In claims for a computer-implemented invention, what is the practical advantage of repeating similar claims under "a method," "a system," and "a non-transitory computer usable medium" categories?

i.e., Is there any precedent for losing an opportunity to claim infringement due to not having the claims for all these categories?

If questioning justification for the cost of a potentially large number of claims, would it make sense to focus on just one or two of these categories?

1 Answer 1


It can make sense to focus on one or two types of claims. Each type of claim gives you the chance to go after a different category of infringer. A distributor or importer of a system may never take it out of the box and turn it on. They would not be liable for direct infringement of a method claim because they never performed the method. Think about who infringes a claim type. induces infringement

Without the full panoply of claim types you are not completely boxed in. You can cast a bigger net by suing over contributory infringement and/or inducing infringement as well as direct infringement. This might snare players where you do not really have the right claim type. Best is to be able to go after a deep pockets infringer who's infringement is very visible, for direct infringement.

Regarding the number of total claims - you only get three independent claims for "free". Each type of claim needs to be an independent claim. It is advisable to have more than one independent claim per type. If the applicant is a micro entity the cost for excess claims is not very high. $115 for each independent claim beyond 3 and $25 for each claim over the total of 20. It is possible that an examiner will restrict your application to only system claims or only method claims. If the restriction - that would get expensive.

  • Thanks – I can see how, if you have a fairly small number of primary claims, triple-ing them with all 3 types is no problem if the total is within 20, or not vastly beyond. Much above that, it becomes an expense-justifying decision. In my case of a computer-implemented invention, if I was thinking of doing "method" and "system" but not the software-specific one ("non-transitory...") Does that makes sense, or it is advised to do that one instead of one of the other ones?
    – Charles
    Apr 30, 2019 at 2:48

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