This is part of an ongoing series
of blog posts aimed at helping patent applicants in maximizing the value of
their portfolio through smart and savvy claim drafting.
As explained previously, three very important factors in determining value of patent portfolio
value 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.
- 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 jurisdiction
treats system and method claims differently from other jurisdictions. Since the
value of a patent portfolio is heavily driven by the value of the United States
(US) patents within the portfolio, the rest of this discussion will focus on US
patents.
Under US law each of these types
of claims have advantages and disadvantages when it comes to ease of
infringement and difficulty of invalidation. System claims may be more
difficult to enforce than method claims, because of the need to point to an
underlying apparatus. However this potentially makes system claims more
difficult to invalidate. Also, to prove direct infringement of a system claim
via use, the Federal Circuit Court has stated that in order to prove an
infringing “use” of a system under 35 USC 271(a), a patentee must demonstrate
use (i.e., “control” and “benefit”) of the claimed system by an accused direct
infringer. Further, the Court held that “to use a system, a person must control
(even if indirectly) and benefit from each claimed component.” The direct or
indirect control required “is the ability to place the system as a whole into
service.” For make and sale, the manufacturer would be subject to a direct
infringement claim for having made, sold, or offered to sell the infringing apparatus.
Method claims may be easier to
enforce due to not needing to show an underlying apparatus. However this also
makes them easier to invalidate. Furthermore there are other legal defences
which can be used against method claims. For example, the Federal Circuit Court ruled
in NTP vs. RIM (2005) that for a method claim to be infringed by a process,
every step in the process must be practiced in the US. In performing its
analysis, the Court noted that Congress has expressed the view that method
claims can only be infringed under the “use” category of infringement, and held
that RIM had not sold, offered for sale, or imported the entirety of the
method. If a step of the process is practiced outside the US, then the process
does not infringe the method claim. The Federal Circuit has confirmed this
reasoning in subsequent cases. A major issue with method claims in the US is
“divided” infringement, that is, where different parties perform the steps
described.
Claim diversification, that is,
drafting different types of claims, is a good strategy to improve scope of
coverage by targeting multiple potential infringement scenarios.
Here are two examples of how
claim diversity can be used to improve the scope of protection:
Example 1: Patent for a software application or “app”
A high level approach to utilize
claim diversification in a patent for an app is:
1) Draft a set of system claims targeted towards
the implementation of the system on the client side or user device side: This
set of claims could be used to target either the producer of the app or the
vendor of the app, as these parties would have made and sold the app.
2) If the app performs functions on the
server-side, then it is worthwhile to draft a set of system claims targeted
towards the implementation of the system on the server-side. This set of system
claims could be used to target a service provider.
3) Draft one or more sets of method claims targeted
towards the producer and/or the vendor of the app, using the previously
described three step approach for writing targeted method claims towards
software app producers/vendors.
Example 2: Patent for a physical product
A high level approach to utilize
claim diversification for a patent for a physical product is:
1) Draft one or more sets of system claims targeted
towards the physical product: This set of claims could be used to target the
manufacturer of the physical product or the vendor of the physical product, as
these parties would have made or sold the physical product.
2) Draft one or more sets of method claims targeted
towards the manufacturer and/or the vendor of the physical product, using the
previously described three step approach for writing targeted method claims
towards physical product manufacturers/vendors.
As explained previously, the fact pattern of
each case may be unique; and the future state of US patent law is uncertain and
unpredictable. A further technique which can be employed by a patent strategist
to address both these issues is by filing continuation applications to keep the
family alive. The strategist can therefore adapt the claims to ever-changing
patent law and to address different fact patterns and potential targets.
