Friday, 27 November 2009

T 1606/07 – Don’t Waste Your Ink on Device Claims

[…] Claims 1 to 6 of the present application concern a method for determining the virtual address of a terminal. […]

Independent apparatus claim 7 [“Product comprising means for carrying out completely a method according to one of the method claims”] only mentions means that are not specified in detail but are defined by a reference to the method claims. [1]

The patentee refers to decision T 410/96 to justify the shortcut formulation of apparatus claim 7 as “means plus function” with referral to the characteristics of the method claims without mentioning them explicitly.

In principle, the Board considers such a claim formulation to be admissible, provided that means for carrying out each step of the method claim to which the apparatus claim refers are foreseen (cf. T 410/96 [5]). This is the case for claim 7 because it ensures that the whole process and, thus, “all steps” are carried out. [2.1]

The decision also contains a paragraph on the meaning of the term ‘product’ (Produkt). Apparently the patentee was not sure whether the Board would accept that a complex device could be referred to as ‘product’ and it offered auxiliary requests wherein the term ‘product’ was replaced by the term ‘system’. The Board does not really see a difficulty and states:

The Board is of the opinion that the meaning of the term ‘product’ does not necessarily exclude a set (Ansammlung) of components that interact in view of a system. [2.2]

To read the whole decision (in German), click here.