Central to my invention is a process that runs on a computer, generating routing information, which is sent to vehicles for efficient carriage of persons or cargo. While the people or cargo will be carried locally (say, in New York City), the computer running the algorithm could technically be anywhere.

Will my US patent prevent someone from putting a server with an infringing method somewhere outside of the US, selling transportation in the US that uses routes generated on that server, and avoiding technical infringement of my US patent on the grounds that the method is not running in the US?


1 Answer 1


Patenting in lots of foreign places does not solve the problem because there are so many foreign countries. The bad guys just need one where you don't have a patent or where patents aren't enforced. The solution is "inferential claiming". Step 1, sending by a client the following data to a server; step 2, receiving from the server a result that was created by the following actions being performed on the sent data; step 3, dispatching vehicles based on the received data.

The positively recited steps: sending, receiving and dispatching are all done in the US. Now, you still need to establish that the received data was created according to whatever you have in the claim but none of the steps performed by the server are an actual element of the claim.


Claims can be amended so if you get them way off someone could help you later even after many rejections, continuations, etc. However no new matter can be added after filing, so I would concentrate on a great specification rather than twisting your mind around convoluted claim wording.

  • 1
    My patent guru (Pressman) says I should have two broadly worded and nearly identical independent claims, each with a host of dependent claims. I am puzzled by this. Does it seem appropriate to you that one of my independent claims would be non-inferential claim, and one an inferential claim? Perhaps I am changing the subject but I am not seeing how having two nearly identical independent claims helps me much. I am tackling the task of re-structuring my claim as an inferential claim. As always, I am grateful for your help. Commented Nov 26, 2013 at 4:33
  • In reference to the inf. claim, it is a little obscure what is doing the computing. Does it need to be tangible? And if it is tangible, what does that mean for locality? Since I am using a "dispatch unit" to hold the computer that runs the process, if I detach the process, I wonder what the "dispatch unit" is, and if it couldn't just swim offshore also. Maybe the thing to do is specify that the VEHICLES are receiving this processed information, because they cannot be moved offshore. But the secret sauce is in the process, and that cannot exist on the cars - it must be central. Thanks again. Commented Nov 26, 2013 at 4:49
  • A more straightforward claim has the benefit of helping the examiner understand your invention and having a clear tool against an all-domestic competitor is also of value. Also you can turn the inferential claim around to require only the server side rather than only the client side.
    – George White
    Commented Nov 26, 2013 at 18:19
  • The page let me edit your comment ... odd. I am pretty happy with my specifications, though they could use a little touch up. So a backup independent claim does not count as "new material"? News to me. But good to know. Thanks again. Commented Nov 27, 2013 at 5:14
  • Anything added after the initial filing might be deemed new material if it is not already covered in the document as-filed. The claims in the initial filing are part of the specification in the sense that they are present day one and can provide support for later, amended claims.
    – George White
    Commented Nov 27, 2013 at 17:17

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