Article Of Manufacture Claims for Software Inventions: Should They Be Included in Your Patent?


Burt Magen, partner at Vierra Magen Marcus & Deniro LLP and Practice Center Contributor passed along this article he wrote entitled Article of Manufacture Claims for Computer Related Inventions.  According to Magen, article of manufacture claims can offer advantages over apparatus and process claims, including providing an easier mechanism for enforcement of the patent.  With the knowledge provided in his article, Magen says, “patent practitioners can efficiently draft appropriate article of manufacture claims to more effectively protect software inventions.”  Here is the Introduction:

The software industry is growing and becoming more important to the global economy.  As a result, the number of software patent applications has increased dramatically.  To maximize the value of software patents, it is important that the claims of such patents properly protect the invention.  Typically, software patents include apparatus claims, method claims, and/or article of manufacture claims.  Because of the nature of the software industry, for some inventions the article of manufacture claims may be the most important class of claims.  Yet, many software patents do not include article of manufacture claims or include an incomplete set of article of manufacture claims as an afterthought.

This paper advocates a greater use of article of manufacture claims for software inventions.  After identifying the structure of an article of manufacture claim, this paper explains the advantages of article of manufacture claims for software inventions and discusses the history of such claims.  The remaining portions of this paper explain the requirements for article of manufacture claims and provide guidance for drafting such claims.


The United States Constitution provides Congress with the power “to promote the progress of science and useful arts, by securing for limiting times to authors and inventors the exclusive right to their respective writings and discoveries.”[i] This constitutional provision does not require Congress to create such incentives, it merely empowers Congress to do so.  Pursuant to that power, Congress has enacted 35 U.S.C. § 101 which states:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

Thus, Congress has created four categories of inventions that can be patented:  (1) processes, (2) machines, (3) manufactures, and (4) compositions of matter.  The focus of this paper is on the third category, manufactures.  The Supreme Court has defined a manufacture, more commonly called an article of manufacture, as ”the production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand labor or by machinery.”[ii]

For software inventions, the article of manufacture claim includes a computer (or other machine) readable medium storing a software program designed to perform one or more tasks.  Below, is an example of an article of manufacture claim for a software invention:

One or more processor readable storage devices having processor readable code embodied on said processor readable storage devices, said processor readable code for programming one or more processors to perform a method for determining a speed of a bat during a swing, the method comprising the steps of:

  • accessing radar data based on  a set of one or more radars units; and
  • determining said speed of said bat during said swing based on said radar data.

The above clause “One or more processor readable … comprising the steps of” includes the preamble that identifies the claim as being an article of manufacture claim.  The body of the claim includes the steps performed by the software.  As will be demonstrated in Section VII below, there are many formats for article of manufacture claims reciting software inventions.


A.  Other Types of Claims

Typically, software patents include process claims, apparatus claims, and/or article of manufacture claims.  Process claims typically recite a set of steps performed by the software.  In some cases, a subset of the steps are performed by hardware or a human.  Apparatus claims for software inventions can be written with structural elements or means-plus-function language.  Apparatus claims with structural elements may describe an entire system, with one or more components being software.  Alternatively, an apparatus claim with structural elements may describe a computer that is programmed to operate in a certain manner or a computer that includes a memory or storage element storing software for programming the computer to operate in a particular manner.  A means-plus-function claim[iii] will recite a set of functions, most likely corresponding to a programmed computer or other machine, in a format according to 35 U.S.C. §112, ¶6.

B.  Drawbacks of the Process Claim and Apparatus Claim

Apparatus claims and the process claims have limitations that prevent full exploitation of a patent for the computer software industry.

The process claim has several drawbacks.  First, a process claim is only infringed by the operation of the claimed process.  For software, that means only the end-user who actually uses the software is likely to be a direct infringer.  In many cases, the end-user may be a customer of the patent holder.  Patent holders are unlikely to want to sue customers or potential customers.  Additionally, because of wide distribution of software, it may be very difficult to identify who the end-users are.  Finally, multiple demands and multiple lawsuits can be very expensive and not very efficient.

One option for enforcing a process claim against a distributor or maker of the software is to allege contributory infringement.  Contributory infringement is problematic and less efficient than asserting direct infringement.  First, contributory infringement requires knowledge by the person being accused.[iv] Second, additional evidence must be submitted to prove the additional knowledge element.  Finally, the patent holder must still prove direct infringement and that may include the arduous task of finding who the direct infringers are and proving that they directly infringed the claim.

Apparatus claims typically suffer from the same problems described above with respect to process claims.  For example, an apparatus claim may recite a computer which includes software.  Only vendors who sell software preloaded on a computer directly infringe such a claim and preloading the software is not the usual manner for distributing software.  Typically, it is end-users who load the software on the computer and would be the direct infringers of an apparatus claim.  An additional limitation or problem of the apparatus claim is that in a hardware system which may cost thousands of dollars, it may be difficult to ascertain damages with respect to a reasonable royalty for including the infringing software.[v] Additionally, protecting software inventions with hardware claims requires an unnecessary use of additional limitations that are not important for the software.  For example, limitations about the hardware are included in the claims.  This may provide some infringers with a safe harbor from infringement, even though the software implements the invention.

C.  Article of Manufacture Claims Overcome the Limitations of Apparatus and Process Claims

In many cases, the article of manufacture claim is the preferred alternative for protecting software inventions.  Typically, providers of software will distribute the software separately from a computer system.  This distribution can be via floppy disk, CD-ROM, DVD, over the Internet, etc.  In these cases, the only infringement of an apparatus claim or process claim is by the end-users.  The article of manufacture claim, however, permits direct attack against a competitor’s media based manufacturing and distribution activity.  That is, the article of manufacture claim covers the CD-ROM sold at the computer store, a server on the Internet, etc.

More importantly, the article of manufacture claim is in a minimal claim format.  That is, typically there are minimal (or no) limitations regarding hardware.  In most cases, the patent holder will be able to successfully argue that software on a disk or memory device incorporated in the computer or separately distributed infringes the article of manufacture claim.

To read the full article click here.

Burt Magen will be speaking about advanced claim drafting issues at the upcoming PLI program Advanced Patent Prosecution Workshop 2010: Claim Drafting & Amendment Writing on August 16-17 in San Francisco.

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