For academics, it’s “publish or perish”. For inventors, I’m hoping that the recent “Bilski” fiasco will start a mantra of “process or perish”, where I mean that inventors will realize that there is a difference between a patentable process and a (questionably) patentable “method”. If the PTO and the courts continue along the current path, I’ll be celebrating the “death” of so-called methods patents and method claims tacked on to apparatus patents.
It has become fashionable these days to file patent applications with “method” claims, either added to apparatus claims or standing alone. The patent law allows patents for “any new and useful process, machine, manufacture [manufactured article], or composition of matter” where I think processes should actually accomplish some result. “Methods” fall under the rubric of a process but have really become a bastardization of what a process should mean. In the extreme, an entirely new class of patent, the business method patent, developed but as the Supreme Court has just ruled, pure business methods are unlikely to comprise patentable subject matter.
But you are probably not involved in business method patents; instead you deal with apparatus or software patents. While software patents are often lumped with business method patents because they both deal with the intangible, software by definition is the series of steps needed to accomplish a result and are proper processes. It is the “method” claim that is overused.
Most apparatus patents these days have separate independent method claims tacked on. If your apparatus invention is, say, a spectrometer, then your patent attorney is sure to want to add a claim starting off with: “A method of measuring the spectral distribution of a light source comprising the steps of….” where what follows is a list of steps.
The list of steps usually reads something like:
Step1 – Providing [the N key elements of the apparatus described in the patent].
Step N
Step N+1 Causing light from a light source to enter [the apparatus]
Step N+2 Recording the response of [the apparatus]
Although currently allowed as a “process”, I do not believe these “methods” are indeed processes as intended.
A patentable process is a unique recipe for doing something, independent of the patentability of the apparatus used in the process. Thus, in the field of optical coatings for glass, you might develop a unique time-temperature profile for depositing standard coating materials, in standard coating chambers, and reasonably say you have a patentable process.
There is not, generally, a “unique process” in operating a patentable apparatus in accordance with its normal operational procedures. Hence a majority of methods claims that are tacked onto apparatus patents are bogus. Such claims, if held enforceable when the infringer IS using the patented apparatus, are superfluous at best; the use of the patented apparatus for doing anything is an infringement. On the other hand, if the infringer is NOT using the patented apparatus, these claims are giving patent status to a concept [the concept being the use of an unpatented apparatus, in its normal operational mode, to achieve some result].
Of course, some methods claims in apparatus patents are appropriate – if you have developed a new class of apparatus, method claims describing the operational principles behind your device will help to protect your market from clever infringers who may try to work around your apparatus claims.
So I believe there is a method to the PTO’s madness and that method claims that cover how to operate an apparatus should be considered unpatentable subject matter, along with “business method” claims. Reserve you method claims for processes that really produce something or to cover a new class of apparatus.

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