You can listen to this article below:
How to Patent an Idea: A Guide for Beginners
If you read my blog on understanding patents then you know that only the claim section of an issued patent can be used to sue for patent infringement. If you read my articles on how to protect your patent idea, and how a product claim can protect your product, then you’ve got a good foundation for reviewing claims.
Now it’s time to discuss method claims, also referred to as process claims. Generally, method claims are claims that recite one or more steps. They are typically used to protect methods of making a product, using a product, or providing a service. Method claims are usually considered much weaker than product claims because method claims can be difficult to enforce.
Infringing Methods Are Harder To Detect
Unless the method is being practiced in view of the public, the infringement of a method claim is more difficult to detect. The first step of any patent litigation is usually suspecting that a competitor is practicing your invention without your permission. Detecting an infringing product is usually pretty straight forward. It’s usually on the shelf right beside yours. And on sale!
Let’s say for example you are a mid-sized medical device company. You see a competing product being offered for sale, and suspect that it might infringe on one of your patent claims. Proving that the product infringes your patent claim is as easy as buying the product and handing it to your patent attorneys.
In contrast, if you see a product, how can you figure out the exact process used to make it? How can you prove in court that your claimed process was the exact process used to make the product?
In practice, you often learn that a competitor is infringing your method claim when a former employee of your competitor tells you how they are making their product. Proving that their method infringes a claim of your patent might be established by legally requiring them to hand over the training manuals used to create their medical device. How will you detect and prove infringement if your competitor’s product is made overseas? As you can see, proving the infringement of a method claim can be challenging.
It’s Easier To Design Around Method Claims
You can think of a claim as the fence line that protects your invention. Imagine that you want to keep competitors from reaching the top of a mountain. A product claim would be like fencing off the land at the top of the mountain. If your competitors step on your land, they infringe. A method claim would be like buying up and fencing land to block off convenient paths to the top of the mountain. If your competitors step on that part of the path, then they infringe. The problem is that there is only one mountain top, but there are many ways to reach the top of the mountain. How much is it worth to you (or your business) to block the easiest paths up the mountain?
Claim 1. A method of making a sandwich comprising:
applying peanut butter onto a surface of a first piece of bread;
applying jelly to the peanut butter; and
bringing a second piece of bread into contact with the jelly.
This claim might seem to protect the method of making a peanut butter and jelly sandwich because many people use this method to make a PB&J. However, remember the story of Martin Luther from my third blog post How to Protect Your Idea, Patent attorneys are claim fundamentalists! Think of what steps the words literally require. Ask yourself if you could get the same product or result using a different method?
A competitor might design around this claim by applying peanut butter to one piece of bread, applying jelly to the other piece of bread, and then bringing the peanut butter and jelly coated sides together. Generally, the steps of a claim can be performed in any order unless the language of the claims requires a specific order of the steps.
In the example of Claim 1 seen above, it is required that applying jelly to peanut butter occurs before the second piece of bread is brought into contact with the jelly, because the only way to bring the second piece of bread into contact with “the jelly” was for the jelly to already be in place.
If the order of the steps in your method can vary, then the claims should recite the steps in a way that allows for them to be performed in any order.
Another thing to consider is that a competitor must perform all of the steps of the method claim to directly infringe that claim. Suppose that a competitor discovered that a third party was already selling peanut butter sandwiches without jelly. Your competitor could buy the peanut butter sandwiches from the third party, then add the jelly to them, and sell them as peanut butter and jelly sandwiches. This design around would not infringe Claim 1 because your competitor did not perform all of the steps of the claim.
Namely, your competitor did not cause the step of “applying peanut butter onto the surface of the first piece of bread.”
Generally, the fewer the steps, the broader the method claim. Also, it is important to avoid method steps that make an intermediate product that can be purchased (e.g., the peanut butter sandwich). The best strategy for method claims is to reduce the method to one or two steps that are essential and as close to the final result as possible.
Going back to the mountain analogy – if you’re going to block the paths up to the top of the mountain, it is best to block bottlenecks that are as close to the top as possible.
In Claim 1.
A method of making a sandwich comprising:
bringing peanut butter into contact with jelly, wherein at least one of the
peanut butter and the jelly is in contact with bread; or
bringing a mixture of peanut butter and jelly into contact with bread.
This method claim would be infringed by a single step that is just before the formation of the product. Try to think of a way around it.
Take-Away Strategy: If you can imagine a variation of your innovative method, ask your patent attorney if your claim would cover that variation. If your patent attorney cannot make time to answer these questions, then you should make time to find another patent attorney.
At Childs Law our clients only work with two highly experienced patent attorneys that work together to draft your patent application. We take our time and work to explain how your claims are designed to protect your invention and your business.
If you’re not sure that your product-making methods are protected, give us a call at (832) 621-0353. It won’t cost you a thing. In the next article in my eight-part blog series: How to Patent an Idea: A Guide for Beginners, I’ll discuss how to prevent design around.