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I am reading on some patents and I want to make sure I understand them right. Let us follow my example which is a custom vibrator. I have no plans on making a patent over it, I am just using it as an example to understand the patents and how they are written to avoid infringing. The custom vibrator is an iOS app that works by taking a custom vibration pattern from the user then replays that pattern.

I have seen this sentence mentioned in several of the software patents "method, apparatus, and/or computer software." Now, from what I have read this means that the author of the patent can implement the technology as software and also as apparatus having that software. Did I understand this right? Let us apply that concept to my iOS app that I am developing. Does this mean that the method is the "technology" to allow the user to record and play a vibration pattern to experience the vibration effect? If that is the case, then what is the difference between the method and software. Does the method represent the "technology" to achieve the vibrator effect and the app itself as the "software"? What if I decided to build a new device or apparatus that will work only as a custom vibrator using the technology described. How will that fit into "method, apparatus, and/or computer software" terminology.

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Perhaps it would be clearer by going back to first principles for patents.

The purpose of a claim is to set out certain things that others cannot do. Once a patent is granted, nobody else can do anything that is claimed. This is true regardless of the category of the claim (whether method, apparatus or whatever else).

It is therefore not correct to say that "[the patentee] can implement the technology as software and also as apparatus having that software". A patent does not give any rights to do something. A patent is solely used to stop other people from "doing" the claimed invention.

What does it mean to "do" a claimed invention?

A method claim involves a series of steps. A method claim is "done" by a person performing all the steps (in principle, this is regardless of how those steps are performed, such as using a computer, on pen-and-paper, etc). If you claim a method, you will be able to stop a person doing those steps.

An apparatus claim involves some physical object. An apparatus claim is "done" by making, using, offering to sell, or selling that physical object. If you claim an apparatus, you will be able to stop a person from making, using, offering to sell, or selling that physical object.

A software claim is similar to an apparatus claim, in that it involves a physical object (in the broadest sense of physical). A software claim is therefore "done" by making, using, offering to sell, or selling that software. If you claim software, you will be able to stop a person from making, using, offering to sell, or selling that software.

These categories are generally complementary, as they target different infringers and different infringing acts.

What is the difference between a method and software?

The difference is in the infringing acts, and who would be caught by the infringement. A method is infringed by the person performing the steps of the method. Software is infringed by a person making/using/offering to sell/selling that software.

There is some overlap here. A person using software will generally be performing the steps of an equivalent method. They would therefore be infringing both claims simultaneously.

Does the method represent the "technology" to achieve the vibrator effect and the app itself as the "software"?

Sort of. A method represents the steps that are performed, generally independent of how they are performed. Software (such as an app) is a specific implementation of those steps.

What if I decided to build a new device or apparatus that will work only as a custom vibrator using the technology described. How will that fit into "method, apparatus, and/or computer software" terminology.

A new apparatus would be an apparatus claim.

Worked example

Assume there is a granted patent with three claims:

  1. A method comprising: sending a packet across a network.

    • Infringed by: a person who performs the step of sending a packet across a network (regardless of how they do it).
  2. An apparatus comprising: a network interface card configured to send a packet across a network.

    • Infringed by: a person who makes, uses, offers to sell, or sells a network interface card
  3. Software comprising instructions for sending a packet across a network.

    • Infringed by: a person who sells firmware that allows a computer to send a packet across a network

Each person's actions only infringes one of the three claims. If you omitted any one of them, you would narrow your protection.

  • but if the method claim covers the implementation regardless of how and whats it implemented on. Does not that mean the method would protect the implementation on both software and independent apparatus having the method implementation as software. Should not someone say method and refrain from saying apparatus and software? And if that is the case, then why do they add apparatus and software to the claims? – Lynn B. Feb 18 '17 at 23:01
  • If you google "method, apparatus, and software" you will find plenty of patents with those. Also, on the method claim you can find something such as a method performed as one or more processes executing in a electronic device. Can you explain that too please? – Lynn B. Feb 18 '17 at 23:20
  • @LynnB. The difference is evidence. For a method, you essentially have to prove someone performed the steps. This can be tricky. For an apparatus, simply offering to sell the apparatus (such as on a website) is enough, which is much easier to show. There is no disadvantage to including apparatus and software claims, in addition to a method. – Maca Feb 19 '17 at 6:59
  • @LynnB. A method performed on an electronic device is still a method (and therefore still covers the steps being performed only): it is just more limited. This is done in some jurisdictions since a method performed solely by a human in their mind would not be patentable. – Maca Feb 19 '17 at 7:00
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    In addition to what Maca is saying, why not? If in one of a million cases it gives any advantage, include it every time. That's a big part of the reason. Normally you could have the same effect with only one of them, but in some special cases ... – DonQuiKong Feb 19 '17 at 10:13
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I'll try a fast claim construction to show you the different ways of using these:

  1. A method comprising the following steps:
    • A user taps on a surface,
    • electromagnetic field variations make the cpu aware of the location of the tap
    • the cpu tells looks up the corresponding vibration element and adds them to the previously recorded, if any, elements
    • repeating of the previous steps at least once
    • after registering a stop tap, using the recorded pattern to activate a massage device in a certain way

*note: this could totally be implemented by fpga or maybe even mechanically (probably not, but the claim allows it)

  1. A software enabled to facilitate the method from claim 1.

note: claim 1 is broader, it doesn't need the software, (there are examples where it would be easier to actually implement the method without software), but the examiner will cite broader prior art against method claims, too. They might find a document saying touch input is known (smartphone), one saying selecting custom vibration is known (maybe the patent you cited in another question, where the vibration ahs nothing to do with massages) and one saying programming a massagetool is known and then tell you the person skilled in the art knows all three and combining them is obvious. (I've seen US examiners combine things I personally would have deemed not combinable as they had nothing to do with each other).

The software claim however, would then need prior art doing all this in software, and maybe the programming of massagetools has never been done in software, only by moving some gears, and then you could get claim 2 through. (note: just a silly example, I'm, oversimplifying a little, but in essence thats how it goes)

  1. Apparatus able to implement the software from claim 2.

  2. Apparatus able to receive custom vibration patterns from the software from claim 2 and use them for a massage.

note: I think this is self explaining.

  • So, someone from the patent office can say, for example, method is not obvious, though the software program is obvious and rejects the software program part. If that is the case, where would that leave the person who did the patent. Will the person from the USPTO allow the person with the patent to keep the patent and removes the software portion? – Lynn B. Feb 18 '17 at 23:27
  • Yes, that could happen and yes, you can change claims during examination. But tbh I think in most cases it really doesn't matter if you wrote software or method or apparatus, it's almost the same. – DonQuiKong Feb 18 '17 at 23:44
  • If it does not matter, why would large companies such as Apple write them. Could not they settle for a more generic claim like a method claim. – Lynn B. Feb 18 '17 at 23:55
  • Because they want to cover the very few cases where it might make a difference. – DonQuiKong Feb 19 '17 at 10:14
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Just to add to the great answers above. The examination guidelines of the European Patent Office are clear in that claims for computer methods are only allowed when there is some sort of implementation of the method, the so-called "computer-implemented methods" (http://www.epo.org/law-practice/legal-texts/html/guidelines/e/f_iv_3_9.htm). Otherwise it falls, let's say, in a non-technical category, in the sense that's a computer program is merely an mental act. So in Europe you have to include some kind of hardware in the claim.

I am not really into the US rules, but I do know that since the famous "Alice case", patent attorneys and practicioners are struggling to pull together claims for computer programs inventions, because the examiners often reject them as "abstract methods" (they call it "Alice rejection", take a look at this article for more info http://knowledge.reedtech.com/h/i/278818710-how-to-successfully-overcome-alice-rejections/261237).

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