Patents - Method vs Apparatus claims

Inventors often query why the claims of a patent application include both method and apparatus claims with seemingly very similar wording. Why is this done?

Some inventions very clearly fall into the category of a method or process. This is often the case with computer implemented methods. Other inventions clearly fall into the category of an apparatus or product, for example a new tin opener. Many inventions however involve both a novel apparatus and a novel method, possibly a method of using the novel apparatus.

Consider for example a biosensor used to detect a particular biomarker. The physical product that sits on the shelf may include novel features independent of its use. It might for example include a novel configuration of electrodes. In use, there may also be novelty in the way in which the biosensor is operated. For example, flow control gates within the biosensor may be operated in a particular sequence under the control of a processor, whilst different liquids may be connected to flow through various input and output ports at different stages. 

A patent having claims to only a method may only be enforceable against an end user. A patent having claims only to the apparatus may be enforceable more widely, but runs the risk that a competitor can design around the patent by coming up with a biosensor with a different physical structure but which utilises a similar method of operation. There are nuances here but it is always best to have a claim that reads directly on to what an alleged infringer possesses or what he or she is doing. It can also be the case that prior art located by a patent office search will invalidate one of the claim types but not the other.

It makes sense therefore to include both apparatus and method claims in order to maximise the scope of protection and minimise the risk during examination.

Different jurisdictions can also look differently on apparatus and method claims when it comes to enforcement. One or the other claim type may be easier to enforce and or the levels of damages awarded may differ depending upon which claim type is asserted. A court might for example award a relatively low level of damages in the case that the patent is successfully asserted against a biosensor manufacturer, but award a much higher level of damages against an end-user using the biosensor in a high value diagnosis procedure.