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So, assume I have a software invention with two aspects. Let me provide an example to simplify things. Assume I invented a client and server. The client and server both communicate with one another. The client is a part of my invention. The server is also a unique part of the invention. On the other hand, the user could use his custom client to connect to the server that I have created. Though, my client would provide extra unique features than the custom client would not. How can I say that in claims. From my understanding I could do something like this:

Claims: 1. A client which does ... a. b. c. 2. A server which does ... a. b. c. 1 and 2 are independent claims which have dependent claims (a,b,c) on each of them. So, in that manner if someone makes my exact client (with my unique client features described in claim) he would violate claim 1 and if he makes the server would violate claim 2. If he makes both he would violate both claim 1 and 2.

In the detailed description of the invention I would say: In one aspect of the invention a client does ... Also, the user could use his own custom client.

In another aspect of the invention the server does ...

Is this the right way to do what I described. Thanks.

P.S. Keep in mind that I am talking about an abstract example above I am not discussing the patentability.

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This is a good way to do it—I would be reluctant to call anything the "right" way though.

Because your independent claims contain complementary features, they would generally be seen to relate to the same invention. It is therefore unlikely you would be required to file a divisional. You may also want to consider claims of other types (notably method claims and a system claim) as well.

In the description, you have identified a good way of describing the parts. However you may want to also describe how the parts work together (to show the synergy between them). This might be done with reference to a sequence diagram, for example.

I would question the value in mentioning that a user can use their own custom client. To me that is simply saying that your invention is not very important. I can't see any benefit that would give you.

  • that is a good point about not mentioning that the user can use their client. I did not understand the part about "Because your independent claims contain complementary features" In that example mentioned the client is a different program from the server software but they communicate with each other. Without the client there would not be a use for the server and without the server there would not be any use for the client. – Rick James Feb 27 '17 at 13:30
  • @RickJames Complementary in the sense that they complete each other. That is, each claim contains the parts that the other claim doesn't contain, such that together they describe the whole operation. – Maca Feb 27 '17 at 13:37
  • One last question. What if I decided that the server is the most unique part of my invention and I would not put much importance on the client itself. Can I specify one claim on the server only? And in that case am I still allowed to say that I have two aspects in my invention? – Rick James Feb 27 '17 at 14:22

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