Monday, January 5, 2015, 8:42 AM

Claim Scope and the Actor(s) in a Claim

Scope of a claim and the number of actors in a claim are interrelated.  Each of these affects what is claimed and whether this provides good claim coverage for the client.  An apparatus claim is usually a single actor claim, but system claims and method claims are not necessarily so straightforward to craft as a single actor claim.  Determining what product(s) the client actually sells or intends to sell, and what are the interactions in the product, provides good guidance as to the claim scope.

What we mean by the terms “actor”, and “single actor claim”?  The actor, or agent, is the performer of an action.  Take, for example, a software-based invention that involves interaction between one or more users and one or more machines, ostensibly programmed computers, servers, user devices, etc.  Or, an invention involving specialized equipment that has programming.  The actor could be a user, performing actions on the machine and interacting with the machine.  A method claim could recite the user pressing a button, the user inputting data, or the user deciding to do an action, etc.  But, writing a method claim from the user standpoint, with the user as the actor, can be problematic.  We are told, as patent practitioners, that litigation involving claims reciting a user as the actor are difficult to prosecute as they involve the user as a contributory party to infringement.  Claim scope having the user as an actor is thus to be avoided.

Instead, it is preferred to have the machine be the actor.  That is, the machine, or a processor of the machine, is performing the actions in the method claim.  Another way of visualizing this is that the method claim can be written from the viewpoint of the machine.  For example, the method claim can talk about receiving input from a user, sending output to a user, receiving input from a user device, sending output to a user device, and so on.

System claims usually involve multiple pieces of the system (members, devices, assemblies, subassemblies, etc.)  It is important to determine, as discussed above, what part of the system the client is selling.  Is the client selling entire, bundled systems?  Or is the client selling one component of a system?  Claim scope should be adjusted accordingly.  Likewise, the number of actors and viewpoint of the actor should be adjusted accordingly for the claims.  For example, if the client is selling component A in a system of A, B and C, the system claim(s) and the method claim (if appropriate) should be written from the viewpoint of component A.  The system claim could claim component A, configured or arranged to receive input from component B and to direct component C to perform operation X, based on determination Y.  On the other hand, if the client is selling a bundled system of A, B and C, the system claim could claim component A…; component B…; and component C…, wherein etc.  These are templates to consider, rather than exact claim language.

In the system example, the claim could be written with a single actor, e.g., the system.  Or, the claim could be written with multiple actors, each component being an actor.  In a way, this is still a single actor claim in that the components are part of the single actor.  Emphasis, here, is on matching the scope of the claim, the viewpoint of the claim, and the actor in the claim to the client’s interests.  This is all part of the art of patenting.

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