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: Method Steps performed by Users

Example claim:

“Method for planning deployment of a device… having the following steps:

data relating to a load is input on a client;

the data relating to the load is transmitted to a central unit via the Internet;

central unit calculates X; and

X is transmitted to the client via the Internet.”

The specification describes that the data relating to a load is input on the client by a user.


The provided example claim has several weaknesses.

1 . The claimed computer-implemented method cannot be directly infringed because the first step of the method is performed by the user and not by the software. This may raise the question whether the claim can be infringed at all or whether only contributory infringement is possible.

2 . The different steps are performed by different entities, resulting in a distributed infringement scenario. This may raise the question of whether also only one of the entities can infringe the claim.

3 . The term “steps” may lead to narrow interpretation in some jurisdictions.

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


Regarding 1:

The first step can be easily reformulated by taking the perspective of the software running on the client.

    • “receiving data relating to a load entered on a client”

In this way, the first step is no longer performed by the user, but by the software.

Regarding 2:

The first two steps can be reformulated by taking the perspective of the software on the central unit.

    • “receiving data relating to a load from a client via the Internet”

In this way, all steps of the method are performed at the central unit, avoiding a divided infringement scenario. The focus should be on the unit performing the inventive step.

Regarding 3:

“Having the following steps:” can be replaced by “the method comprising:”.


All features of a claim should be defined by taking the perspective of the inventive entity.

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.