Method Claims and Undetectability

Why these types of claims can be harmful to an inventor – and when they make a patent unenforceable.

Method claims are especially difficult to detect, but they have another twist that makes them less important than “apparatus” claims.

Method patents are infringed only when and where someone does the method. 

Method claims can be avoided by simply moving across the border.

I looked at patent family for manufacturing high-end disk brake rotors for cars.  These were exceptionally high-performance products, but the key breakthrough was the processing steps were dramatically lower cost than previous high end brake rotors.

Their patent attorney elected to get method claims only.  This is probably because the method claims were much easier to get.  My guess is that the client only wanted “a patent” and not “a valuable asset,” the attorney chose the former.

Here’s the problem with their manufacturing method: what happens if I sue someone for making the same high-end disk brake rotors using the patented method?  Simple.  The infringer moves their manufacturing plant to Mexico or Canada – anywhere I do not have patent coverage.

Method claims can destroy your competitive advantage.

I looked at another invention where a US manufacturer of structural beams had figured out how to make these beams at 10% of the previous cost.  He had experimented with running his machinery at 10 times the normal speed with much higher temperatures and pressures – and it worked.

Our inventor had sped up things so fast that his structural beams were cheaper than the cheapest competitor: wood beams.

Sadly, he only had method claims.  And his biggest competitor was in China.

Shortly after his patent was issued, Chinese competitors were flooding the market with similarly priced product.

Not only were his method claims undetectable because the process happens behind closed doors, but they were also unenforceable outside the US.  In this case, the inventor decimated his company’s competitive advantage by getting a patent.  In this case, he should have just kept his breakthrough as a trade secret.

One other alternative would have been to get a patent on the product he was producing.  The new process would have created a product with a higher fiber to resin ratio, specific types of resins, tell-tale effects of the higher temperatures and pressures, or other physical characteristics.  A patent on the specific product he was producing would have been brutally effective.

A patent on the detectable product would have allowed our US manufacturer to stop Chinese imports at the border.  This is so long as the Chinese imports had the same physical characteristics as we defined in the patent.  In this case, the patent would have protected the US inventor’s investment in their manufacturing process, as opposed to giving it all away to his biggest competitor.

Method claims can be unenforceable because of simple, practical reasons.

A third example of a poor method claim is a local inventor’s device for a moldable earphone.  The device has two moldable plastic pieces with a hard plastic sleeve in it.  The consumer takes the product home, puts the pieces in boiling water to soften them, then places them in their ear and molds them to fit.  The plastic cools off, stiffens up, and pop in earphones into the hard plastic sleeve: you have custom molded earphones.

His patent attorney got claims on the method of putting the pieces in boiling water, forming the piece to your ear, and popping in the earphones.

What was the problem?  Who actually infringed this method?

In this case, the infringer would be the consumer.  Can I sue the consumer?  No!

There are many problems with trying to sue the consumer.  The first is logistics: I cannot sue 100,000 individual people who each bought a $40 item, brought it home, and infringed.  What is the royalty that I could collect on such a lawsuit?  Maybe 20 cents per user, which is less than the postage for the cease and desist letter.

The other problem is that the products on the retail shelf do not infringe the method.  I cannot stop import or sale of the products, which would give me a business advantage.

There is a way I can sue competitors, but it is a roundabout way to do so, called inducement to infringe.  If the manufacturer gave instructions that matched our method claims, we should be able to sue them, but it is a more difficult process.

This example emphasizes another aspect of claims: identify the actor of the claim and make sure it is the party you want to enforce against. 

You should focus claims on what your competitor will do or make.  Maybe, as a secondary or tertiary level of protection, you might get claims on what the customer does, but never lead with that.  Focus on the infringer and write claims to enforce against them.