IP-Managers in large international companies often find that the grant rates of their patents are significantly higher in their own jurisdiction than in other jurisdictions or that the obtained scope of protection is comparatively narrow in the other jurisdictions. One of the reasons for this effect is that the patent applications are drafted taking into account the requirements of only one jurisdiction.

Drafting patent applications is a challenging task anyway, but it becomes even more difficult if the requirements of different jurisdictions should be considered. A drafting style working for one jurisdiction may cause major problems in other jurisdictions. Many problems could be avoided if they were considered at the drafting stage.

I will show periodically examples of problems caused by drafting or prosecution weaknesses resulting in rejections or narrow claims. The examples are taken from real cases, with the original wording changed to focus only on the key issue.

Today´s example relates to: Divided Infringement

Example claim:

“System for determining the position of goods …:

a load carrier unit for transporting or storing goods comprising storage means configured to store identification data comprising information on transported or stored goods;

a data collection point, … comprising communication means configured to …  exchange the identification data;

route and/or position evaluation means configured to determine the route and/or the position of the load carrier unit…; and

triggering means configured to trigger a predetermined operation on a computer unit depending on the determined route and/or position.”

The specification describes examples for the load carrier unit (e.g. a pallet unit, a tank unit, a silo unit,…), the data collection point (e.g. WLAN device, Bluetooth device,…) and route and/or position evaluation means together with the triggering means (e.g. any central or distributed computing unit).

Problem:

The provided example claim defines at least three different hardware components (load carrier unit, data collection point and route and/or position evaluation means together with the triggering means) which are not provided by a single company. It is likely that the company providing the software to run the system according to the claim is also a different company.

Consequently, this system claim will never be infringed by a single company. Even contributory infringement would be difficult to argue in many jurisdictions.

So the question is: How can such a situation be avoided?

Solution:

To answer this question, we need to focus on the invention and where it is implemented.

It can be assumed that the invention is not about the hardware of the data collection point or the route and/or position evaluation means together with the triggering means. These are standard components.

The invention could relate to equipping a load carrier unit with storage means configured to store identification data comprising information on transported or stored goods and communication means for transmitting this data.

If this is the case, the claim should relate only to the load carrier unit and its components.

On the other hand, the invention could relate to the software running the system according to the example claim (which is the most likely case).

In this case, the claim should relate to a computer program, a computer-implemented method and a system for running the computer program.

For example, a computer-implemented method comprising:

determine a route and/or a position of a load carrier unit based on identification data received from the load carrier unit; and

triggering a predetermined operation on a computer unit depending on the determined route and/or position.


Summary:

Concentrate on how and where an invention is implemented. Is it a software or hardware invention? Where is the decisive step carried out? The independent claim should only include features of a single software or hardware unit. Use different independent claims for different components in a system if different aspects of the invention are implemented at different components (e.g. transmitter vs. receiver).

In order to achieve high grant rates and broad scope of protection in all relevant jurisdictions, IP-Managers should take care that the requirements of all these jurisdictions are considered by their drafting attorneys at the drafting stage.

Drafting guidelines are a good way of ensuring high-quality applications that are suitable for all jurisdictions relevant to a company.

About the blogpost author:

Stefan Müller is partner at 2SPL PartG mbB since 2012 and an expert for the protection of digital solutions in Europe. Before becoming a patent attorney, he studied physics and gained practical experience in the semiconductor industry.

Feel free to connect with him on LinkedIn.