Broadly speaking¹, patent claims may cover either products (article claims) or processes (method claims). Method claims have become increasingly common as inventors seek to patent various methods of conducting business operations, especially conducting business via the internet – the infamous “business method patents.” Infringement of a method claim occurs when each step recited in the claim is performed in the practice of the accused process. Moreover – and an aspect frequently overlooked by both patentees and patent draftspeople,² each step must be performed by the same party.
Over the years, the courts have modified this rule somewhat, finding “joint infringement” where the steps are performed by different parties but there is sufficient connection between them. The critical word here being “sufficient.” The question of what is a sufficient connection was recently addressed by the Court of Appeals for the Federal Circuit (BMC Resources, Inc. v. Paymentech, L.P.) which held that joint infringement requires a common “control or direction.”
Admittedly, this is a rather stringent standard. The Court went on to note that this standard “may in some circumstances allow parties to enter into arms-length agreements to avoid infringement,” but continued that “concerns over a party avoiding infringement by arms-length cooperation can usually be offset by proper claim drafting. A patentee can usually structure a claim to capture infringement of a single party.”³
The lesson to be learned: method claims require careful drafting. If at all possible, each method claim should be drafted so as to recite the acts of only a single party.
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¹ This applies equally to men.
² Formerly known as “draftsmen.”
³ Easy to say; not so easy to do.