Do I need international protection for a computerized method?

1

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?

Wascally Wabbit

Posted 2013-11-24T01:18:54.243

Reputation: 111

Answers

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.

Edit:

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.

George White

Posted 2013-11-24T01:18:54.243

Reputation: 21 648

1My 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. – Wascally Wabbit – 2013-11-26T04:33:42.393

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. – Wascally Wabbit – 2013-11-26T04:49:04.127

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 – 2013-11-26T18:19:14.550

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. – Wascally Wabbit – 2013-11-27T05:14:23.653

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 – 2013-11-27T17:17:25.673

I'm back, because I am still struggling with this. My invention involves multiple vehicles reporting their positions, plus multiple people reporting where they are and where they wish to go, then a computer running an algorithm that allocates rides to people. I have one claim with vehicles and a dispatch unit and the dispatch unit having a computer program. I want the vehicles to be the only thing that exists in the US, so the dispatch unit+program can be anywhere and still be covered. But the cars and D.U. must communicate, so the DU must exist, somehow. How to word it so the DU "vanishes"? – Wascally Wabbit – 2013-12-25T00:22:28.150

In claim wording a positively required element would be introduced as a phrase starting with "a handle" or "a plurality of mobile computing devices." Something inferentially claimed would be: "a radio configured to send a message to a server". The radio is a required claim element. It needs to be set up to send a message to a server. At this point you have not made the server an element of the claims. It is just part of the definition of what a radio needs to set up to do in order to meet the criteria for this element of the claim. – George White – 2013-12-25T00:34:39.337

So "a plurality of mobile computation and communication devices configured to sent a packet of information to a dispatch unit" and further "the plurality of mobile computation and communication devices configured to receive information packets from a dispatch unit." – George White – 2013-12-25T00:35:34.480

What about the computerized method on the dispatch unit? What I have now looks like:" ....vehicles with means for receiving directions, said directions being produced by a routing method in a computing system, said routing method comprising (blah, blah) .." Have I introduced a positively required "routing method" here? – Wascally Wabbit – 2013-12-26T03:08:33.647

Not necessarily. I'm not going to be able to help down to this fine grain a level but I will say don't use the word "means" unless you specifically intend the claim wording to be interpreted under section 112(f), assuming you are filing with the USPTO. – George White – 2013-12-26T04:19:55.560

I am filing with USPTO. Is interpretation under sec. 112(f) a Bad Thing[tm]? I have been boning up on means-plus-function language, and see little alternative to doing it that way. Must the "means" reside in the US? Is that, after all, the point to the inferential claim? Is there another way to couch this, and another section of USC 35 I should be aiming at? Thanks very much for all your assistance, by the way. I am much obliged. – Wascally Wabbit – 2013-12-27T03:44:43.210

112(f), called 112 6th paragraph before the AIA, says if you use "means for [accomplishing a function]" in a claim what that covers is only the ways that are clearly described in the specification. Normally elements are defined by what they are (structure) not what they do (function). Defining by function is allowed but it could end up being limiting. "A responder" is a thing, it could be lots of things. "Means for responding" is defining by function and by 122(f) or 6th, *only covers things you particularly explain in the text that accomplish responding. – George White – 2013-12-27T05:06:48.373