Patent claims are the most
important part of a patent, as the claims define the invention for which the
patent holder holds an exclusive monopoly. Patent portfolio value is dependent
on a variety of factors. Three very important factors are:
- Likelihood of use of the claimed invention by attractive target companies,
- Ease of enforcement of infringement of the patent claims, and
- Difficulty of invalidation of the patent claims.
Typically the main driver of
value of a patent portfolio is the value of the United States (US) patents. Therefore
US law is pertinent. Since a US patent is valid for 20 years from the date of
filing, the state of US law at the time of discovery of an alleged infringement
is pertinent.
Two well-known types of patent
claims are system and method claims. A system claim covers the structural
features of an apparatus which has been invented. A method claim is usually a
series of steps describing how an invention is to be applied. Each of these
types of claims have advantages and disadvantages.
For a method claim to be
infringed in the US, it is necessary for every step in the method claim to be
performed. A major issue with method claims in the US is “divided” infringement,
that is, where different parties perform the steps described. For ease of
enforcement of infringement, it is best to avoid divided infringement by asking
the following questions:
- Who is/are the potential infringer(s) to be targeted by the claim?
- What steps are they likely or not likely to perform?
- How should the claim be written to cover the steps in (2)?
Here are some example
implementations of this process.
Example 1: Patent revolving around a software application or “app”
To answer question 1, there is a
need to determine the intended target of the claim. It would be in the best
interest of the patent holder to target either
- The producer of the app, or
- The vendor who makes the app available for the end-user
and not the end-user.
For question 2 which concerns steps
likely or unlikely to be performed, it is important to remember that the
producer or vendor is unlikely to be using the app themselves. Rather the
producer or vendor is likely to perform the steps of providing tools to the
end-user to use the app, or enabling the end-user to perform a function via the
app.
Then to address question 3, the method
claim can be written as a series of “providing” or “enabling” steps or similar.
If in doubt, it may be useful to write more than one method claim. Furthermore,
the drafter should revisit the specification and drawings to ensure that there
is sufficient support for such method claims.
Example 2: Patent for a physical product
For question 1, it is likely that
the patent holder would want to target either:
- The manufacturer of the physical product, or
- The vendor who makes the physical product available for the end-user,
For question 2, the manufacturer
is likely to be assembling the physical product. The vendor is likely to be
selling the physical product to the end-user.
Question 3 can then be addressed
by drafting the method claim as a series of “assembling” or “providing” steps
or similar. Again, if in doubt, it may be useful to draft two or more different
method claims. As with example 1, the drafter should revisit the specification
and drawings to ensure sufficient support.
Finally, it is important to remember that the
fact pattern of each case may be unique. Furthermore, the future state of US
patent law is uncertain and unpredictable. One mitigating strategy in the US to
address both these issues is by filing continuation applications. This helps keep
the family alive, and therefore adapt the claims to ever-changing patent law
and to address different fact patterns and potential targets.
