Is the initial idea documented in any way with a lab notebook or internal company memos or design drawings?
C. Was the idea disclosed or marketed prior to filing a patent application?
- Who owns this idea?
A. Is it a corporation?
B. Was the invention a group effort?
C. Does an employee who worked on similar technology claim to have had a breakthrough inspiration at home while he was off the clock?
D. What does the intellectual property clause of said employees’ contract say?
- Is the typical, or best embodiment of the patent, as shown by the figures, limiting?
- Are the figures of the patent adequately descriptive?
- Is every component of the assembly enumerated, labeled, and described?
Stephen A. Batzer, PhD, PE is a licensed mechanical engineer. He is both a professor and a consultant with a nation-wide practice. He serves as a mechanical engineering patent expert witness. He has written over 65 peer reviewed technical papers and has consulted with government, academia and industry. Dr. Batzer has given over 150 depositions and has testified in more than 15 trials. To contact Dr. Batzer please click here.
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