KHE International Patent Office
Case Study

Failure due to using functional claims without careful consideration

Company A, manufacturing semiconductor device fabrication process machines, obtained patent right P for the new technology based on their field technique.  Company A presented it in a technology conference and many companies using the fabrication process machines implemented the technique in their machines.  At later date, Company A requested the license fees to Company B that competed to Company A.  The claims of the invention were described in functional wording since the inventor thought the functional claims cover wide scope of invented technology.  However, Company B changed their field technical terms in their fabrication lines in order to allege they did not use such technology.  As the result, the request for license fee by Company A was refused by Company B and every other company.

Cause of Company A’s failure

Availability and applicability of patents are lost if the invention are represented in functional claims without understanding substantial scope of invented technology.  Such claimed inventions cannot be effective to inquirer potential infringement of patent right when the infringers change the terms of the implemented technology.