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Why Claim software and programs when you can claim a method

Started by dab2d, 06-18-14 at 07:32 PM

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dab2d

So I have never really gotten my head around this... why claim software and have all the issues with 101 when you can claim a method and have none of the issues. I assume it is an enforcement issue.
Nothing I post on this forum is legal advice.  You rely on anything I post at your own risk.  This post does not form an attorney client relationship between myself any person participating in this thread.

smgsmc

Quote from: dab2d on 06-18-14 at 07:32 PM
So I have never really gotten my head around this... why claim software and have all the issues with 101 when you can claim a method and have none of the issues. I assume it is an enforcement issue.

We've discussed several aspects of this previously.  The method claim would be infringed by the end-user operating the software. A CRM claim would be infringed by a party manufacturing or selling CDs or DVDs with bootleg software but not necessarily operating the software.  In the US you can't claim the software or program per se.

By the way, I think you posted this question in the wrong place.

moonman

It's all about enforcement.

A method has 10 steps. I make a chip that, when powered up and configured, performs the method. My customers are the ones actually performing the method, so go sue them! Wait, they may be your customers, too. Wanna sue your customers?

A computer-readable medium claim has 10 elements that perform the same method. I sell the chips, so you can sue me directly, end of story.

It's all about contributory/induced infringement vs. single-party direct infringement, and  who do you want to sue?


This is the fine print. You have good eyes.

khazzah

Quote from: dab2d on 06-18-14 at 07:32 PM
So I have never really gotten my head around this... why claim software and have all the issues with 101 when you can claim a method and have none of the issues.

I don't see it that way at all. Method claims tend to have *more* problems getting past 101.

Sometimes adding "in a computer" to the claim makes the Examiner happy, but sometimes it doesn't.

Quote from: dab2d on 06-18-14 at 07:32 PM
So I have never really gotten my head around this... why claim software and have all the issues with 101 when you can claim a method and have none of the issues.

The *theory*, as explained to me, is that method claims have little/less structure, and are thus more likely to be infringed. But in practice, all verbs in a method claim act on some nouns, so there's always been some "structure". And with current 101 case law, we're adding even more structure to our method claims, in the form of processor, memory, computer, etc.

Quote from: moonman on 06-18-14 at 07:50 PM
A method has 10 steps. I make a chip that, when powered up and configured, performs the method. My customers are the ones actually performing the method, so go sue them!

I've heard this before, and I just don't get it. OK, the end user is the direct infringer of the method ... but you don't sue the customer!

Quote from: moonman on 06-18-14 at 07:50 PM
It's all about contributory/induced infringement vs. single-party direct infringement?

OK, now that's an accurate statement. And yes, indirect infringement is harder to prove - or at least takes more evidence to prove. So yes, I'd prefer to sue the manufacturer or seller for direct infringement of an apparatus/device/system claim.
Karen Hazzah
Patent Prosecution Blog
http://allthingspros.blogspot.com/

Information provided in this post is not legal advice and does not create any attorney-client relationship.

JimIvey

Quote from: dab2d on 06-18-14 at 07:32 PM
So I have never really gotten my head around this... why claim software and have all the issues with 101 when you can claim a method and have none of the issues. I assume it is an enforcement issue.

We don't claim software.  We claim methods, logic stored on computer readable media, and programmed computers. 

Most of the claims involved in 101 issues are method claims.  So, you don't avoid 101 problems by claiming a method.

Regards.
--
James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
Friends don't let friends file provisional patent applications.

moonman

I bet my lunch that today's Alice decision destroys most, if not all, of the distinction between method, device, and medium claims when a generic computer is concerned.
This is the fine print. You have good eyes.

Dazed-n-confused

Quote from: moonman on 06-19-14 at 10:01 PM

I bet my lunch that today's Alice decision destroys most, if not all, of the distinction between method, device system, and medium claims when a generic computer is concerned.

If you'll permit me to make the small edit shown above, you get to keep your lunch.

...purple haze... ...runnin' through my brain... ...and it feels... being hit bya train....

khazzah

Quote from: Dazed-n-confused on 06-20-14 at 12:06 AM
Quote from: moonman on 06-19-14 at 10:01 PM

I bet my lunch that today's Alice decision destroys most, if not all, of the distinction between method, device system, and medium claims when a generic computer is concerned.

If you'll permit me to make the small edit shown above, you get to keep your lunch.

So you're saying there's a difference between "device" and "system" in the preamble? I don't see a meaningful difference.
Karen Hazzah
Patent Prosecution Blog
http://allthingspros.blogspot.com/

Information provided in this post is not legal advice and does not create any attorney-client relationship.

Dazed-n-confused

Quote from: khazzah on 06-20-14 at 05:08 AM
Quote from: Dazed-n-confused on 06-20-14 at 12:06 AM
Quote from: moonman on 06-19-14 at 10:01 PM

I bet my lunch that today's Alice decision destroys most, if not all, of the distinction between method, device system, and medium claims when a generic computer is concerned.

If you'll permit me to make the small edit shown above, you get to keep your lunch.

So you're saying there's a difference between "device" and "system" in the preamble? I don't see a meaningful difference.


Not at all.  I'm merely aligning moonman's prediction with actual verbiage used in the decision.  Light humor, if you will.
...purple haze... ...runnin' through my brain... ...and it feels... being hit bya train....

SaxIP

Quote from: JimIvey on 06-19-14 at 09:52 PM
Quote from: dab2d on 06-18-14 at 07:32 PM
So I have never really gotten my head around this... why claim software and have all the issues with 101 when you can claim a method and have none of the issues. I assume it is an enforcement issue.

We don't claim software.  We claim methods, logic stored on computer readable media, and programmed computers. 

Most of the claims involved in 101 issues are method claims.  So, you don't avoid 101 problems by claiming a method.

Regards.

How has this changed over the years?  I believe it's still true that method claims aren't easier to win, but is it recommended today to claim "logic stored on computer readable media" and/or "programmed computers"?  Where can I read more about how to successfully claim software and programs?  Thanks!



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