Unit 5 - Patent Claim Design

12. Claim Point of View

All limitations or elements recited within a single patent claim should preserve a uniform "point of view." For example, every step set out in a method claim must be carried out by the same party. This uniform point of view is important because it determines which parties may directly infringe a patent claim. Although this may seem self-evident, in practice it can at times be difficult to maintain, especially where the inventive aspects of an invention are spread across various physical components or activities. A single, uniform point of view is likewise important when the commercial activity connected with the invention is shared among several parties.

Establishing direct patent infringement in litigation is usually easier than establishing indirect infringement (such as contributory infringement or infringement by active inducement), mainly because evidence of the former is generally easier to obtain than evidence of the latter. Therefore, if a claim is intended to have a deterrent effect, it should be drafted so that any effort to copy the protected subject matter would amount to an act of direct infringement. Where this is not possible (e.g., because only parties who ordinarily should not be sued, such as the general public or business customers, would be the likely direct infringers), the claims should be drafted with the expectation that indirect infringement will need to be identified and proven.

As will be discussed further, identifying and proving both direct and indirect infringement is generally easier for product claims than for process or method claims.

Example
An invention relates to a new compartment for holding the batteries used to power a flashlight. The inventor has found that when a small periwinkle-shaped piece of copper having a male receptacle is snapped onto a conventional D-cell battery, and the combined unit is inserted into a flashlight that also has a small periwinkle-shaped piece of copper but with a female receptacle, the operational life of the D-cell battery lasts three times longer than normal.
A patent drafter might draft the following claim:

An apparatus for extending flashlight battery life, comprising:

a periwinkle-shaped copper piece having a male receptacle and adapted for being operably coupled to a battery;
a battery-operated flashlight having electrical wiring; and
a periwinkle-shaped copper piece having a female receptacle, the periwinkle-shaped copper piece fastened to the electrical wiring of the battery-operated flashlight, wherein the periwinkle-shaped copper piece having a male receptacle is adapted for operable coupling to the periwinkle-shaped piece having the female receptacle.

Although this claim may sufficiently define the core inventive concept of the invention, it does not maintain a consistent point of view. Certain portions of the claim relate to components associated with the battery, while others relate to components associated with the flashlight. (If the battery were to last for the lifetime of the flashlight, there would be fewer issues with the claim’s point of view.)

But what if the person or entity marketing the battery is not the same person or entity supplying the flashlight? What if one company sells only batteries and another company sells only flashlights? As written, this claim would mean that neither the person selling the battery nor the person selling the flashlight would directly infringe it.

Direct Infringement as a Prerequisite

Direct infringement by a single entity is frequently a mandatory condition for any type of infringement, including inducement or contributory infringement, by another entity. Numerous legal frameworks require that, to successfully claim patent infringement, the patentee must prove that at least one party has engaged in direct infringement. While experienced litigators in certain jurisdictions may often find ways to argue for direct infringement even regarding claims like the one shown in the example, a patent practitioner should nonetheless aim to write claims such that their client does not have to expend significant time and resources on such contentions.

Furthermore, the patent practitioner must also contemplate drafting claims that facilitate licensing opportunities. For more on how claim scope and structure affect protection more broadly, see our guide on types of patent claims. In a commercial context, one entity may market flashlights, while another markets batteries. Neither of these parties is likely to feel an incentive to obtain a license given the claim as formulated in the example. Each may sincerely hold the belief that they possess valid legal grounds to avoid infringing the claim, as they only implement a segment of it.

Example
Assume that the patent practitioner has prepared three additional sets of claims:

one focused exclusively on the flashlight component of the system;
one focused exclusively on the battery component of the system; and
another focused on the combination of the periwinkle-shaped copper elements.

While it would still be wise to retain the original claim, these three additional claims might read:
[Flashlight claim]
2. An apparatus for extending flashlight battery life, comprising:

a battery-operated flashlight having electrical wiring; and
a periwinkle-shaped copper piece having a female receptacle, the periwinkle-shaped copper piece fastened to the electrical wiring of the battery-operated flashlight,
wherein the periwinkle-shaped copper piece having a female receptacle is adapted for operable coupling to a periwinkle-shaped piece having a male receptacle fastened to a battery.

[Battery claim] 3. An apparatus for extending flashlight battery life, comprising:

a battery; and
a periwinkle-shaped copper piece having a male receptacle, the periwinkle-shaped copper piece operably coupled to the battery, wherein the periwinkle-shaped copper piece having a male receptacle is adapted for operable coupling to a periwinkle-shaped piece having a female receptacle that is connected to electrical wiring in a flashlight.

[The connector pieces]
4. An apparatus for extending flashlight battery life, comprising:

a periwinkle-shaped copper piece having a male receptacle and adapted for being electrically coupled to a battery; and
a periwinkle-shaped copper piece having a female receptacle, the periwinkle-shaped copper piece being adapted for operable coupling to electrical wiring of a battery-operated flashlight, wherein the periwinkle-shaped copper piece having a male receptacle is adapted for operable coupling to the periwinkle-shaped piece having the female receptacle.

Observe that although Claims 2–3 reference both the battery and the flashlight, the “point of view” in every claim has been restricted exclusively to either the battery, the flashlight, or the combination of the two connector components. Consequently, Claim 2 should prove simpler to license or enforce against an infringing supplier of flashlights than Claim 1, whereas Claim 3 should prove simpler to license or enforce against an infringing supplier of batteries than Claim 1. Claim 4 centers on the two periwinkle components themselves and could be utilized against a firm that manufactures the periwinkle parts for subsequent assembly by either battery or flashlight producers.

Professional Tip
Writing patent claims is a recurring cycle of evaluation and refinement. It is rare that you will produce a superior patent claim on your initial attempt—even after many years of practice. Nevertheless, what you will discover is that this procedure ultimately yields patent claims that encompass the entire range of your client’s invention and provide robust protection.
Let us now examine an illustration of point of view within a process or method claim.

Example
An invention pertains to a client-and-server computing system. The invention is an innovative method for ordering confections via the Internet, where the customer may utilize a camera and a robotic arm to fill a bag of candy, which is subsequently delivered to them via mail. A client computer (e.g., a home personal computer) transmits a request to a server computer (e.g., a computing system of an Internet service provider), and the server computer retrieves the data, processes it, and transmits the findings to the client.
A patent practitioner could write the following claim:

A method for dispensing candy, comprising:

sending a request from a client computer to a server computer for candy located in a candy store;
sending candy store video data from the server computer to the client computer;
displaying the candy store video data on the client computer, wherein the displayed candy store video data provide a visual representation of the candy store to enable a user of the client computer to provide directions for a robotic arm located in the candy store;
sending robotic arm direction instructions from the client computer to the server computer;
converting the robotic arm direction instructions into native machine robotic arm direction instructions for the robotic arm at the candy store, wherein the native machine robotic arm direction instructions actuate the robotic arm to fill a candy bag with candy;
sending a shipping instruction from the client computer to the server computer; and
converting the shipping instruction into a native machine robotic arm shipping instruction for the robotic arm, wherein the native machine robotic arm shipping instruction actuates the robotic arm to place the candy bag in an open box and seal it for shipping.

Note that the claim lacks a uniform point of view. Specific steps are executed by the client computer while others are executed by the server computer. This implies that neither the individual operating the client computer nor the individual operating the server computer directly infringes the claim.

Commercial Arrangements and Claim Drafting
Likewise, in the business realm, one enterprise might supply the "candy store" and the robotic arm, while a different enterprise provides the server computer, and a third offers the client computer software. Although the candy store operator and the server computer provider might share a commercial agreement, the provider of the client computer software might have no contractual connection with either.

The server computer could be reachable by anyone who furnishes a credit card number for payment of services. In such an instance, as no individual party fully implements the entirety of the claim, no individual party directly infringes the claim. Consequently, none of these parties is likely to perceive a requirement to secure a license from the patentee.

Therefore, the patent practitioner can formulate two supplementary sets of claims: one centered exclusively on the client aspect of the system, and another focused solely on the server aspect of the system. (It would also be wise for the patent practitioner to retain the original, comprehensive claim.)

The two updated claims read:
[Client computer claim]
2. A method for dispensing candy, comprising:

receiving at a client computer candy store video data;
displaying the candy store video data on the client computer, wherein the displayed candy store video data provide a visual representation of a candy store to enable a user of the client computer to provide directions for a robotic arm located in the candy store;
sending robotic arm direction instructions from the client computer, wherein the robotic arm direction instructions cause the robotic arm at the candy store to fill a candy bag with candy; and
sending a shipping instruction from the client computer, wherein the shipping instruction causes the robotic arm to place the candy bag in an open box and seal it for shipping.

[Server computer claim]
3. A method for dispensing candy, comprising:

sending candy store video data from a server computer to a client computer, wherein the candy store video data provide a visual representation of a candy store to enable a user of the client computer to provide directions for a robotic arm located in the candy store;
receiving robotic arm direction instructions at the server computer from the client computer;
converting the robotic arm direction instructions into native machine robotic arm direction instructions for the robotic arm at the candy store, wherein the native machine robotic arm direction instructions actuate the robotic arm to fill a candy bag with candy;
receiving a shipping instruction at the server computer from the client computer; and
converting the shipping instruction into a native machine robotic arm shipping instruction for the robotic arm, wherein the native machine robotic arm shipping instruction actuates the robotic arm to place the candy bag in an open box and seal it for shipping.

Observe that while Claims 2 and 3 refer to both the server and the client computer, the activity in each has been restricted exclusively to either the client or the server. Thus, Claim 2 should be simpler to license or enforce against an infringer providing client software than Claim 1, whereas Claim 3 should be simpler to license or enforce against an infringer operating server software than Claim 1.

Frequently Asked Questions

What does "point of view" mean in a patent claim?

Point of view refers to whether every step or element in a claim can be attributed to a single, consistent actor, rather than being split across multiple unrelated parties.
Maintaining a uniform point of view matters because it directly determines who can be identified as a direct infringer if the claim is ever asserted.

Why is direct infringement easier to prove than indirect infringement?

Direct infringement generally only requires showing that a single party carried out every element of the claim, which tends to be more straightforward to document.
Indirect infringement, such as inducement or contributory infringement, usually requires proving an additional element, like intent or knowledge, that isn't necessary for a direct infringement claim.

Why would a patent applicant file multiple versions of the same claim?

When an invention's components are provided by different commercial parties, such as one company selling batteries and another selling flashlights, a single combined claim may not be directly infringed by either party alone.
Filing separate claims focused on each component, alongside the original combined claim, makes it more likely that at least one party can be held directly liable and creates a stronger basis for licensing negotiations.

Does splitting steps between a client and a server always create an infringement problem?

Yes, this is a common issue in networked or distributed systems, where some claimed steps happen on a client device and others happen on a server.
Since no single party performs every step, neither the client-side user nor the server-side operator technically infringes the full combined claim, which is why separate client-only and server-only claims are often needed.

How can a patent drafter tell in advance if a claim will have a point-of-view problem?

A useful check is to ask who would actually be sued if the claim were infringed, and whether that party alone performs every single step or element listed.
If the answer involves more than one unrelated commercial party, the claim likely needs to be split; WOIPS' AI-powered Novelty Search can also help confirm that each resulting claim variation remains novel against existing prior art.

This article draws on publicly available WIPO materials and real-world patent case studies for illustrative purposes; content has been adapted and is not an official WIPO publication.