Claim Drafting Part 3 - Anatomy of a Method Claim. Episode 11
These articles are near verbatim transcripts of my “Patenting for Inventors” podcast. Click here, or the podcast image to get to the podcast feed.
Claim Drafting Part 3 - Anatomy of a Method Claim
In the last episode I went through the parts of a device or apparatus claim. These are claims to inventions that are usually physical structures. In this episode I’m going to go through the other main type of claim type, which is a method claim.
A method claim is a claim for a new and non-obvious way of doing something. There are actually a couple kinds of method claims. The kind you see most often is a method for accomplishing a new goal.
For example, I’ve talked about the 3-in-1 avocado slicer device a lot. So a method claim might be “a method of pitting and slicing avocados.” Another type of method claim is a method of making your new device. Let’s say you came up with some new kind of manufacturing method that allowed you to make this new kind of avocado slicer. That new method might be patentable.
There’s another kind of method claim which is called a product by process claim. In this type of claim you are actually claiming the end product, but only if that end product is made by a certain way. The example I’m going to go over later in this episode is claiming a new way of method of making guacamole and actually claiming not just the method, but the guacamole itself when it’s made in a certain way.
Before I got into specific examples of method claims that have been allowed, I just first want to go over the basics. If I were to tell you to describe to someone how to fry an egg, how would you do it?
You might say, “well first you grab an egg out of an egg carton, crack the egg on a hard surface, pull the eggshell apart over a heated pan, let the egg lay on the pan for 2 minutes, place a spatula under the egg, lift the spatula with the egg away from the pan, remove the egg from the spatula and place it on a plate.”
That describes the basic steps of making a fried egg. But now we need to put it into patent language. Just like the device claims, you have a preamble, a transition word, and limitations.
I went into the details of those in the last episode so I’m not going to repeat them here.
The preamble is going to be “a method of frying an egg” or “a method of cooking an egg” or a “method of preparing a food product.” The details aren’t that important, but it’s always going to start with “a method of” or a “a method for” and then what it is you’re doing. Instead of using the word “method,” sometimes you’ll see the word “process,” either can work fine.
Then the next word is going to the be the transition. For most of you, just like I talked about in the last episode, that word is going to be “comprising,” and not “consisting.” You can write, “comprising” or “comprising the steps of” and a colon.
Then you would write your steps, but you have to write them in a certain way. Each step you have to start with a gerund. A gerund, if you remember from English class, is a word that ends in “-ING".” So in the example, I gave, I started with grab and egg.
You can’t say “grab and egg” as your step. You have to say “grabbing an egg” Then you end that with a semicolon, not a period, because if you remember from the last episode, each can only be one sentence.
After the semicolon you go to the next line and you would write, not “crack the egg on a hard surface” but “cracking the egg on a hard surface.” You still have to follow all the same rules that I talked about in the last episode, such as the first time you introduce an element, you have to use the word “a” or “an” and then after that you have to use the word “the.” We started out “grabbing an egg from an egg carton.” You can’t say “grabbing the egg from the egg carton” because it’s the first time you’re saying the word “egg” and egg carton.
You all have to be careful about what you’re saying your method is. I mentioned “egg carton.” What if someone used your method of frying an egg and you put in “grabbing an egg from an egg carton” but for whatever reason the eggs that this person used weren’t in an egg carton, but were in a bowl. It’s possible that they could avoid infringing your method if they’re able to work around one of your limitations.
So maybe you don’t want to mention the egg carton part if its not key to your new invention. All of the things I talked about in Part 1 of the claim drafting, which is figuring out what your invention is, also applies here.
In the first limitation you say “grabbing an egg.” The next line you would say “cracking the egg.” There are probably lots of ways you could say it, maybe “cracking a shell of the egg.”
Then you just go through the list of steps of your inventive method, making sure not to put in extra steps that aren’t necessary. You don’t want to say, letting the egg fry for 5 minutes, because someone might do your exact same method and just do it for 4 minutes and then say that they’re not infringing your claim.
At the end, you end your last limitation with a period.
The examiner is going to go through all the steps, and just like in a device claim, is going to determine whether your method claims are new, useful, and non-obvious. In this example, you wouldn’t get a patent for just the basics of frying an egg because it’s already publicly known.
But here’s a real example I found of a method of preparing guacamole that actually got a patent. It’s patent number. 5871794, and you can look it up on google patents. It’s called “stabilized guacamole and method for making same.” The problem with guacamole as you all know is that it can spoil and turn brown if you don’t eat it right away, and this inventor came up with a certain composition that’s put into the guacamole to prevent spoiling. He also came up with a method of preparing guacamole that just has four limitations. If you look at claim 10, you will see one of the method claims he got a patent for.
Here it is: “A process for preparing a stabilized guacamole that can be stored at room temperature without spoilage comprising the step of:” That’s the preamble and transition word. He starts of with “a process” and then says what the process is for. He could have just said a process for preparing guacamole, but he goes into a little more detail in the preamble to tell the reader and examiner why this process deserves patent protection. So the purpose is “a stabilized guacamole that can be stored at room temperature without spoilage.” Then he has the transition phrase, “comprising the steps of.”
Then right below that he starts with the first step. “removing the skin and pit of an avocado to obtain avocado flesh.” Below that is the next step, which is “removing the husk, seeds and outer skin from a tomatillo to obtain tomatillo pulp.”
The next step he writes “mixing the avocado flesh and tomatillo pulp,” and the step after that is “heating the mixture to about 85 degrees Celcius for about 10 minutes.”
And that’s it, he got a patent for that, it’s basically just mixing avocado and tomatillo and heating it for a certain amount of time. Now we can argue whether or not he should have gotten a patent for that because what he did isn’t new or is just obvious, but this episode isn’t about whether it should have been patented, but just how the method claim is written.
There are a couple things to be aware of. In general, most of the time you don’t want to write down the order of the steps. Sometimes you have to, otherwise you won’t get a patent, because the order is really important, but in general, don’t write, “first do this, then do that,” so don’t number the steps. What I do is instead of numbering the steps, before each limitation, I put “a)” or “b)” or “c)” just to differentiate the steps from each other, but’s not necessary. If you put in 1, or 2 or 3, you might get a rejection from an examiner saying that it’s unclear if the steps have to be done in that order or not. Let’s say in this example the inventor ordered the steps, he wrote “first removing the skin of the avocado,” “second, removing the skin from the tomatillo,” “third, mixing the avocado and tomatillo, and “fourth, heating the mixture.”
What would be bad about that? If he wrote it that way, what if someone else removed the skin of the tomatillo first and then removed the skin of the avocado? They wouldn’t be infringing because you said the order was removing the skin of the avocado first. That’s why, unless the exact order of the steps are really essential to get your invention, don’t put them in.
That’s the claim for a method or process of making guacamole. This is not the only way the claim could have been written and I do have some issues with some ways it is written on how he used the words “a” and “the” but that’s a minor issue and the examiner didn’t give rejections for those reasons so it’s not worth nitpicking those things because this episode is about the anatomy of the claim, and the anatomy of this particular claim is pretty standard.
Remember I said there’s another type of method claim and that’s not just the method of what you want to make, but the product itself using your method and that’s called a product by process claim.
If you look at Claim 17 you’ll see one of those. It says, “a stabilized guacamole preparation that can be stored at room temperature without spoilage made by the process of:” and then goes through the exact same steps in claim 10. What the difference between the two? One is that you’re getting a patent on the steps. And the other is that you’re getting a patent on the guacamole itself. Why does this make a difference.
There are lots of different reasons. Let’s that there’s a small mom and pop company that wants to steal this idea from you and this mom and pop company sell it to a big store store. The mom and pop company go through all the steps in the method, they remove the skin of the avocado, the tomatillo, they mix them together, and they heat the mixture up just like the claim has. So they’re infringing the patent. They sell the guacamole to big store.
You own this patent and you go to the store and say, “You’re infringing my patent, stop selling that guacamole.” If you didn’t have a Claim 17, the product by process claim, you couldn’t sue the store, you could only sue the mom and pop company, and the mom and pop company maybe declares bankruptcy, and you can’t go after them at all, or they hid their money. Why couldn’t you go after the store? Is the store removing the skin and pit from the avocado? No. Is the store mixing them together and heating the mixture? No. The store is not doing any of the methods in the method claim. The store is only selling the product that used those methods.
So when you write claims, you want to think about the end game, and that is, who will you be able to stop from making, using, and selling your invention? And you want to write claims that cover as many of the players as you can. Unless you had a claim like Claim 17, which is for the guacamole itself made by a certain process, then you couldn’t go after anyone that is just selling the guacamole.
If you want help with drafting your patent application and claims I do offer those services through my practice at Diament Patent Law.
- Dec 9, 2017 What is Intellectual Property and What Kind do I Need? Episode 1
- Dec 11, 2017 Is My Idea Patentable? Episode 2
- Dec 13, 2017 Is My Invention New, Useful, and Non-Obvious? Episode 3
- Dec 18, 2017 Patent Searches and How to Find Similar Inventions. Episode 4
- Jul 4, 2019 Should I Tell People About My Invention and What are the Patent Application Deadlines. Episode 5
- Jul 5, 2019 How to Read and Understand the Parts of a Patent. Episode 6
- Jul 5, 2019 The Patent Application Process. Episode 7
- Jul 6, 2019 What is a Provisional Patent Application and Should I File One? Episode 8
- Jul 11, 2019 Claim Drafting Part 1 - Identifying Your Invention? Episode 9
- Jul 13, 2019 Claim Drafting Part 2 - Anatomy of an Apparatus or Device Claim. Episode 10
- Jul 13, 2019 Claim Drafting Part 3 - Anatomy of a Method Claim. Episode 11
- Jul 14, 2019 Claim Drafting Part 4 - Independent and Dependent Claims. Episode 12
- Jul 23, 2019 Claim Drafting Part 5 - 10 Quick Tips for Claim Drafting . Episode 13