My friend has been prosecuting a weird patent application (well, there are many weird applications out there), so I thought I'd talk about it.
A little background. The patent application talks about all about this electronic tracking device. How it looks, how it works, blah blah blah. Then you get to the claims, and all of a sudden, you're hit with method claims (method of use). There are no claims for the apparatus. Weird, right?
So why did we draft this application this way? Well first of all, I do not recommend drafting every patent applications this way. For me, I decide from the beginning whether I am going to write a patent application for an apparatus, a system, a method, a composition, or any combination thereof. So when I get to the claims section, there really aren't any surprises. I don't like to surprise patent examiners.
But for this particular application, we drafted a bunch of method claims because the device itself was pretty close to what already existed in the prior art, so we thought that this application would have a better chance of becoming registered with method claims. You may be asking me now, is this a loop hole for people to get patent rights for an already existing similar invention? Well, no.
Method claims still have to: 1) completely define the invention so it works for the purpose you specified in the application; and 2) it must be novel. This means, I have to inevitably show that the invention, not just the method, is novel. So honestly, and like most of the time, I'm not sure if this application will be registered. But hey, this is a technique we're trying, and there is really no telling whether it will work or not. So far, the Examiner did not object to us having only method claims, which is good. He did, however, tell us that we couldn't claim the filing date of the provisional application because our provisional application did not talk about the method of use, which is not that great.
Anyways, I am thinking from now on, I might just include method of use in provisional applications where the method of use is not all that obvious, or if the method of use comprises more than like three steps.