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This question is a continuation on the results of Detailed description of a system to suit system and method claims.

Notice too I'm the guy of What are the risks of writing a patent specification without an attorney? and I'm trying to write myself the description of my invention, then before 12 months after filing get a patent lawyer to review my claims or write different ones. So my description writing is a bit speculative to what final claims will be used. I have written some claims myself but I expect them to be rewritten within a year.

I finished writing a description of a computer implemented system.  As I described it I've been talking about “embodiments of the system” all the time. Now I wanted to add some language to the description to be able to support method claims. I'm a bit confused to what “language” may be required.

I have some thoughts about how to introduce this method language in the description. It would be great if someone could comment on them, or point out the right way of introducing this language.

a) Describe as a method all what I have already described as a system and that involves steps of some sort. I have many flowcharts in the description, maybe I can re-describe them as a method. If I do that, shall I do it interlaced with the system description or shall I start a new section and describe all again as a method.

b) Describe as a method only the human performed steps of the described system. Meaning the actions that a user would perform to use the system.

c) Forget about the method claims and use only system claims, or use system claims and claims starting with “ A computer-implemented process for...” In this case my current description language could already support both system claims and computer-implemented process claims.

d) Just add the word “method” to the title, so that reads something like “system and method for...”. Then in the description add the word “method” to some of the places where I had system, so that now they are “system and method”. It sounds a bit weird though to refer to “embodiments of a system and method”.

Related with my thought d) I've seen some patents that have the word “method” in the title and then have method claims, but they don't really use the word method in the description, they actually describe flowcharts but talk about a system. I made a search in the USPTO database http://patft1.uspto.gov and search for patents that have the word “method” in the title, but do not have the word “method” in the description. ie. ttl/method andnot spec/method This search results in 39713 hits!!! I checked a few of them and effectively they had “method” in the title and method claims but no references to methods in the description. Were all these people lazy? Or is it understood that if you describe something that can be interpreted as a method then I can claim it as a method regardless of specific language with the “method” word in the description?

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Sorry for the short answer. At the level of a pro se provisional I would not worry about the title so much. I would have a separate section for the methods. Typically it would be text corresponding to a flow chart saying: "as seen in fig. x step s1xx is receiving the data packet by the widget which was produced by the foo." Method steps are ----ing. Locating, painting, inserting.

Many people do recommend a separate set of flow charts and text covering the steps the user takes and those the system takes.

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  • Ok, thanks. I think I got a bit confused by trying to write a description that could support any sort of claim types. At the end it's been easier than I was imagining, I just wrote the method claims (at the highest level of abstraction) and from them made 3 flowcharts, all steps starting with gerunds -ing. One flowchart is for the user steps. Then when explaining these steps I linked them to the system implementation of the corresponding steps. I put all that in it's own section titled “Description of methods” (couldn't think of a better title).
    – martinako
    Feb 27, 2013 at 23:55
  • I'm still curious about the unexpected large number of patents I found that mention “method” in the title and in the claims but there is not explicit references to “methods” in the description. Maybe the result of my search returned patents that were claiming priority of another patent that did make explicit references to “methods” in the description?
    – martinako
    Feb 27, 2013 at 23:56
  • The specs coulld have used the terms steps or process or protocol or just said - "the way to use this is to first do X and then do Y". No need to use the word method.
    – George White ♦
    Feb 28, 2013 at 4:51

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