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[af]

I have a few questions about method claims and direct infringers.

Let's say that I have a method claim of the following form:

A method for producing result X, comprising:

doing something to a signal;
applying the signal to a widget;
receiving a resultant signal from the widget; and
doing something else to the resultant signal.

It is possible that the method can be performed to an apparatus that includes the widget or it can be performed by a computer that communicates with the widget.

Here are my questions:

1. Is the widget a workpiece in the above claim?
2. Since the method is actually only carried out by the end user, are they the only direct infringer? In which case, I am better off with purely apparatus claims.

Thanks,
Alan

[klaviernista]

I'm not sure what you mean by "is the widget a workpiece?"  Did you mean to ask whether the widget is a limitation?

As to your second question, direct (literal) infringment requires a single party to make, use, sell, offer for sale, or import the claimed invention.  If the only party that will perform all of the method steps in your claim is the end user, then yes, the end user would be the only direct infringer. 

Your last statement ("I am better off with purely apparatus claims") is an insight that applies in the context of many patent claims.  Generally, patent owners do not want to be in a position where only their customers will infringe their claims.  This is why, for example, you will rarely see claims drawn towards a method of using a medical device.  Quite simply, the medical device manufacturer does not want to sue the doctors that use their devices (i.e., their customers).  Rather, they want to sue the manufacturers of competing devices.

A good analogy to keep in mind when drafting patent claims is that you don't want to "kill the goose that lays the golden egg."  And in the commercial world, the "golden goose" is the prospective purchaser(s) of the patented invention.

[af]

Thanks, your answer was very helpful.

 Generally, most of my clients are interested in stopping manufacturers or resellers from making or using their inventions so I don't end up writing many method claims. However, this particular invention seemed to be easily described in terms of a method. It sounds like from what you are saying, I should probably stick to apparatus claims to cover the devices that includes the "widget", and Beauregard claims for the case where a program is running on a computer and the computer interacts with "the widget" (i.e. the widget is a workpiece or part of the environment).

I'm not sure what you mean by "is the widget a workpiece?"  Did you mean to ask whether the widget is a limitation?

I was referring to the idea that a "workpiece" is an object that invention does something to, but is not claimed; see Faber (Landis). For example, "A juicer, including: a crusher for acting on a piece of citrus fruit; ...", or "An apparatus, including two pivotally connected jaws adapted to hold and crack a nut." Here the piece of citrus fruit and nut are workpieces and part of the environment (i.e. not claimed).

One of the things I am not sure of is how this idea of workpiece relates to method claims.

[klaviernista]

One of the things I am not sure of is how this idea of workpiece relates to method claims.

That is why your question confounded me.  As indicated in Landis and MPEP 2115, apparatus claims are generally not limited by the article upon which the apparatus works.  That is not the case in method claims.  E.g., if you claim, "A method for cutting fruit, comprising:  providing a juicer, the juicer comprising at least one crusher for crushing fruit; and crushing fruit in said juicer," an alleged infringer would have to crush fruit with a juicer having at least one crusher in order to infringe that method claim.  If the infringer crushes rocks with a juicer having the same structure, the method claim is not infringed.

Same goes for the prior art.  I.e., you can distinguish method claims over the prior art by specifying an element that is worked upon during the execution of the method.

[af]

Your example is very clear.  Thank you for clearing away my misunderstanding.

Alan

[JimIvey]

Let's say that I have a method claim of the following form:

A method for producing result X, comprising:

doing something to a signal;
applying the signal to a widget;
receiving a resultant signal from the widget; and
doing something else to the resultant signal.

It is possible that the method can be performed to an apparatus that includes the widget or it can be performed by a computer that communicates with the widget.

I would say that the method in question is performed outside of the widget.  The widget is unlikely to apply a signal to itself and is unlikely to receive a resultant signal from itself.

Regards.

[af]

I would say that the method in question is performed outside of the widget.  The widget is unlikely to apply a signal to itself and is unlikely to receive a resultant signal from itself.

Yes, the method is performed outside the widget. The widget is simply being acted on by the signal, and sends back a modified signal that the method also acts upon. That is why I saw the widget as a "workpiece".

Jim, does this mean that a direct infringer would only have to perform the method but not necessarily be in possession of the widget?

Thanks,
Alan

[JimIvey]

Jim, does this mean that a direct infringer would only have to perform the method but not necessarily be in possession of the widget?

Looks that way to me.

Regards.

[af]

Looks that way to me.

Regards.

Thanks Jim and Klav for your insight.

Alan

[smgsmc]

Let's say that I have a method claim of the following form:

A method for producing result X, comprising:

doing something to a signal;
applying the signal to a widget;
receiving a resultant signal from the widget; and
doing something else to the resultant signal.

It is possible that the method can be performed to an apparatus that includes the widget or it can be performed by a computer that communicates with the widget.

I would say that the method in question is performed outside of the widget.  The widget is unlikely to apply a signal to itself and is unlikely to receive a resultant signal from itself.

Regards.

It's possible.  For example, if the widget is a transceiver (transmitter/receiver pair), it could transmit a signal and receive it back.