Using Multiple Types of Claims

Almost any given subject matter can usually be claimed using both structure claims (apparatus/device/composition/ software) and method claims. For example a new type of screw for use with fiberglass can be claimed based on the structure of the screw, as well as a method of using that screw with fiberglass. A new drug can be claimed as having a given chemical structure, as well as use of the drug with respect to use of that drug to treat a given disease. Similarly, a new type of database can be claimed as a database, software that operates the database, as well as a method of storing data using the database. Use of both types of claims often increases the protection by expanding the scope of the covered subject matter.

One should not, however, include both types of claims in a patent application without weighing the potential benefits against the marginal costs incurred by prosecuting additional claims. For example, if the method claims are just rewordings of the apparatus claims, they add little or nothing to the scope of protection. A method claim that recites producing light by providing a light bulb having the new type of filament adds little or nothing to a structure claim directed to a light bulb having a new type of filament.

A better approach uses structure claims to protect a unique combination of structural elements, which would apply regardless of how the claimed apparatus/device/composition/software would be used. Similarly, the method claims should be used to protect a combination of steps that is unique regardless of what apparatus/device/composition/software is utilized to perform the steps. In the light bulb example, the method claim could significantly add to the scope of protection by focusing on the benefit of the new filament. Thus, an applicant might advantageously claim a method of reducing energy costs, by providing a light bulb having a filament that produces light at an efficiency greater than x. Such a claim would be applicable to any light bulb having an efficiency at least as high as bulbs having the inventive filament, regardless of the nature of the filament. If the filament provided a longer-lasting light bulb, then a useful method claim might focus on a method of reducing the frequency of light bulb changes.

It is also useful to include claims written in an "improvement" format. For example, instead of claiming a screw having a head, a shaft with particular thread, and a point, it is often useful to claim an improved screw having a head, a shaft, and a point, in which the improvement comprises a particular thread on the shaft. The potential benefit is that the claim clearly focuses the reader (and the patent attorney) on the inventive feature. The benefit can be enhanced by claiming the inventive element as part of a larger structure. Thus, the inventive screw can be claimed as an improved boat having a fiberglass component, wherein the improvement comprises a screw of a particular type that affixes at least one item to the fiberglass component.

One downside of using both structure and method claims is that the patent offices tend to issue restriction requirements, forcing the applicant to either prosecute the structure and method claims in different applications, or abandon one type of claim or the other. When patents used to be granted for 17 years from issue date, restriction requirements were a wonderful way of keeping submarine patents pending. But now that all patents are granted for 20 years from earliest claimed U.S. priority date (other than provisional), that benefit is gone, and all that is left is the added cost of prosecuting parallel or sequential applications. That detriment can be mitigated to some extent by filing PCT applications first (see Chapter IX, section C, infra), and also by filing combination structure and method claims. Thus, it is entirely possible to file a structure claim to a particular device as claim 1, and then have claim 10 comprise a method of using the device of claim 1. Claim 10 is thus dependent on claim 1, and cannot usually be subject to a restriction requirement. This strategy is often used in claiming pharmaceuticals, where a treatment claim is dependent upon a chemical composition claim. See for example:

11. A method of treating hyperlipidemia, hypercholesteremia, hyperglycemia, insulin resistance or type II diabetes in which insulin resistance is an underlying pathophysiological mechanism comprising administering a compound of formula (I) as defined in claim 1 to a patient in need thereof .

The strategy can, of course, be applied to other technologies as well:

5. The method of claim 1, wherein said passive device is selected from the group consisting of: a watch, a pen, a telephone, a frame, a wallet, and a beeper .

The reverse is also possible, where a structure claim is dependent upon a method claim. For example:

21. An outer plate of an automobile containing a concave portion, manufactured in accordance with the method of claim 18 .

Of course it is extremely common for a dependent method claim to recite an additional limitation on a physical element utilized in the method. That form of claiming is technically defective because the added element is not a step. But most patent examiners are currently letting applicants get away with such claiming.

14. A method as in claim 1 wherein the member is selected from a pillar, a radiator support beam and a door .

7. The method of claim 2 wherein the insulating layer of the printing member is a ladder polymer .

43. The method of claim 42, wherein the non-aqueous, water miscible solvent is selected from the group consisting of acetonitrile, dimethylsulfoxide, glyme, methylpyrrolidone, ethanol, triacetin and mixtures of these .

14. A method in accordance with claim 1 wherein said optical element is selected from the group consisting of ophthalmic lens, sunglasses lens, parabolic mirror, and cylindrical lens .

Software claims are a special case. They often recite a processor programmed to accomplish a series of steps, and thereby effectively use method language in a structure claim.

2. A variable length encoded frame decoding hybrid buffer, comprising: … a processor programmed to: (i) provide first and second buffers in memory…; (ii) fill the first buffer with encoded bits…; (iii) fill the second buffer with encoded bits…; (iv) remove a group of bits in the first and second buffers…; (v) update the full/not-full indicators according to the bits removed by step (v) .

25. A network access device comprising a processor programmed with computer-executable instructions that perform the steps of: (1) receiving a unicast data packet; (2) determining whether the unicast data packet contains a tunneled multicast data packet; (3) … de-encapsulating the tunneled multicast data packet and forwarding the de-encapsulated tunneled multicast data packet to devices locally connected to the network access device; and (4)… replicating the unicast data packet and transmitting the replicated unicast data packet to neighboring network access devices .