Think before You Write:
Considerations for Drafting
Claims of Software Patents
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Jinseok Park
University of Sheffield,
Department of Law
E-mail :lwp02jp@sheffield.ac.uk
March 2004
Think before You Write: Considerations for Drafting Claims of Software Patents
Jinseok Park
Think before You Write:
Considerations for Drafting Claims of Software Patents
Jinseok Park1
1. Introduction
Over the last few years, the number of patent applications in the area of software-related
inventions has increased rapidly. Software patents, including business methods patents
and Internet related patents, have become the focus of controversial issue among the
software industry and IP practitioners. Many software patents have been granted by the
EPO, USPTO 2 , and JPO and there have been many law suits regarding patent
infringement.
Software contains abstract manifestation rather than clear description. In many
cases, flowcharts, pseudo-code and other graphical methods are not enough to illustrate
the unique function of the software. Unlike a hardware invention, only a small part of
software inventions “reside” within a single machine and this makes it difficult to prove
direct infringement of the invention.
Successful prosecution of software-related inventions is heavily dependent
upon how well the specification and claims of the patent are constructed and drafted. In
preparing a patent application, it is required for the software patent drafter to thoroughly
understand both hardware and software from a technological, business and legal
perspective. The drafter also needs to consider the dynamic and ever-changing software
industry so that the software patent can be viable and enforceable throughout the term
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of the patent.3 Furthermore, given the emergence of business methods inventions, it is
crucial to draft claims that can be tailored for the client's business needs. This is why
drafting a software patent is difficult and complicated.
One of the biggest challenges for the software patent counsel face is the barrier
to patentability. Rules and regulations governing the patentability, and the claim
interpretation of software-related inventions may vary in different jurisdictions. In the
EPO, USPTO and JPO, numerous court decisions and resultant guidelines have
provided more certainty as to the patentability of computer-implemented inventions.
This paper provides the strategies for drafting and prosecuting software patent
applications in the EPO, USPTO and the JPO in order to achieve broad interpretation of
the claims both now and in the future.
2. A Basis for Drafting a Patent Specification
Although an invention is eligible for patenting as a matter of substance, the invention
may be rejected if the form of the patent application expresses the invention incorrectly.
Therefore, drafting the substance of an invention in a correct form of specification and
claims will be the crucial factor for successful prosecution of software or any other
patent applications.
The embodiment or embodiments of the invention need to be detailed to the
degree of providing substantive support to the scope of protection desired, giving
insight as to how to put into practice the main idea of the invention. US patent law
requires inventors describe the best mode of operating the invention at the date of filing
the application.
4
This prevents inventors from withholding some essential or
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advantageous aspect of the invention while seeking to obtain a valid patent a secret.
However, the inventor need not update the best mode although better modes are found
after the initial filing.5 In Europe or Japan, there is no requirement that a best mode be
disclosed. Even though at least one way of practising the invention must be included in
the application in the EPO6, it is not necessary that the way must be the best way, or
even a good way.
Rather, it is sufficient that the invention described in the
specification will enable a person skilled in the art to make the invention or to perform
the action as claimed.
In preparation for the specification of computer-implemented inventions, a
good description of the structure and operation of the program is important. Source
code can be used to view the structure and operation of a computer program, and may
be included in the specification to ensure that the specification contains enough
information to allow the invention to be performed. Although there is no requirement
for the patent specification to include the charts or source code listings7, it is helpful to
include some or all of the source code in some cases.
However, it is not necessary to disclose the software program to meet the
written description requirement 8 where the functions of the software program were
readily apparent from the specification and one skilled in the art could generate the
necessary software program to implement the disclosed functions. 9 The level of
ordinary skill in the art may be determined by examining related prior art to see which
functions of the program are well known. Therefore, it is desirable to determine, before
drafting the specification, which parts of the program would be easily understandable
and obvious to a skilled programmer and which would be not. It is also important to
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know the minimum software programs that are needed to fully describe and support the
invention.
For complicated software applications, it might be desirable to include function
block diagrams that illustrate the hardware and the structure of the software in terms of
the files and functional modules stored in the memory when the software is loaded. In
many cases, the block diagrams are used to show essential connection among the
processes and links between each of the processes and the relevant data structures.10
Together with the block diagrams, flowcharts are also helpful for showing a softwareimplemented method as a sequence of steps or processes. In order to make the features
of the software clearly understandable, the flowcharts describe the functions of
performed steps when the software is executed. The combination of the function block
diagram and flowchart will serve as an important visual aide and facilitate the
description of particular software, enhancing the understanding on the main features of
the invention. In addition to those, data structures, signal waveforms and graphical user
interfaces will be useful to show the operation of computer-implemented inventions.
While preparing for a software patent application, a patent counsel needs to
work closely with the inventor and software engineer to analyse the data structure and
the functions of the software, emphasising some essential technical contributions or
advantages of the software. In particular, for some controversial business methods
inventions, it is important to ensure that the technical improvements which the invention
provides are identified and clearly presented to overcome the possible rejection of the
application.
3. Considerations for Drafting Claims
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3.1. The Comparison of the Practices in the EPO, USPTO and JPO
Fundamentally the USPTO, EPO and JPO have the common notion that a patentable
invention should be new and non-obvious. Moreover, all three Patent Offices seem to
agree that the substance of a claim should take precedence over the form.
In June 2000, the three offices published a report11 on the practices of business
method related inventions in an attempt to harmonise the patent practices among
themselves. They reached a consensus on the general concept of patentability for
computer-implemented business methods and the result is as follows.
─ A technical aspect is necessary for a computer-implemented
business method to be eligible for patenting. This technical
aspect should be expressly claimed in the EPO and JPO whereas
the technical feature may be implicitly recited in the claim in the
USPTO
─ To “merely automate a known human transaction process using
well known automation techniques is not patentable.” 12 The
USPTO and JPO stated that an invention is lack of inventive step
if it is to systematise existing human transactions in an applied
field by means of a computer, and the transactions are such that
they could be realised by a routine application of usual system
analysis and system design technologies.13
Nonetheless, each Office still takes a different stance on the extent of the
requisite “technical nature” to be a patentable subject matter. 14 It appears that the
USPTO permits the broadest possible scope for a software patent, focusing on the
tangible result rather than the technical contribution of the invention. In fact, there is no
requirement in the USPTO that computer related inventions have a “technical character”
or solve a technical problem. Therefore even a business method itself is patentable if it
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merely produces a “useful, concrete and tangible result”. In this regard, the USPTO is
more liberal in its approach to business method patents than the EPO or JPO.
Despite the amended examination guidelines and the cases which allowed the
patentability of computer programs, it seems that the EPO still holds a more
conservative position on the patentability of software and business methods inventions
than the USPTO. The EPO has the highest “technical nature” requirement.
In other
words, the “technical character” with a technical contribution is essential to be a
statutory invention in the EPO and the technical contribution should be non-obvious. In
the EPO, the mere combination of a process and a technical apparatus (i.e. software
loaded onto a computer), in its normal sense, is not enough in itself. For example, a
scheme for organising a commercial operation, being of a purely commercial nature,
would not be protected by patents in the EPO because it would lack technical character
even if the scheme runs on a computer.15
In contrast, the scheme is patentable in the USPTO the only requirement being
that it produces a “useful, concrete and tangible result”. In this regard, it is desirable for
IP practitioners to try to bring out the technical features of the invention when preparing
patent applications in Europe. Although it remains to be seen, it is more likely for an
EPO patent to pass the US examination standard than the other way round because an
invention with technical character has an increased possibility to meet the requirement
of the USPTO by producing a “useful, concrete and tangible result”.
As can be seen from the chart16 below (Figure.1), the patent applications of the
EPO that correspond to the granted US business method patents, were not allowed as
frequently as in the USPTO especially in 1997.
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Figure. 1
Business method patents at the USPTO and EPO
Grant years 1980-2002
1,200
USPTO grants
USPTO grants also applied at EPO
USPTO grants also applied and granted at EPO
1,000
800
600
400
200
0
1980
1982
1984
1986
1988
1990
1992
1994
1996
1998
2000
2002
Note: Business method patents defined as those classified in USPC 705.
Data on recent EPO grants is still partial. Patents are sorted by grant
rate.
Source: OECD patent database, May 2003.
Although, the data of the EPO is limited to the year 1997, given the conservative
practice for business methods inventions of the EPO, it is thought that this trend would
have continued even after the year 1998.
The JPO seems to take a middle road.17 Japan takes a similar legal stance as the
EPO, but on a less extreme ground. Although the JPO requires a technical aspect, this
can be achieved by drafting a patent claim to specify a computer or by combining a
process with a technical apparatus.
Accordingly, the actual implementation of
patentability appears to be more similar to the United States than to Europe.
Nevertheless, there is a great difference in the practices on inventive step between the
US and Japan. Unlike the practice of the US, the utility of an invention cannot be used
for justifying the inventiveness of the invention in Japan. Instead, technical effect or
technical contribution is required as a ground of inventive step and this is quite similar
to the practice of the EPO.
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To summarise, while business method claims that recite the typical steps of a
method may meet the utility requirement of the USPTO, they may not be allowed in the
EPO or JPO if there is no expressed recitation regarding computer hardware,
technological features, and technical effects. Software patent drafters must understand
the essential requirements of patentability of software in each jurisdiction and consider
modifications to their patent specifications in accordance with the guidelines and the
case law of the country where a patent is being sought.
3.2. Claims with Broad Scope of Interpretation
[1] Considerations for Broad Literal Interpretation
With broad claim interpretation in mind, claim drafters need to enhance the scope of
literal infringement. Literal infringement examines whether the alleged device falls
exactly within the boundaries of the claims of the patent by comparing the textual
meanings of the claims with the features of the challenger’s device. In an attempt to
provide a basis for broader claim interpretation, patent counsels should consider the
followings.18
More than any thing else, it is desirable to avoid using words that can lead to
narrow interpretation. For example, statements including words like “critical”, “must”,
“required”, “necessary”, “only”, “always” and “never” might be interpreted narrowly.
For the same reason, using phrases and arguments like “In order to satisfy the objects of
the invention…” 19 ,
“All of the embodiments include…” and “The invention
includes…” are likely to lead to narrow interpretation.
It is also better to avoid
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expressions such as “characterised by…” as it limits claims by specific environment or
use unless this is desired. Unusually long preambles may not be appropriate for the
same reason20.
Transitional phrases identify the invention and provide the technical context of
the invention, linking the preamble and the body of the patent claim.
Typical
transitional phrases in claims differ by countries. For example, one of the transitional
phrases normally used in the US is “…wherein”. Claims in the EPO prefer the phrase
“…characterised in that…”.
In the EPO, the Guidelines for Examination states that21:
While in everyday language the word “comprise” may have both the
meaning “include”, “contained” or “comprehend” and “consist of”, in
drafting patent claims legal certainty normally requires it to be interpreted
by the broader meaning “include”, “contained” or “comprehend.
There was a case in the Board of Appeals of the EPO that touched on the meaning of
“comprising”. The Board held that the term “comprising” may be used legitimately in a
claim where the intention is not to define a total composition, but instead to identify one
essential constituent thereof.22 In this context, use of open transitional phrases such as
“comprising” are better than closed transitional phrases such as “consisting of” or
“which consist of”. This is because the former phrase can be interpreted to encompass
all other devices that include all of the elements and limitations of the claim whereas the
latter is interpreted as only something that has exactly same elements and limitations of
the claim.23
[2] Considerations in view of the Doctrine of Equivalents
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In the US, in the case of a patent infringement inquiry, two stages of analysis are
normally performed by courts to investigate the infringement. The first stage is literal
infringement and the second one is the doctrine of equivalents infringement. If no
literal infringement is found, the second step of analysis is applied: the doctrine of
equivalents infringement. At this stage, claims are interpreted beyond their strict literal
meaning and the scope of the claims may be extended to the features that are equivalent
to those literally claimed. This suggests that the exclusive rights provided by a patent
are based on, but not exclusively limited to, the language of its claims.
The doctrine of equivalents arose from judicial efforts to stop competitors who
would make insignificant modifications and substitutions to the claimed invention,
although adding nothing, in order to avoid literal infringement.24 However, courts have
struggled, while using the doctrine of equivalents, to balance the competing public
policies of avoiding a fraud on the patent and the need for reasonable certainty for the
public regarding the scope of the patentee’s exclusive rights.
Since there is no international standard as to whether to adopt the doctrine of
equivalents or not, this issue is left purely to national legislation. While the doctrine of
equivalence has been extensively applied to patent cases in the United States, Europe
and Japan have been less active in adopting the doctrine for interpreting claims. Given
the significance of claim interpretation in patent infringement, the following subsection
highlights the claim drafting considerations in view of the doctrine of equivalents.
Since the doctrine of equivalents has been predominantly asserted in the US, the
following will be especially suitable for US patent applications.
On the whole, claim terms are construed according to their ordinary meaning,
unless the patentee has defined those terms “specially” within the specification or file
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history. 25 Numerous court decisions state that patent claims must be given their
ordinary, accustomed, or dictionary meanings unless examination of the specification,
prosecution history, and other claims indicate that the inventor intended otherwise. 26 In
this context, if possible, using a technical and generic term widely known and used in
the art will prevent unintended interpretation of the invention.
When drafting a patent with the doctrine of equivalents in mind, it is necessary
to include specific examples of the generic term and to list equivalent structures. It is
also advisable to describe components of the invention generally followed by a list of
possible alternatives, showing them in drawings. Moreover, it should be emphasised
that the listed devices fall within the generic art-recognised term and are considered to
be readily interchangeable with the devices of the embodiments.27 The patent counsel
needs to consider whether he can provide a broad definition in the specification for each
claim element. For example, a chair can be defined as “a seat for one person, which has
a back, usually four legs, and sometimes two arms.”28
According to the doctrine of "prosecution history estoppel", an amendment of a
claim limitation may restrict that limitation within its literal scope and prevent the scope
of the claim from being extended to devices or methods using an equivalent to the
limitation. In most cases, such an amendment would have been made to overcome a
rejection by a patent examiner based on prior art while prosecuting the patent. This
indicates that the subject matter that was surrendered during the prosecution of the
patent may not be resurrected through the concept of equivalence. Therefore, in view of
the doctrine of prosecution history estoppel, it is essential to minimise narrow claim
interpretation by avoiding disclaimers or disavowals of literal claim scope.
The patent drafter needs to be careful with the meaning of even small words
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such as indefinite articles “a” or “an”. The Federal Circuit usually interprets “a” as
meaning “one or more”.29 But, in the KCJ Corp. case30 it held that sometimes “a” is
limited to “one”. It may be necessary to explain the meaning of “or”, whether it means
to encompass one or another or both.31 Furthermore, describing the component of the
invention with words like “conventional” or “existing” is risky since it may limit the
feature to existing examples.32
Consequently, if necessary, it is desirable to define the words or clarify the
meaning of the words to avoid ambiguity. Furthermore, it should be noted that unclear
terms can be included in the specification, but they cannot surpass the value of the claim
terms with clear meanings.
In the US, each and every element of the claim must be present in the
defendant’s device to assert infringement in terms of the doctrine of equivalents. If any
element is missing, however, the doctrine of equivalents will usually not be applied. In
this regard, claims filed through straight translations from Europe or Japan, whose
courts are less active in adopting the doctrine of equivalence infringement than the US
courts, often contain extraneous terms and elements unrelated to the core of the
invention.33 This may cause unnecessary limitations on the scope of claims and make it
difficult to apply the doctrine of equivalents.
Last but not least, the claim drafter should make sure that he or she has claimed
all disclosed subject matter. This is because the patentee cannot assert the doctrine of
equivalents to cover the disclosed but unclaimed subject matter in the specification.34
[3] Considerations in view of Functional Claim Language
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Given that a means (or step) plus function limitation is interpreted in a manner
consistent with the specification disclosure, it is essential for the applicant to disclose
various alternative structures, materials, or acts for performing the function to provide a
broader interpretation for infringement.
If there are no identifiable corresponding
structures in the specification, however, the use of functional language should be
avoided because the application may be rejected due to the indefiniteness.
In order to cope with possible variations made by the infringer, it is necessary to
present numerous ways or modes by which the structure of the invention can be
embodied without departing its core subject matter and scope. This will help broaden
the range of structural equivalents and enhance the possibility of suing successfully for
infringement.
In particular, the following will be especially effective for US applications. After
Alappat, it is especially important to describe in a specification the hardware on which
the software is executed if a software-related invention includes means-plus-function
apparatus or system claims.35 Otherwise, the claimed invention will have no structure
within its specification that implements the various means of the claims and may
encounter an indefiniteness rejection under §112, ¶2.36
With the doctrine of prosecution history estoppel in mind, patent drafters need
to avoid the statement that may lead to limit corresponding structures or equivalents
while prosecuting the application. If a US applicant’s intention is to avoid invoking
§112, ¶ 6, patent counsel should not use the terms that can be construed as functional
limitation, instead should try to recite the limitation that includes a definite structure in
the claim.
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3.3. Claims and Infringement: Need for Targeted Claims
The exclusive right of a patent is a middle course determined by the interaction between
the claims and the law of infringement.37 The subject matter to be protected can be
defined by the claims of the invention. On the other hand, human activities which can
be a basis for infringement are determined by the law of infringement. Finding a valid
and clear evidence of patent infringement is crucial to patent enforcement. Patent
infringers may refuse to pay for a technology licensing until they are confronted with
the evidence of their infringement. Thus, one of the important objectives for
customising the claim set is to target the competitors’ activities under direct
infringement, while still remaining on the statutory side of the invention.
Inadequate claim drafting may not permit the effective enforcement of the patent
by confining it only to indirect (contributory) infringement and allowing the competitor
to be able to assert a substantial non-infringing use of the patent. However, targeted
claims make it easy to prove the infringement against any challenger’s variations
similar to the patented devices or processes. Directing the claim on visible aspects of
the invention, such as the use of a web server or a computer, other than invisible objects,
often helps to detect infringement easily.38
However, there are a number of difficulties in proving infringement, particularly,
in the area of software-related inventions. One of the problems with the claim of a
software-related invention is that some elements of the entire system or some steps of
the entire process may be implemented by different parties in different countries. For
example, the central server of a transaction system may be located in the UK whereas
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the client terminal of the system is in the US so that the server and the client
communicate each other via the Internet.
Although it is still disputable, it is normally required in most jurisdictions that all
the infringing acts must occur in the same country in which the patent application is
being sought in order to assert patent infringement. This is especially attributed to the
nature of patent protection which is provided on a country-by-country basis.
Furthermore, patent law of each country only takes effect within its own boarders and
the patent right is usually enforceable in the domestic market where a patent was
granted. Consequently, if an invention has four elements (steps) A, B, C, D, there will
be direct infringement only if all of those elements (steps) are performed in the country
where the patent exists. In this respect, any claim that involves the communication of
data, or even the movement of goods and services, is at risk of having limited
applicability if the invention claims only an entire system or process carried out in more
than two countries.39
Nonetheless, rapid development of Internet-related technology has raised a
question as to whether the supply of a computer program, from country A in which the
patent of the program does not exist to country B in which the patent does, can
constitute infringement of the patent in country B. Another question can also be asked
as to the choice of the court by which infringement of the patent will be discussed and
determined. Even though it is a little early to comment on these questions at this stage,
Beresford suggests that an owner of a website, who operates his server in country A,
may be liable for infringing the patent of country B if he promotes download of the
patented program to the users in country B, or sells the program to the customers in
country B through his website. This is because the owner’s act is deemed to be
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equivalent to offering and selling the patented program to the customers in country B,
which are prohibited by the patent law of country B.40
In anticipation of those issues above, patent drafters should examine whether each
claim component can be viewed from the perspective of its separate location in a
country protected by the patent. 41 In addition, claims should be crafted so that the
step(s) performed by the competitor’s server, located at one extraterritorial station, may
constitute indirect infringement, once direct infringement of the competitor’s customer
is established in the country where the patent is enforced. These strategies will enhance
the enforceability of a claim against any potential infringers.
Along with the consideration of the territorial effect of a patent, the claim drafter
needs to make sure whether any of the individual system components of the invention
can be defined in different claims without causing a novelty problem. For example, if
an invention is related to a communication system between a client and a server, the
invention can have multiple independent claims drafted from multiple perspectives:
-
a claim for a server or an Internet service provider perspective;
-
a claim for a client or a user perspective;
-
a claim for an intermediary perspective, such as a data signal transmitted
between the server and client
-
a claim that can cover the joint activities of the client and the server.42
In contrast, the exclusive right given by the patented invention will be diminished if it
only protects the server and client in combination. This is because infringement act
may occur either at the point of the server or at the point of the client independently, and
the combination claim of the server and client will not be able to cover the infringing
act of an each element of the invention.
However, protection scope of an invention will increase if the invention is
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characterised from as many perspectives as possible. According to Beresford, claiming
an independent claim for the individual products and devices which may be
independently made and sold is particularly appropriate for the patent applications in
Europe of which the patent system is based on a peripheral rather than a central
claiming system.43 In general, the peripheral claiming system defines the exact scope of
the invention, whereas the central claiming system focuses on the nature of the
inventor’s contribution to the technical field of the invention instead of clarifying the
precise scope of the invention.44 Thus, in order to have a claim to individual system
components of the invention, it is important to analyse that which novel apparatus or
product could be made and sold separately in the relevant market.45 To that end, the
claim drafter must confirm that all the significant features of an invention and their
advantages are specified separately in the specification.
If a claim has two elements A, B, two independent claims can be drafted either
for the element A or the element B, so long as each element of the invention is novel.
Despite the advantage of separating the components of an invention into different
independent claims, one of the shortcomings is that it may cause a novelty or inventive
step (non-obviousness) problem while prosecuting the patent application.46
On the whole, it is more difficult to prove direct infringement of the process
claim that involves the steps performed by more than two parties than the claim
describing the action of a single party. If a claim consists of three major elements (A, B,
C) and two of the elements A, B are conducted by one party while the other party
independently conducts the element C, neither of the party will infringe the claim
directly. Patent drafters should, therefore, remember that their primary goal is to set out
the claims directed to “one” party at only “one” station.
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Another difficulty in proving direct infringement of a patent is that several aspects
of a computer-implemented invention may be provided or implemented by a customer
of the patentee.
If the process claim of an e-commerce patent involves active
participation by one of the patentee’s own customers rather than the competitor, the
enforcement of the patent may become complex. The patent attorney should attempt to
draft claims that can cover the provider of a service, i.e., a competitor of the patent
owner, rather than the end-users who are likely to be individual consumers.
In
particular, it is crucial to take a more cautious approach when drafting a method or
process claim, in order not to require a customer’s activity in such a way as to make it
an essential element of infringement. Given that customers of the patentee rarely
provide a large royalty base and, after all, may become the potential customers of the
patentee, software patent claims must be crafted in order not to require a customer’s
activity in such a way as to make it an essential element of infringement
Nonetheless, there are some circumstances in which it is better to focus on direct
infringement by a customer of the competitor. For example, if it is difficult to prove
direct infringement by the competitor itself, it is advantageous to investigate the
customer’s activity. This is because the consumer’s activity is normally easier to detect
than that of the competitor.47
Another example is related to the case where the server of the competitor is
placed overseas and therefore out of the reach of direct infringement under national
patent law. If one of the claims is targeted for the domestic customer’s activity in the
country where the patent was issued, the customer may be liable for direct infringement
of the patent. Subsequently, only if direct infringement by a customer of the competitor
can be proven, the competitor (the operator of the server or the service provider) who
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conducts business with the customer is likely to be liable for indirect (contributory)
infringement. The patent holder now can sue only the indirect infringer (competitor)
instead of the customer.48
The above examples show how difficult it is to identify direct infringement in
software and the Internet related-patent cases.
Consequently, prior to drafting the
claims, the claim drafter needs to identify who is the eventual target of infringement and
who could provide the maximum royalties to the patentee.
4. Comprehensive Claiming Strategies
Various cases and examination guidelines for computer-implemented inventions have
suggested guiding principles in drafting specifications and claims of a patent application.
Therefore, any possible objection from patent examiners, when prosecuting a patent
application, will be minimised by conforming to the following principles.
Despite the unique legal situation and practice in each jurisdiction, most
claiming strategies would be commonly applicable to all the three patent offices (the
EPO, USPTO and the JPO), while some of the strategies could be only effective in one
jurisdiction. In this regard, the claiming considerations for software patents can be
divided into two categories:
(1) the strategies that are universally applicable to the patent prosecution in
the three patent offices and;
(2) the strategies that can be considered only for the single jurisdiction.
4.1. Common Claiming Strategies
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a) Consideration of statutory invention issues.
The first goal should be to pass the patentability test especially in this area of
technology. When filing multinational applications, the claim drafters should be fully
aware of different examination guidelines for examining the patentability in different
jurisdictions. The critical consideration to overcome the statutory issues is directly
related to how the invention is claimed
More often than not, physical aspects of the invention help to increase the
likelihood of compliance with the statutory subject matter. Thus, it is necessary to focus
on the real or physical nature of the invention so that it can provide a prima facie
technical effect advantage for the invention. Because most apparatus or machine claims
include such a physical aspect inherently, it is advised to include at least one apparatus
or machine claim.
When it comes to patentability of a process claim, it is important to describe any
physical transformations (for example, changes in the physical state of the machine) that
can occur as the part of the process, and to show how the claim is applied to physical
entities. It is also important to have the process claim directed to the steps performed
within a computer, and to emphasise the functional relationships of the steps within the
process. Reciting mental or physical steps performed by entirely or partly by a human
being is quite risky, since those steps are highly likely to be regarded as non-technical
features or natural laws themselves. It is particularly important to designate a specific
field of use for the patent applications involving an algorithm. Overly broad statement
without any limitation to a specific use is likely to cause an objection due to the lack of
definiteness.
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Think before You Write: Considerations for Drafting Claims of Software Patents
Jinseok Park
When a data structure is claimed, its physical nature should be emphasised. In
addition, the patent drafter must consider whether a claim for data structures can be
directed to a machine or a system, since a claim for data structures may be objected as
an abstract idea if it is described as a method.
For a business method-related invention, it is important not only to present the
business method concepts but also to articulate the invention in terms of technological
problem that the invention resolves and technological innovations for addressing that
problem.
b) Built-in responses for any possible rejections.
Given the fact that software patents enjoy relatively broad scope compared to other
technological areas of patents, patent offices are apt to scrutinize the patent applications
for computer technology. For example, the USPTO announced that it will require a
“Second-level Review” of allowed applications in Class 705, with an eye toward
ensuring compliance with search requirements, reasons for allowance, and a
determination whether the scope of the claims should be reconsidered. 49 This means
that software related inventions might often appear to lack inventive step during
examinations. Because it is prohibited to add new features to the specification of an
original invention during amendment, it is desirable to make room for a claim to be
amended to cope with any possible rejections that may be given after the filing date of
the application.
In anticipation of receiving an obviousness or inventive step rejection, it is
necessary to include, in the specification, “built-in responses” or “fall back positions”
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Think before You Write: Considerations for Drafting Claims of Software Patents
Jinseok Park
by which future amendments can be based on. 50 Although the scope of the revised
claim in view of the relevant prior art would be narrower than that of the original claim,
there could be some claims that are still commercially viable.51
With this in mind, the patent drafter should consider providing the basis of the
potential amendments in the original application. It is advised to articulate at the outset
a hierarchy of inventive concepts and to include, in the description, as much
intermediate concepts as possible between the broadest (the main-invention) and the
narrowest embodiment (the potential sub-invention in case of an objection from the
examiner) of the claimed subject matter.52 By doing so, the IP practitioner will be able
to respond flexibly to any possible rejections from the examiner without unduly limiting
the scope of the claims.
c) Diversity of claims in scope.
The claim drafters should include as much diversity in the claims as possible.
This helps to vary the scope of the software claims among narrow, medium, and broad
scope. By drafting claims of at least two different scopes of protection, the patent
claims will be harder to invalidate as a whole, while infringement of the claims will be
maximised.
A strategy to draft claims with the possible combinations and sub-
combinations of the invention may help the patent owner by providing more complete
relief targeted at the most significant infringing activity.
d) Use of different claim formats.
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Think before You Write: Considerations for Drafting Claims of Software Patents
Jinseok Park
Each claim format has its own strengths and limitations. Providing a wide variety of
claim formats will maximise the enforceability of the patent by covering various aspects
of the invention. Therefore, it is necessary to include a variety of claims that can cover
all the different infringers from software manufacturers to its distributors. The patent
drafter should consider whether the following formats of the claim are possible to use
for the claimed patent application:
-
a system claim that embodies the invention;
a process claim listing the steps of the invention;
a computer readable medium claim containing the software that
will cause the invention to be carried out;
a data structure claim embodied or stored in a computer readable
media
a computer data signal claim embodied in a carrier wave
e) Minimum use of expressions that can lead to narrow interpretation
To avoid undue limitation of the claims, it is desirable to minimise the possibility that a
court will consider particular elements in a claim as being essential. Thus, expressions
or phrases in claims must be scrutinised because they might be interpreted narrowly.
Even after drafting the claim, it is necessary to check whether some words can be taken
out of the claim, while still preserving the distinction of the claimed invention from the
prior art.
Especially, the following is the basic principles for broad literal interpretation.
-
In describing the invention, patent attorneys should always remember to
use exemplary and broadening terms instead of mandatory words.
Expressions may limit claims by specific embodiment or use should be
avoided.
The open transitional phrase, “comprising”, is better than the closed
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Think before You Write: Considerations for Drafting Claims of Software Patents
Jinseok Park
-
transitional phrases, “consisting of”.
Unusually long preambles may not be appropriate.
It is crucial to make sure that the specification supports a desired broad
claim interpretation of the technical claim language
f) Maximization of literal infringement
Although the doctrine of equivalents has been widely applied to patent infringement
cases in the US, European and Japanese courts have been less active in extending the
scope of patent protection beyond that of literal infringement. Even in the US, if literal
infringement is not found, infringement under the doctrine of equivalents is harder to
prove than ever. Moreover, given that software innovations are based on gradual rather
than radical improvement, courts are likely to interpret the claims of software patents
more strictly than those of other technological areas. This will decrease the chances of
successful establishment of infringement by equivalents.
Accordingly, the claim
drafting process should, in the first place, begin on the assumption that claims will be
construed literally, and the patent drafter should try to set out their claims to maximise
literal infringement.
g) Caution with the use of “means-plus-function” or “step-plus-function”
claim formats
Claim language needs to consider a careful balance between expressly understood (and
therefore limited) terms and equivocal (and therefore less limited) terms. In this context,
functional claim language, including means-plus-function and step-plus-function, can
be considered.
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Think before You Write: Considerations for Drafting Claims of Software Patents
Jinseok Park
However, it should be bear in mind that a means (or step) plus function wording
is not always advantageous. The use of functional language may lead to a narrow
interpretation in some cases. This is because the interpretation of functional language is
limited to the structures, material, acts or steps disclosed in the patent specification and
their equivalents. In the EPO and JPO, the means-plus-function claims may be found
lack of inventive step by any prior art that has the same function as the claimed
invention. Consequently, patent drafters should carefully examine the risks and benefits
of applying functional language to their inventions. It may be helpful to include both
“pure” method or apparatus claims which have clear structures and means/step-plusfunction claims.
h) Avoidance of the Classification as business methods
Pursuant to the EPC that excludes methods for doing business “as such” from patentable
subject matter, the EPO has been conservative in the examination of business method
inventions. Some granted business method patents of the USPTO are normally selected
for second level of review.
This means that patent applications in this area of
technology are highly likely to be scrutinised during examination. Accordingly, the
classification as business methods may lead to an unintended result such as a delay in
enforcing the patent due to the extended prosecution time of the patent application53
Thus, it is necessary to determine, prior to the filing stage, if the invention should
be classified as a business method category (e.g. Class 705 of the USPTO), or protected
in some other patent classes.
If the inventor and patent counsel decide that it is
necessary for the patent application to be classified as a non-business method invention,
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Think before You Write: Considerations for Drafting Claims of Software Patents
Jinseok Park
it is worthwhile to revise the claims or the abstracts, since they can affect the
classification of the invention.
i) Consideration of the royalty base and licensing
Drafting a claim requires the consideration of the commercial aspect of the patented
technology.
The future royalty base of an invention will improve if an invention
includes a method of manufacture claim since the royalty will be higher for the overall
manufacturing process that the software performs than for the software itself.54 In an
attempt to secure higher royalties and improve total value of the invention, it is essential
to claim the environment in which the invention is applied. With that in mind, the patent
counsel should consider including the entire system claim rather than the computer
program claim itself.
4.2. The European Claiming Strategies
In order to satisfy the “further technical effect” requirement, the patent drafter should
emphasise that the invention has an improved effect on the way the computer operates,
such as, effective use of memory, enhanced speed of a system, minimised network
traffic, more efficient database searching or improved graphical user interfaces (GUIs).
Money, business data and text are the examples of the subject matter that should be
avoided, since they are not regarded as physical data.55
Even though a computer program claimed by itself is allowed in the EPO
subsequent to the IBM case,56 it is still quite risky to depend solely on this type of claim,
26
Think before You Write: Considerations for Drafting Claims of Software Patents
Jinseok Park
since the program claim might be objected to or be invalidated, particularly during
national proceedings, as the subject matter dealing with a computer program as such.
Great care is necessary when using a combination claim involving both non-technical
and technical features. If the novelty of the invention exists only in its non-technical
part, the patent application might be rejected as lacking inventive step.
4.3. The US Claiming Strategies
The crucial factor in determining patentability is whether the essence of the claimed
invention “as a whole” has a practical application that produces a “useful, concrete and
tangible result”. On the contrary, mere manipulation of an abstract idea and purely
mathematical operations should be avoided.
When drafting a process claim, if appropriate, it is recommended that the process
fall into one of the “Safe Harbour” categories. Thus, the recitation of either a postcomputer transformation step or a pre-computer transformation step in the specification
would likely fit the claim into one of the safe harbour condition. In this context, patent
drafters need to show that the measurements of physical objects or activities are
transformed outside of the computer into computer data through the process. In order
for descriptive materials to be patentable, it is important to articulate their functional
interrelationships with a computer.
For US patent applications, special considerations in view of the doctrine of
equivalents are required:
-
Use a technical and generic term widely known in the art
Include specific examples of the generic term and list equivalent
structures
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Think before You Write: Considerations for Drafting Claims of Software Patents
Jinseok Park
-
Make sure that the invention has claimed all disclosed subject matter
Minimise narrow claim interpretation by avoiding disclaimers or
disavowals of literal claim scope (the prosecution history estoppel)
Examine carefully whether the intrinsic evidence is consistent with the
meaning of the claim language
4.4. The Japanese Claiming Strategies
In Japan, to be patentable, it is crucial for the patent drafter to limit the claimed
invention to practical applications that can accomplish a specific purpose. For example,
specifying hardware resources in the specification helps the application overcome
statutory invention issues. In addition, a claimed software invention may be statutory if
it performs a control function for apparatuses. Information processing can be statutory
if it is based on the physical or technical properties of an object. It is also important that
the function of a programmed computer is fully described in a way that demonstrates
how the computer is to be configured between hardware and software.
Japanese Patent Law defines two statutory categories of a statutory invention.
One is a method invention and the other is a product invention. If the category of an
invention is not clear, the application will be rejected.
For instance, a “program
product”, a "program signal(s)” or “data signal(s)” cannot be patented, since the
category of the invention is not clear.
5. Conclusion
Crafted software claims prepared by a technically competent and experienced software
patent counsel will be more powerful and have the potential to create increased profit
28
Think before You Write: Considerations for Drafting Claims of Software Patents
Jinseok Park
through licensing or royalty schemes. A broad, strong patent can only be secured by
understanding the various claim formats and their respective strengths and weaknesses
in the jurisdictions studied. This approach will save software inventors and developers
time and money, avoiding unnecessary litigation expenses over software patent
infringement.
1
Jinseok Park is a Korean patent attorney having experiences in the Korean Intellectual Property Office
(KIPO). He is currently reading for a Ph.D. degree at Sheffield University
2
Number of business method patents (Class 705) granted in US was 899 in 2000, 433 in 2001 and 492 in
2002 (As of 4 December 2002). www.uspto.gov/web/menu/pbmethod/applicationfiling.htm accessed 18
January 2003.
33
According to Article 33 of the TRIPs Agreement, the term of protection available shall not end before
the expiration of a period of twenty years counted from the filing date.
4
§112 of the US Patent Act
Plevy, L. (June 2001) “Some Important Differences between Patent Practice in Europe and the United
States”, New Jersey Lawyer Magazine, Duane Morris LLP, Available from:
http://www.duanemorris.com/publications/pub756.html
6
Article 83 of the EPC
7
Fonar Corp. v. General Electric Co., 107 F. 3d 1543, 1549, 41 USPQ 2d 1801, 1805 (Fed. Cir. 1997)
8
For example, a program listing can be submitted and filed as a reference material in Japan. However,
the specification of a patent application cannot be amended based on the reference material.
9
Love, John J. and Coggins, Wynn W. (2001) Successfully Preparing and Processing a Business Method
Patent Application prepared for AIPLA Spring 2001, USPTO, p7
5
10
Nigon, Kenneth (2000), Drafting the Specification in Electronic and Software Patents, Lundberg, S.
and Durant, S. (ed.) BNA, p210
11
Report on Comparative Study Carried Out under Trilateral project B3b (14-16 June 2000) Trilateral
Technical Meeting, Japanese Patent Office, Tokyo
12
Ibid.
13
Ibid. at.13p
14
Kizaki,Katsumi; Muratake, Reiki; Suh, Charles (2000) Patentability of Business Method in the United
States, Japan and the European Union, The University of Washington, Available from:
http://www.law.washington.edu/casrip/Harmonization/PatentEligible.doc
15
Skulikaris, Yannis (2002) Examination Practice at the European Patent Office prepared for
International Forum for Protection of Computer-related and Business Model Inventions, EPO
16
Martinez, Catalina (June 2003) Overview of Recent Trends in Patent Regimes in United States, Japan
and Europe, OECD, Luxembourg
17
Galama, Jan (2002) EC Proposal for a Directive on the Patentability of Computer-implemented
29
Think before You Write: Considerations for Drafting Claims of Software Patents
Jinseok Park
Inventions, UNICE’s Working Group on Patents, prepared for International Forum for Protection of
Computer-related and Business Model Inventions, EPO
18
Bernstein, Bruce H.; Martin, Clark (April 2002) Obtaining Strong and More Defensible U.S. Patents In
View of Relevant Court Decisions, Greenblum & Bernstein, P.L.C. prepared for the 78 th Wednesday
Patent Academy, KIPO
19
Courts sometimes use “objects of an invention” to limit the scope of the invention.
20
This often arises where multiple interdependent inventions are disclosed, and the claims include cross-
references.
21
Guidelines for Examination in the EPO, C III, 4.13, EPO
22
EPO Decision T472/88
23
Lundberg, Steven et al. (2000) Crafting the Claims in Lundberg, S. and Durant, S. (ed.) Electronic and
Software Patents, BNA, p228
24
Martin J. Adelman and Gary L. Francione (1989), The Doctrine of Equivalents in Patent Law:
Questions that Pennwalt Did Not Answer, 137 U. PA.L.REV.673
25
Hormone Research Found., Inc. v. Genentech, Inc., 904 F.2d 1558, 1563, 15 U.S.P.Q.2d(BNA) 1039,
1043 (Fed. Cir. 1990) (explaining a patentee may be their own “lexicographer”).
26
Transmatic, Inc. v. Gulton Indus., 53 F.3d 1270, 1277, 35 U.S.P.Q.2d (BNA) 1035, 1040 (Fed. Cir.
1995)
27
Bernstein, Bruce H. and Martin, Clark (2002, loc.cit.)
28
Cambridge Advanced Learner's Dictionary (2003) Cambridge University Press
29
AbTox, Inc. v. Exitron Corp., 122 F.3d 1019, 43 USPQ2d 1545, (Fed.Cir. 1997);
Alpex Computer Corp. v. Nintendo Co., 102 F.3d 1214, 40 USPQ2d 1667 (Fed.Cir.1996);
Insituform Technologies, Inc. v. CAT Contracting, Inc.,99 F.3d 1098, 40 USPQ2d 1602 (Fed.Cir.1996)
30
KCJ Corp. V. Kinetic Concepts, Inc. 39 F. Supp. 2d 1286 (Fed.Cir.2000)
31
Kustom Signals, Inc. v. Applied Concepts, Inc., 995 F. Supp. 1229, 46 USPQ2d 1056 (Fed. Cir. 2001)
32
Kopykake Enterprises, Inc. v. Lucks Co., (Fed. Cir. 2001)
33
Osha, Jonathan P., Drafting Patent Applications from the Litigation Perspective: The Quest for a
Bulletproof Patent, Rosenthal & Osha L.L.P.
Available from: http://www.rosha.com/course/forms/bulletproofpatent.doc
34 Johnson & Johnston Associates Inc. v. R.E.Service Co., Inc., 285 F.3d 1046, 62 USPQ2d 1046 (Fed.
Cir. 2002) “Application of the doctrine of equivalents to recapture subject matter deliberately left
unclaimed would conflict with the primacy of the claims in defining the scope of the patentee’s exclusive
right.”
35
Dryja, Michael and McCrackin, Ann (2000) An Introduction to Functional Language and Means
Expressions in Lundberg, S. and Durant, S. (ed.) Electronic and Software Patents, BNA, p306
36
Ibid.
30
Think before You Write: Considerations for Drafting Claims of Software Patents
Jinseok Park
37
Beresford, Keith (2001) European Patents for Software, E-commerce and Business Model Inventions,
World Patent Information 23: 253-263, p253
38
Riedinger, Jerry A., (26 June, 2000) Building Fences in Cyberspace: Business Method Patents and the
Internet, Analysis of Recent Internet/E-commerce Business Method Patents prepared for the Practicing
Law Institute Program on Patenting the New Business Model Building Fences in Cyberspace, p21,
Available from: http://www.ipsociety.net/SL003725.152.pdf
39
Lytle, Bradley and Dellinger, John (June 2001) Business method Boot Camp: What Every IP Attorney
Should Know About Business method Patents, Oblon Spivak, prepared for 2001 Intellectual Property
Update and Mid-Year meeting of the Oklahoma Bar Association
Available from: www.oblon.com/Pub/BusMethBootCamp.html
40
Beresford, Keith (2000, Ibid., p 94)
41
Alter, Scott (April 2001), The Effects of the “One-click” Patent and Reversal of the Amazon.com
Decision, What Does It Mean for “Business Method” Patents?, Intellectual Property Today, Hale and
Dorr LLP.,
Available from: http://www.haledorr.com/publications/pubsdetail_archive.asp?ID=11938232001
42
Siber, Victor; Kincart, Joseph (September 2001), The Application of the Process Patent Act as it
Relates to Computer-implemented Processes, IP Worldwide,
Available from http://www.cliffordchance.com/uk/practice-areas/intellectual/publications/archive.shtml
43
Beresford, Keith (2000, Ibid., p 80)
44
Ibid.
45
Beresford, Keith (2000, Ibid., p77)
46
Siber, Victor; Kincart, Joseph (September 2001, Ibid.)
Riedinger, Jerry A., (26 June, 2000, Ibid.)
48
Wegner, Harold C. (November 2001) E-Business Patent Infringement: Quest for a Direct Infringement
47
Claim Model, prepared for SOFTIC 2001 Symposium 2001, Tokyo, Japan
49
Business Methods Patent Initiative: An Action Plan (March 2000), USPTO,
Available from: http://www.uspto.gov/web/offices/com/sol/actionplan.html
50
Lytle, Bradley D. and Dellinger, John (June 2001,Ibid.)
51
Beresford, Keith (2000, Ibid., p103)
52
Kurusu, Kazunori (19 June 2000) Attentions to be paid in Drafting a Claim and a Specification of a
Japanese Patent Applications in the Chemical Field, Available from: http://homepage2.nifty.com/kurusupatent/information_chemical_e.htm.
53
For example, according to the USPTO, it usually takes 4-5 more months for the second level of review.
54
Kori Corp. v. Wilco Marsh Buggies & Draglines, Inc., 761 F.2d 649, 656 (Fed. Cir. 1985) The Court
awarded damages on the entire market value theory of infringing machines, rather than on the portion of
the machine that included the patented product
55
Rees, Dai (16 October 2001) Software Patents – EPO Practice: History and State of Play, prepared for
the EPIDOS Annual Conference, European Patent Office (EPO)
31
Think before You Write: Considerations for Drafting Claims of Software Patents
Jinseok Park
56
EPO Decision T 1173/97
32