think before you write - considerations for drafting...

Jinseok Park

University of Sheffield,

Think before You WThink before You Wrrite:ite: Considerations for DraftingConsiderations for Drafting Claims of Claims of Software PatentsSoftware Patents

Think before You Write: Considerations for Drafting Claims of Software Patents

Jinseok Park

Department of Law

E-mail :[email protected]

March 2004

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Think before You WThink before You W rr ite:ite: Considerations for Drafting Claims of Considerations for Drafting Claims of Software PatentsSoftware 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, USPTO2, 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 of

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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 requirement8 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 software-

implemented 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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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

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 University2 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 2003.3? 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 Act5 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.html6 Article 83 of the EPC7 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, p710 Nigon, Kenneth (2000), Drafting the Specification in Electronic and Software Patents, Lundberg, S. and Durant, S. (ed.) BNA, p21011 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.13p14 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.doc15 Skulikaris, Yannis (2002) Examination Practice at the European Patent Office prepared for International Forum for Protection of Computer-related and Business Model Inventions, EPO16 Martinez, Catalina (June 2003) Overview of Recent Trends in Patent Regimes in United States, Japan and Europe, OECD, Luxembourg17 Galama, Jan (2002) EC Proposal for a Directive on the Patentability of Computer-implemented Inventions, UNICE’s Working Group on Patents, prepared for International Forum for Protection of Computer-related and Business Model Inventions, EPO18 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 78th Wednesday Patent Academy, KIPO19 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.

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“…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

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

21 Guidelines for Examination in the EPO, C III, 4.13, EPO22 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

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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

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

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.67325 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)

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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

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

27 Bernstein, Bruce H. and Martin, Clark (2002, loc.cit.)28 Cambridge Advanced Learner's Dictionary (2003) Cambridge University Press

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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 Language29 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

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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

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, p30636 Ibid.

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§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.

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

37 Beresford, Keith (2001) European Patents for Software, E-commerce and Business Model Inventions, World Patent Information 23: 253-263, p253

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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

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

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.pdf39 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 AssociationAvailable from: www.oblon.com/Pub/BusMethBootCamp.html

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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

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

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

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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

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

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

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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.

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

43 Beresford, Keith (2000, Ibid., p 80) 44 Ibid.45 Beresford, Keith (2000, Ibid., p77)46 Siber, Victor; Kincart, Joseph (September 2001, Ibid.)

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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

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

47 Riedinger, Jerry A., (26 June, 2000, Ibid.) 48 Wegner, Harold C. (November 2001) E-Business Patent Infringement: Quest for a Direct Infringement Claim Model, prepared for SOFTIC 2001 Symposium 2001, Tokyo, Japan

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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

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

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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.

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

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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”

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

49Business Methods Patent Initiative: An Action Plan (March 2000), USPTO, Available from: http://www.uspto.gov/web/offices/com/sol/actionplan.html50 Lytle, Bradley D. and Dellinger, John (June 2001,Ibid.)51 Beresford, Keith (2000, Ibid., p103)

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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.

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:

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/kurusu-patent/information_chemical_e.htm.

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- 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 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

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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.

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

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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-plus-

function 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,

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

53 For example, according to the USPTO, it usually takes 4-5 more months for the second level of review.

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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,

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

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 product55 Rees, Dai (16 October 2001) Software Patents – EPO Practice: History and State of Play, prepared for the EPIDOS Annual Conference, European Patent Office (EPO)56 EPO Decision T 1173/97

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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 post-

computer 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- 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

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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

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

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time and money, avoiding unnecessary litigation expenses over software patent

infringement.

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think before you write - considerations for drafting...

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