An International Guide to
Patent Case Management for Judges

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8.6.3 Statements of case

Parties must submit written briefs in advance in order for the trial to proceed in a focused manner.111 Briefs should be filed in due time to give the other party a chance to prepare their response.112 A brief containing a new offensive or defensive method should be filed at an appropriate time for it to be served to the other party at least seven days before the trial or preparatory hearing.113 The following lists a few points of caution per issue in preparing briefs:114

  • Contention on the inventive step – the brief should contain an element-by-element chart identifying the elements in the prior art and comparing them with the corresponding elements of the patented invention. To argue that the patented invention lacks an inventive step based on a combination of multiple prior arts, the brief should specify the primary prior art and provide a detailed explanation of how the prior arts are combined and the reasons why such a combination can be easily obtained by a person having ordinary skill in the art.
  • Contention on infringement – the brief should specify, in detail and both individually and graphically, the product or process practiced by the defendant by listing the product name and product type number and attaching drawings or pictures so that the enforcing authority can identify them without further deliberation. The defendant’s product or process should be described in detail so that it can be compared with the patented invention by element and graphically described to maintain identity with the actual product or process practiced by the defendant. The brief should contain an element-by-element chart comparing the patented invention and the defendant’s product or process.
  • Contention on damages – a claimant seeking compensatory damages should specify the legal provisions serving as the basis for calculating the amount of damages and identify the exhibit number associated with each legal element set forth in the provisions. To dispute the facts alleged by the claimant, the other party should provide a detailed answer rather than a simple denial.