Write Claims That Can Be Realistically Enforced

Market-centered claiming by itself, of course, is not the whole story. Patent attorneys must also focus on securing claims that are realistically enforceable. Method of manufacture claims, for example, can be very difficult to enforce. Once a computer chip is manufactured, who can tell whether one of the polymer layers was cured at 100°F or 120°F? Enforcement of such claims requires discovery as to the exact manufacturing process of the defendant, and such discovery is exceedingly problematic unless opposing counsel is particularly generous. In the case of overseas manufacturing such discovery can be downright impossible to obtain. If the invention does lie in the method of manufacture of the product rather than the end product itself, the patent attorney should work closely with the inventors to identify some difference, however small, between products produced by the inventive method versus other methods. Perhaps the novel manufacturing process produces material that is harder or softer than the previous methods, or is slightly smoother, or has some superior electrical property. In that case the claims should be directed to a product having the material with the claimed property.

Method of use claims can also be difficult to enforce. In the pharmaceutical field, for example, the physicians and medical staff administer the drugs, not the manufacturers. The manufacturers merely provide drugs for physicians to administer, and can often escape infringement of method of use claims by asserting that they are selling the drugs solely for some non-infringing purpose. Indeed, the only way to establish infringement of a method of use claim may be to show that the manufacturer purposefully put his product into the marketplace to cause people to infringe the patent (inducement to infringe), or to establish that there are no substantial non-infringing uses of the product (contributory infringement). Those proofs can easily increase the cost of litigation by hundreds of thousands of dollars.

The excuses wear pretty thin when it comes time to justify method claiming in certain fields. As shown below, apparatus and method claims are often readily converted one into the other. But the apparatus claim is often enforceable against a manufacturer, while the method claim may only be enforceable against a consumer.

One should also focus on who or what entity can be sued. For example, where claims to methods of treating diseases in humans are unenforceable (as is the case in many foreign countries), it is better to claim a new chemical entity or a method of manufacturing than trying to claim the method of treating. Generally, physicians (and their staffs) cannot be sued for treating patients even if the drugs they are using infringe a patent , but a manufacturer of the drug can be sued for producing and/or marketing an infringing drug.

Similarly, where an invention is a new use for an old machine, it is much better to claim (a) a controller, software or other new aspect that allows the old machine to perform its new function, and (b) to focus on the new purpose of the machine. Even so, it is common to find an attorney who directly claims the new method. The attorney may get his claim issued, but he will likely have a terrible time enforcing it.

A third example is somewhat subtler. A composition claim is usually the Holy Grail in chemical applications. But in the field of polymers it is often the worst type of claim because polymer composition claims tend to be extremely narrow, and readily circumvented. From a litigation perspective it is much better to focus on claiming a class of polymers according to their characteristics, rather than claiming specific compositions.

Yet a fourth example shows that even seasoned patent attorneys can write claims that have no chance of being enforced. U.S. patent application no. 2004/0093307 claims a banking system in which a transaction takes place at least in part in a foreign country. The system cannot be enforced because U.S. patent law has no international reach.

1. A banking system comprising: a first bank account directly owned by an first emerging local bank chartered in a first emerging market country; a second bank account which is owned by a trust entity, wherein the emerging market bank is the beneficiary of the trust entity; and wherein the first bank account and the second bank account are bank accounts at a first international correspondent bank.