Invention Analysis and Claiming:
Structuring Claims to Avoid Multiple Parties¹

By Ronald Slusky

Consider the invention depicted in FIG. 1. A user selects an icon displayed on a web page. Information identifying the selected icon is transmitted from the user's PC to a web server which, in turn, carries out some new and non-obvious steps in order to provide some new and non-obvious functionality.

Inventions like this virtually beg to be claimed as a multi-party method. After all, how can the web server do its thing unless and until the user has done her thing? Claim 1 was drafted with this thought in mind, reciting a method in which the computer user performs steps a and b and the web server performs steps c and d:

1. A method comprising

(a) selecting an icon displayed on a screen,

(b) transmitting to a web server a signal indicative of the selected icon,

(c) receiving the signal at the web server,

(d) processing the received signal in such a way that ....

Unfortunately, a claim like claim 1 is pretty much infringement-proof because there is no direct infringer. The user and the web server do carry out all the claim steps between them, and multiple parties can constitute a single direct infringer. However, to be such...