The Rising Importance of Method Claims

The chart above shows the percentage of issued patents that have at least one method claim grouped according to the year of issuance of the patent. Here, I defined a method claim as one which includes either the term “method” or the term “process.”

As is apparent, the use of method claims has risen steadily over the past thirty five years.

32 thoughts on “The Rising Importance of Method Claims

  1. Method claims are in fewer patents because during litigation it is more difficult and/or less desirable to enforce a method claim versus say an apparatus or product claim.

  2. ‘As far as the PTO having a tarnished reputation, you are off the mark again. Tarnished in the eyes of whom?’

    Actual innovators and entrepeneurs in the fields of computing, finance, and business management in general.

    ‘Surely not in the eyes of “Actual Inventors” and the investors that wish to make a profit off their genius. ‘

    Yep. In the eyes of actual inventors. I somehow doubt that you are an actual inventor in either business or computing, or you’d know that.

  3. MM A.K.A Michael “Capitalism is evil” l Moore wrote: It’s not about useful inventions that work. It’s about “can I make money off this”,

    So, what would you replace capitalism with?

  4. “Actual Inventor” is a helpful pseudonym. It allows readers to appreciate the lop-sided, delusional, wishful thinking that is not unknown in “actual inventors” (JAOI, you might want to challenge that), and which is evident in the comments coming from “Actual Inventor”. Malcolm, I appreciated your riposte and took it that you deliberately responded in kind, as the best way to make your point (and not because you think that everything useful has already been invented).

  5. AI: “Here we have a new TV show called “The Shark Tank” where up start entrepreneurs pitch ideas to billionaire investors in hopes of getting funding for their businesses.”

    If anything, that would seem to support Max’s statement. It’s not about useful inventions that work. It’s about “can I make money off this”, which translates to: “can I sucker people into paying so much for this that I can turn a fat profit?”

    And all this leads to, e.g., “new drugs” that don’t help people but can be pushed on them by doctors with the encouragement of drug ads, “new software” that slows down your computer so you have to buy a new one, and “new business methods” that allow one company to sue another for ripping people off using its proprietary methods.

    “the investors that wish to make a profit off their genius”

    Are there any other kind?

  6. Max wrote: “Doubt there’s any threat to method claims in science and technology,”

    There are no method/process claims in science & technology if there is not a separate method/process category from the other classes. Think about it.

  7. Max wrote:

    “Quite the reverse: the patent system is already suffering an ongoing loss of reputation, exactly because it has been pushed out from technology into pure commerce.”

    Max, there is no separating science & technology from commerce. In the 21st century, commerce is the engine that drives it all. In fact here in the USA we have a Department of Commerce and under that department sits the USPTO.

    As far as the PTO having a tarnished reputation, you are off the mark again. Tarnished in the eyes of whom?

    Surely not in the eyes of “Actual Inventors” and the investors that wish to make a profit off their genius. Here we have a new TV show called “The Shark Tank” where up start entrepreneurs pitch ideas to billionaire investors in hopes of getting funding for their businesses. ( I believe the UK version is called the Lions Den).

    Anyway, whenever an entrepreneur has a patent they always get big money offers for the business and the patent. Clearly the patents are valued by those who matter most. And make no mistake about it. If not for “Actual Inventors” and the commerce they generate there would be no reason for a PTO, Patent Attorneys or patent laws.

    Never forget that Max!

    Never forget that.

  8. The curve appears to flatten out the past few years. My guess is because the PTO has been issuing far more method/apparatus restriction requirements the past few years, and applicants are electing the method claims and not filing divisional applications for the method claims. (Or if they are filing divisionals for the method claims those applications have not yet issued)

  9. “However, an examiner can’t make a subject matter rejection unappealable simply by labeling it an objection.”

    Actually, I’m guessing that the real purpose was to justify making the current OA final rather than non-final.

  10. No, I haven’t seen one of those, but I would love to see one if you could provide a serial.

    examiner6k@yahoo.com

    No rules against that which I am aware of. However, you could probably win on petition, or discuss the matter with the spe/examiner to find a way around it without bothering with an appeal.

    I also tend to agree with BigGuy. But how to word that in an appeal so as not to have it bounced back to you? I don’t really know enough about the appeals process from your side to say.

  11. Does it matter whether the machine is patented?

    No. But the scope of the discussion seems to be about chosing which form to file.

    “Also, what happens if there is a commercially viable non-patented process for making the product?”

    Then you have a problem with proving infringement, but not a problem with applying 271(g) if you can show that the patented process was actually used. There are some limitations on 271(g), but the lack of an avaliable non infringing substitute process isn’t one of them.

  12. “Speaking of Bilski, has anyone else seen Final Office Actions with new *objections* to the claims under 35 USC 101. Is there any rule against issuing objections that render an appealable matter unappealable?”

    I haven’t seen those yet. However, an examiner can’t make a subject matter rejection unappealable simply by labeling it an objection. If the Office Action is requiring you to change the scope of the claim, rather than just the form, then it’s a rejection, regardless of what the examiner labels it. Neither Bilski nor 35 USC 101 has anything to do with the form of a claim, so it seems to me that an objection “under 35 USC 101″ is necessarily a rejection.

  13. “One reason for using method claims is to support infringement actions via 271(g) when a patented machine is used overseas to produce an unpatentable product which is then imported.”

    Does it matter whether the machine is patented? Also, what happens if there is a commercially viable non-patented process for making the product? Is the importation still infringing?

  14. Speaking of Bilski, has anyone else seen Final Office Actions with new *objections* to the claims under 35 USC 101. Is there any rule against issuing objections that render an appealable matter unappealable?

  15. I think Paul’s suggestion is trying to get at the common scenario where the attorney tries to provide the inventor with method claims but the inventor decides against filing a divisional for economic or other reasons. In other words, focusing on where at least the attorney tried to do the right thing. Someone else will have to do the algebra.

  16. “For complete acccuracy, would one have to subtract those patents in which all the method claims were removed by a restriction requirement?”

    Removed claims wouldn’t show up in survey of issued patents.

  17. For complete acccuracy, would one have to subtract those patents in which all the method claims were removed by a restriction requirement? Not all of those result in divisional patents.

    I agree with above comments that the subject matter of patent applications in recent years, especially by major companies, has shifted to many more software-related and “business method” applications.

  18. Fascinating that the graph has a slope change at about the same time as State Street.

    Would it be possible to break down the data by art group?

  19. limitations in article claims which were accorded patentable weight 20 years ago are now deemed “intended use limitations” and not given weight, so applicants are filing more method claims.

    (Often those limitations if written as MPF elements would be given patentable weight but practitioners have been scared away from using MPF language.)

  20. One reason for using method claims is to support infringement actions via 271(g) when a patented machine is used overseas to produce an unpatentable product which is then imported.

    In markets where all of the producers are overseas, it is probably malpractice to draft only apparatus claims to a manufacturing machine as those claims will never be directly infringed.

  21. Brilliant insight from Lightning50. I gather that software developers come up with new “methods” rather than new “products” and it’s these methods that are driving the graph upwards. I realise that the patent statute contemplates patents for processes, but I’m not convinced that every new and ingenious method employed by, say, a used car salesman is patentable progress in a useful “art”, nor that every new and ingenious “method” created by a software developer should be patentable.

  22. “There is, nowadays, really no reason that nearly 100% of applications may as well have a method claim. Sadly. ”

    Sorry about that.

    Edit:

    There is, nowadays, really no reason that nearly 100% of applications shouldn’t go ahead and have a method claim. Sadly.

  23. Not surprising to me. 40 years ago, a small percentage of the people employed at my company were control software developers. Now it is a high percentage. When they invent, the basic claim is a method claim. Even many of the mechanical inventions are intended to be used in a particular way and will include a method claim.

  24. It strikes me that the number of patents with methods claim(s) is so low. I had expected it to be nearly 100%. In all the patent applications that I have drafted there is a method claim, such as a method for making a product or a method for using a product. And in cases where your product is not new or inventive, often only the method claims (directed to a new method of producing or a new use of the product) are the only patentable inventions.
    The fact that there are lots of patents without method claims seems to be due to the restriction practice in the US, where product and method claims are not allowed in one application (as being distinct inventions from the view of the searcher).

  25. All this reflects is the courts allowance of structural limitations to distinguish the method steps within a method claim. Thus turning method claims into nothing more than quaint farce of what it was intended to be. But at the same time increasing the ability to just throw them into the application even in applications that are strictly interested in an “invention” which is an “improvement” or “novel and nonobvious” structure itself.

    There is, nowadays, really no reason that nearly 100% of applications may as well have a method claim. Sadly.

    “A novice will concentrate on a product or apparatus claim, not realising that, if one were to think in method terms, the “invention” is actually a lot “wider” than the ambit of his product or apparatus claim.”

    No, that’s what someone thinking about reality thinks about. Unfortunately the courts in America overturned rationality with method claims slightly before this graph starts. I’m guessing England followed suit shortly thereafter.

    “The inventor alleged that were method claims included infringement would have been found. Judgment 7.5 million for the inventor.”

    I.e. it even makes sense for you prosecutors to have the law returned to its original state on the subject which I bring up.

    But, since nobody really cares what is reasonable, and what method claims were intended to be, and why, it is unlikely that anything will happen :(

    “However, it is always a gas to bring up in conversation with the neophytes. ”

    I see hazing is not unknown to you guys.

    “quantum mechanics, information processing and systems thinking never happened.”

    I wish you had even the slightest ability to comprehend what you are talking about at anything other than the surface level.

  26. Ken, do we have here a tension between

    i) claiming what is actually going to be traded, with

    ii) claiming what the invention really “is”?

    A novice will concentrate on a product or apparatus claim, not realising that, if one were to think in method terms, the “invention” is actually a lot “wider” than the ambit of his product or apparatus claim.

    Of course, it is all very different in the EPO, where claims to method, product, apparatus co-exist in the same patent, all being aspects of a single inventive concept. So, a comparable Dennis survey of EPO claims would be very boring.

  27. The importance of method claims I think was pretty much hammered out in that malpractice case back in 1999 of 2000. It was based upon a patent directed to the flexible flashlight holder. The patent only had apparatus claims. An accused device was found not to have infringed the claims of the patent. The inventor alleged that were method claims included infringement would have been found. Judgment 7.5 million for the inventor. Does anyone have the specifics of the case. I have long forgotten the details. However, it is always a gas to bring up in conversation with the neophytes. That coupled with MacKesson requiring the citation of Office actions often leaves them shaking and wishing they were in litigation.

  28. Doubt there’s any threat to method claims in science and technology, Actual. Don’t worry your head about that. I think that methods are up from 30% to 60% because of the arrival of claims to methods in commerce. Don’t agree with you about:

    “new frontiers in ……commerce that is so desperately needed in todays global economy”

    Frankly, I think pushing these new frontiers has done quite enough harm to the USA already, and so I cannot for the life of me see why more such pushing, through the patent system, will bring any benefit to the public. No harm will come to the patent system. Quite the reverse: the patent system is already suffering an ongoing loss of reputation, exactly because it has been pushed out from technology into pure commerce.

  29. The chart makes sense. This rise it seems correlates with the increase in knowledge and understanding of science and information processing. The fact of the matter is every invention is a process at its beginning and remains a process at its core, and that’s why it’s essential to keep processes as a legal category of patentable subject matter.

    The fact that we are well into the 21st century and have to go to the Supreme Court to determine if the USPTO has to acknowledge and grant patents on new, innovative, and non obvious processes is quite unbelievable to an “Actual Inventor” that lives in the real world of commerce, service, and production.

    And when reading the arguments of the USPTO, and its supporters, its as if the last 50 years of quantum mechanics, information processing and systems thinking never happened.

    Let us hope we have more enlightened minds on the SCOTUS than those that would slam the door shut on the new frontiers in science, technology and commerce that is so desperately needed in todays global economy and increasingly interdependent world.

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