26 thoughts on “Use of Method Claims

  1. 9

    Software and computers are not in the “service economy.”

    Ha that’s funny. They nearly ARE the service economy going forward. My Google Assistant is in surely in the service economy. What else would it be rendering?

    The patent act’s current handling of methods cannot stand. We all know that.

    1. 9.1

      Service economy is a term of art — you are trying to make its use to encompass the colloquial.

      Not a new terrain for you — and the results are similar.

  2. 8

    Completely off topic…

    When you attorneys use extremely odd language to vaguely claim a general solution encompassing the prior art which your inventors reference in their non-patent publications, you’re branding your client in a way that can never be undone. I hope you guys know that, and I hope it’s not worth it.

  3. 7

    The top 30 patents owners for 2020 are dominated by the semiconductor and telecom industry accounting for 100,000+ patents. Perhaps the fundamental structures of transistors, capacitors, etc. and the nature of chips that power telecom are somewhat stagnant in innovation compared to the methods for making and operating those devices. Methods for depositing, etching, forming, etc. electronic components is not software, but methods for operating a telecom device (think 5G) probably are software focused. You will also notice that many are not US companies. I do not believe the method claim numbers have any relation to the US as a service economy. I believe it is all about electronics as the fabric for our future lives and the nature of current innovation in that space.

  4. 6

    Probably more to do with divided infringement and the difficulty in determining what the apparatus actually is that performs the method.

    The rise of the method step is a consequence of the rise of information processing.

    Remember that information processing is a physical process.

    1. 6.1

      Wouldn’t divided infringement concerns actually drive the equilibrium away from method claims? A “system” claim can hold up against divided infringement issues under which a method claim of equivalent scope will fail. NTP, Inc. v. Research in Motion, Ltd. 418 F.3d 1282 (Fed. Cir. 2005).

  5. 5

    The reason is Product by process don’t depend on process, while process with product claims do depend on product

  6. 4

    I have been claiming in the polymer and material science fields for 20 years and I never file an application that does not have a claim for the method of use of the claimed product. They are easier to get allowed and are at minimum a backup in case there is prior out somewhere out there for the product.

    In these “old” product areas it is getting tough to argue your product is not obvious. I would be surprised if our percent of method claims is not well above 50%.

    (I do not have a Twitter account.)

  7. 3

    What do I know about getting claims to issue in the USA, but at the EPO it is routine to run through to issue with a method claim (the steps of X-ing, Y-ing and Z-ing) even while the corresponding apparatus claim (means for X-ing, means for Y-ing, means for Z-ing) founders. Why, because the method claim is construed as purpose-limited, the apparatus claim not.

    So that method claim is not only narrower but also harder for the PTO to search. Isn’t that why there is an ever higher proportion of method claims going to issue, also at the USPTO?

    1. 3.1

      ???

      If by “purpose limited” you mean ‘intended purpose’ – intended purpose carries no patent weight in the US Sovereign.

      1. 3.1.1

        anon, let’s look at the invention of an XYZ cable clip. A claim to a method of clipping a cable with an XYZ clip is limited to the purpose of clipping a cable, is it not, to methods of clipping cables. Perhaps there aren’t that many cable clipping methods described in the database the USPTO will search?

        But what about a claim to the XYZ clip, as such? Is it limited to the purpose you have in mind for the clip as an article of commerce which you have in mind to purchase? It’s a claim to the clip per se, is it not? How many clips can the PTO Examiner find in the database?

        Might not the method claim go through to issue, even if you can’t get the clip claim through?

        You say “no weight to intended purpose”. Are you not saying the same as me, but in different words?

        That said, my hunch is that Paul Morgan’s suggestion has a much greater effect than mine, on the rise in numbers of method claims.

        1. 3.1.1.1

          The method of…

          ..clipping a cable…?

          Maybe a method of clipping an item…?

          Why “a cable?”
          How is that a ‘viable’ limitation (that is, have patentable weight)?

          1. 3.1.1.1.1

            Why a cable? How can that be given patentable weight?

            Item, you suggest.

            As I said at the outset, I don’t know about the USA (you tell me) but for me in Europe, a method of clipping a blood vessel and a method of clipping a train ticket would be subject to different patentability searches and therefore different examinations on their respective merits.

            But are we not wandering off at a tangent. What I’m saying is that if you can’t get your apparatus claim through to issue, there might be a useful method claim you can write that will issue. Are you saying that’s not right?

            1. 3.1.1.1.1.1

              if you can’t get your apparatus claim through to issue, there might be a useful method claim you can write that will issue.

              That is definitely true in the U.S. as well. Actually, everything that you have said about EP law from #3 through #3.1.1.1.1 has been also broadly true of US law as well.

              1. 3.1.1.1.1.1.1

                Thanks, Greg. Can’t say I’m surprised. If it had NOT been similar in the USA though, now that would have been a surprise.

            2. 3.1.1.1.1.2

              MaxDrei,

              Search for “intended use” at the searchable MPEP page:

              link to mpep.uspto.gov

              Hint: the great legal answer of “it depends” applies.

              1. 3.1.1.1.1.2.1

                Nudge, nudge. Wink, wink. Cocked eyebrow as well. Yawn. There you go again, with your murmured “intended use”, and “it all depends”. Am I supposed to be impressed?

                At the EPO, the original Guidelines for Examination used the classic fish hook/crane hook example. But I prefer my cable clip/artery clip hypo, if only because some fish are very big and some cranes are very small. Perhaps that’s why the curent edition of the EPO Guidelines has dropped the original fish hook/crane hook example.

              2. 3.1.1.1.1.2.2

                There you go again, with your “intended use”, and “it all depends”. Am I supposed to be impressed with your scholarship and compendious knowlege?

                At the EPO, in relation to “intended use”, the original Guidelines for Examination used the example fish hook vs crane hook. But I prefer my cable clip/artery clip hypo, if only because i) some fish are very big and some cranes are very small and ii) it is not a good idea to use cable clip material to make a clip for one of your arteries.

                1. Am I supposed to be impressed with your scholarship and compendious knowlege?

                  With all due respect, F you.

                  You stated: “What do I know about getting claims to issue in the USA, so I helped you out, and all you have is mindless snark in return.

  8. 2

    I think there is another, if somewhat related, explanation for the increase in method claims than the increase in services versus products businesses. Given the recent report that there has been a grown to roughly 60% of all new U.S. applications now being computer-related, and with many such specifications not disclosing any new apparatus to claim as such, this growth in method claims in applications is not surprising. Especially, for methods to do something new on the internet and/or be a potential software product which is only functionally or result described and claimed. Especially for business methods. [This has also lead to the unpopular increase in Alice-type 101-exception unpatentable subject matter ambiguity holdings for such method claims in patent litigation.]
    An additional advantage of method claiming is avoidance of loss of pre-suit [or direct notice] infringement back-damages under the patent marking statute.

    1. 2.1

      roughly 60% of all new U.S. applications now being computer-related

      Yep. That’s it.

      Of course, software can be claimed an apparatus, system, or CRM, but claiming it as a method has advantages (as you mentioned, Paul). Also, it’s easier to describe the steps of an algorithm as the steps of a method, while claims that recite other statutory classes require some shoehorning.

      Also, I find Dennis’s suggestion of “the U.S. as a service-based economy” is curious for several reasons:

      1) Fewer than half of U.S. patent applications are assigned to U.S. entities, and it’s been that way since 2009. (Source: “Number of Utility Patent Applications Filed in the United States, By Country of Origin,” hosted at uspto.gov.) Thus, any observations about USPTO filings *as a whole* reflects global industrial trends, not U.S.-specific trends.

      2) Wikipedia defines the “service sector” as business that involves “attention, advice, access, experience, and affective labor.” None of that has much direct connection with software.

      Software and computers are not in the “service economy.” They may be used there, but much and perhaps most software – particularly inventive software – is part of an actual software package or apparatus (OSes, applications, games, etc.) or industrial uses (generative design, control systems and process management, etc.)

      3) Even in the context of “software used in the service sector,” the impact of Alice has been to exclude “services” from patent protection. No citation provided because none needed.

  9. 1

    mmm…. despite Alice software inventions are dominating and are the core of our economy, for better or worse. Maybe this blog shouldn’t be so negative about protecting software.

    1. 1.1

      … good luck with that.

    2. 1.2

      But wait, does your premise support your conclusion. If “software inventions… are the core of our economy”*, and if this is true despite Alice, does that not suggest that patent protection is not especially relevant to software innovation? If software innovation proceeds apace regardless of patent protection, then one should be negative about protecting software. Why should society buy the cow (as it were) if we can get the milk for free?

      * I do not know whether the italicized “if” assertions are accurate. I am merely treating them as true for the sake of argument here.

      1. 1.2.1

        does your premise support your conclusion

        (as Greg inserts a false premise into his rebuttal, showing his anti-software patent bias)

        Hint: patents are NOT ‘just for those items that otherwise would not come about’

      2. 1.2.2

        Our hearts at the core of our health. Eating trans fat has not killed everyone. Trans fat is good.

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