For example,

Preferred scenario 1: My device has a processor and some electronic gadget wired to it. The processor makes the gadget do something.

Sneaky scenario 2: My electronic gadget may be modified to connect to a, say, Raspberry Pi or Arduino (with GPIO or USB) and a user can code their own software or have it supplied by a sneaky manufacturer.

The gadget alone does not do anything nor solve a technical problem.

Here is my attempt to cover this in a dependent claim:

  1. The device of Claim 1, wherein said processor is expected to manifest as part of an existing processor so capable, either physically or logically, as a result of deliberate software included with or added to said existing processor.

Referring to my previous question Patent boilerplate for a processor embodiment (not enablement)?, I'd like to add a dependent claim to the effect of the "processor" may be the processor of some "existing hardware/processor/microcontroller".

In other words,

I'm trying to cover the case where a manufacturer designs around my claims by not supplying a processor in a sneaky way. Is there some phrases I can use to this effect? I've tried searching USPTO, but this scenario might not be common.

1 Answer 1


Direct infringement by a manufacturer requires the manufacturer to either perform a whole set of claimed steps or make/sell something that contains all elements of a device claim.

If a thing is made and sold that has effectively no utility without a key missing component the manufacturer might be committing indirect infringement.

Indirect infringement suits can be successfully brought if at least one customer combines the device and adds the key component required to have a unit that a claim reads on.

Method claims are a good way to accomplish this. The end user directly infringes when they put it together and operate it. You don’t need to go after them but you need to identify one. The manufacturer has presumably induced infringement. I say presumably but that is something for you to show.

If the manufacturer promotes that behavior and/or instructs how to do it they are likely (indirectly) infringing.

However it is better to be able to go after a manufacturer for direct infringement. A solution is to bring the key item in by inference rather than as an actual claimed element. This assumes your electronics, without the processor, is patentable.

A device having an A B C capable of operative coupling to a processor.

You say it doesn’t do anything by itself. Here is an example - invent a new hammer head. Without a handle it is useless but you do not claim a hammer with an XYZ head and a connected handle. It is a hammer head configured to accept a handle. This might or might not work for your case.

Your proposed claim is convoluted and won’t solve your problem or otherwise have any merit that I can see. Claims are really hard.

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    “Capable of” is not as good a “configured to”. And “the processor may be XYZ” is good in the specification but a claim needs to have clear boundaries of it’s scope. “Where the processor is a single board computer or a single board microcontroller.”
    – George White
    Oct 23, 2022 at 10:21
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    @Drakes If you want an effective patent, I highly recommend hiring a patent attorney or agent to draft and process it.
    – Eric S
    Oct 23, 2022 at 15:53
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    @Drakes I agree with George. There is really no point to drafting claims if you are hiring a professional. They will take you seriously if you have a good invention. Drafting a specification may speed the communications process, but don't expect your attorney or agent to use any of it. I would focus your time on fully fleshing out the invention and as many premutations and embodiments you can think of even if they are less ideal than your preferred embodiment..
    – Eric S
    Oct 24, 2022 at 1:14
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    You have done a large amount of educating yourself but as a retired patent agent I can tell you I never found anything, in the decade I spent in that career, that was directly useable (other than drawings) in materials provided to me.
    – George White
    Oct 24, 2022 at 1:26
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    @Drakes - if the first thing an attorney or agent hears from you is you want to control drafting and prosecution they may run for the hills. Many practitioners shy away from individual inventors because they have had experience with troublesome people. People that are sole practitioners or in small firms are usually less expensive and more amenable to individual inventors. You might look for an inventors club near you to get recommendations. I used to belong to NAPP which is an association of attorneys/agents focused on patent prosecution. Mostly small firms.
    – George White
    Oct 25, 2022 at 22:59

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