As the Internet of Things (IoT) continues to grow, more inventions will be based on systems made up of multiple devices connected through the Internet. In this article, we will refer to such inventions as "system inventions."
Because the Internet works across national borders, these systems may also operate across different countries. However, patent rights are granted by each individual country. There is no single patent that is valid worldwide.
This difference between the global nature of the Internet and the national nature of patent rights can create particular challenges for system patents.
What Is a System Patent?
As an example, imagine a system S1 with the following three functions:
・Input function (F1): receives data D1 from a user.
・Processing function (F2): performs special processing on D1 and creates D2.
・Output function (F3): outputs D2.
These three functions may all be provided by a single standalone device. They may also be divided among several devices.
For example, a client device (such as a PC or smartphone) may provide the input function F1 and the output function F3, while a server performs the processing function F2.
In this case, the invention may be claimed as:
・A system including F1, F2, and F3.
・A system including a client with F1 and F3, and a server with F2.
In this article, a patent that covers multiple functions performed by multiple devices (such as a server and a client) will be called a system patent.
Server Patents
Suppose another company places a server with F2 in Japan, but places the client with F1 and F3 in the United States.
If you only own the Japanese system patent, it may be difficult to claim direct patent infringement.
Why?
Because the server located in Japan performs only F2. The other required functions (F1 and F3) are performed outside Japan.
(Indirect infringement may sometimes be possible, but this article focuses only on direct infringement.)
To avoid this problem, it is often useful to obtain not only a system patent but also a patent directed to:
・A server including F2.
Since the server exists in Japan, infringement of the server patent can be established.
In many systems, the server performs the core processing. Therefore, a server patent can be an effective way to protect the most important part of the invention.
Client Patents
It is also possible to obtain a patent directed to:
・A client including F1 and F3.
Now suppose another company installs its server with F2 in Singapore, while the client with F1 and F3 is located in Japan.
In this case, neither the server patent nor the system patent may cover the situation because the server is outside Japan.
However, since the client is located in Japan, infringement of the client patent can still be established.
In practice, client patents often have an important advantage over server patents.
It is usually much easier to verify how a client device operates than to inspect another company's server. As a result, detecting infringement is often easier with a client patent.
Many Possible System Configurations
Let's look at a more complex example.
Assume a system S2 includes four functions:
・Input function (F1)
・Processing function (F2A)
・Processing function (F2B)
・Output function (F3)
The inventor may originally imagine the following configuration:
・The client performs F1 and F3.
・The server performs F2A and F2B.
However, another configuration may also be possible.
Modern smartphones are becoming increasingly powerful. Even functions that once required a server may now run directly on the client.
For this reason, several different patent claims may be appropriate.
Possible System Patents
・A system including F1, F2A, F2B, and F3.
・A system including a client with F1 and F3, and a server with F2A and F2B.
・A system including a client with F1, F2A, and F3, and a server with F2B.
Possible Server Patents
・A server including F2A and F2B.
・A server including F2B.
Possible Client Patents
・A client including F1 and F3.
・A client including F1, F2A, and F3.
There may be even more variations.
For example, F2A and F2B may be performed by two different servers instead of one.
In that case, additional claims may include:
・A system including a client with F1 and F3, a first server with F2A, and a second server with F2B.
・A server including F2A.
Why System Inventions Are So Difficult
Drafting patent claims for system inventions is challenging because two different ideas must be balanced:
・System inventions naturally operate across national borders.
・Patent rights are limited to individual countries.
When preparing patent applications for system inventions, patent attorneys first identify the minimum set of functions needed to provide the service.
Next, they decide which functions:
・should be performed by the server,
・should be performed by the client,
・could be performed by either the server or the client, and
・could even be performed by a third type of device.
After that, they consider every device that might perform all or part of those functions, including servers, clients, and other devices.
By examining many different system configurations, they can choose claim language that is both patentable and commercially useful.
They also consider different ways to divide the functions and different levels of abstraction when describing each function.
Even though the underlying invention is the same, different claim wording can create additional patent value. With careful drafting, a single patent application may provide protection equivalent to several—or even dozens of—different patents.
The goal is not simply to obtain a patent.
The goal is to obtain a patent that is strong, practical, and easy to enforce.
Conclusion
System patents are powerful, but they also have inherent weaknesses.
Internet-based systems often cross national borders while patent rights do not.
For many software and IoT inventions, a well-designed patent strategy should consider not only system claims, but also server claims, client claims, and other possible device configurations.
As cross-border digital services continue to expand, the limitations of system patents may become an increasingly important issue in patent law.