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U.S. PATENTLAW 19such as “the” is typically not allowed unless it refers to
something already defined in the claim (i.e., there is an
“antecedent basis” for the thing to which the claim refers).
For this reason, one often sees “a number of (things)”
where in normal usage, one would say “the number of
(things).”
In addition, use of the word “or” is generally frowned
upon because it leaves options open and is therefore not
considered to distinctly claim an invention. Thus, one of-
ten sees in claims language such as “at least one of [Choice
A], [Choice B],and[Choice C],” or “any of [Choice A],
[Choice B],and[Choice C]” where in normal speech, one
might say “[Choice A], [Choice B],or[Choice C].” Simi-
larly, instead of reciting “one or more of,” Claims will more
often recite “a plurality of” or “at least one of,” leading to
even more confusing language later in the claims, such as
“the at least one of.” Although such language may at first
be confusing, an understanding of why these terms are
used may help in reading and interpreting a claim.
Another aspect of claiming that can be confusing to the
layperson is that often almost the exact same language
is recited in two different claims. For example, a patent
typically will have a method claim and an apparatus (or
system) claim that use parallel language. Remember, how-
ever, that the right to exclude may be different between a
method and an apparatus or composition of matter.
A limitation in an apparatus claim may also be ex-
pressed as a means or step for performing a specified func-
tion without the recital of any specific structure. While
such a limitation is not always triggered by “means for”
(also called “means-plus-function”) language, and may
even be triggered in the absence of such language, such
claims are often added to a patent. A “means for” limi-
tation is construed to cover the corresponding structure,
material, or acts described in the specification and their
equivalents (see 35 U.S.C.§112, sixth paragraph).
In addition to the more or less standard apparatus,
method, and “means-for” claims, computer- and software-
related inventions are often additionally recited in so-
called Beauregard claims and signal claims. As the USPTO
states, a computer program is merely a set of instructions,
capable of being executed, but is not itself a process [see
section 2106(a) of the Manual of Patent Examining Pro-
cedure]. To be patentable, a computer-readable medium,
or an “article of manufacture” comprising a computer-
readable or useable medium, is claimed, having therein a
computer program that performs some steps of a process.
These types of claims have been called Beauregard claims
after the inventor of one of the first patent applications to
use such claims (see Beauregard, n.d.).
Another type of claim one might encounter is the so-
called propagated signal claim. Such a claim might appear
as follows:- A computer data signal embodied in a carrier
wave for [doing something], the computer data
signal comprising:
program code for [performing a first action];program code for [performing a second action];etc.Such claims are thought to protect against the unlicensed
transmission of a computer program over a network such
as the Internet or through modems. Of special concern
with claims directed to client–server applications is the
fact that a single party may not be performing or using
all of the limitations of a claim. In other words, if a claim
recites actions taken by both the server and the client and
two independent parties control the server and client, then
neither party can be an infringer. Therefore, it may be de-
sirable in a patent to have one set of claims directed to
the overall invention, another set of claims directed to ac-
tions taken at the server (possibly in response to messages
received from a client), and yet another set of claims di-
rected to actions taken at a client (possibly in response to
messages received from a server).Protecting Patent Rights
What Rights Are Conferred on a Patentee?
A patent confers specific “exclusive” rights on the owner of
a patent. That is, the owner of a patent is granted the right
to exclude other parties from various acts, including mak-
ing, using, offering to sell, or selling the patented inven-
tion (as set forth in the claims) within the United States or
importing the patented invention into the United States.
Where a process is patented (as opposed to an appara-
tus or composition of matter), the patentee is similarly
granted the right to exclude others from using, offering to
sell, or selling in the United States or importing into the
United States any product made by the claimed process.
Note that a patent does not give an owner the right to prac-
tice the invention recited in the patent; another (broader)
patent may exclude the owner from practicing the inven-
tion. These rights begin when the patent is granted, that
is, when the patent issues and last until the patent expires.
See the Patent Term section for an explanation of how the
term of a patent is calculated.What Is Infringement?
When someone performs one of the restricted acts re-
garding patented material or a patented method with-
out permission of the patent owner, the patent is said to
be “infringed.” There are three types of infringement: di-
rect infringement, active inducement to infringe, and con-
tributory infringement. Direct infringement occurs when
someone literally performs one of the restricted acts, that
is, makes, uses, sells the invention (as set forth in at least
one claim of the patent), or offers it for sale in the United
States or imports it into the United States. Note that this
does not require knowledge by the infringer that the in-
vention is prohibited, nor does it require that the infringer
intentionally perform the act. All that is required for direct
infringement is the act.
Active inducement to infringe occurs when somebody
induces another to infringe. If there is no direct infringe-
ment, there cannot be active inducement to infringe, no
matter how hard someone tries to induce infringement.
(Of course, there could be other legal issues in this case.)
Contributory infringement occurs when a component of
a patented invention is sold or offered for sale in the
United States, or imported into the United States, by a
party who is aware that the component is especially made