Patent Drafting Strategies for Modular and Upgradeable Products

Introduction : The consumer / industrial technology paradigm is changing. Products have become more than just static and discrete artefacts, they are platforms. As long as the camera module of a smartphone can be improved, it is not outdated until it gets a software update. When EV battery management system is improved, there is no need for EV replacement - a firmware patch is sent out at night. A modular laptop is one in which the graphics card, memory, keyboard can be replaced without replacing the rest of the computer. It's the time of 'upgradeable products' and 'modular products' and 'products that change over time' and it's a huge challenge to the traditional patent drafting approach.

As a natural consequence of the nature of patent law, it is retrospective. After the claim is filed, a claim defines the invention as it was at the time of filing. However modular products are conceived for the future. They can be made to change. Mutability of a product is not just a theoretical issue - it represents a serious commercial and legal risk due to the conflict between fixed language of a claim and the actual product. A patent that's very narrowly drawn may be of no value if a competitor copies your second generation product, takes advantage of an uncovered interface or designs around your patented component that's no longer in use.

In this blog, I'm going to promote a radical shift in thinking for patent practitioners advising their clients who are inventors of modular and upgradeable products. In particular, claims should be framed in such a way as to reflect the logic of the modularity of interfaces, interaction protocols, functional results, not on the specific components that will certainly change over time and be replaced or modified. Otherwise it is not an oversight, it's a strategic abdication.

Applicable Legal Framework

The basic issue in claim construction and drafting for modular products is one of claim scope, but the principles of claim construction are well established as is their application to modular products, although they are not widely appreciated.

Claiming as a Response to the Text : Section 112(f) of the United States Code allows for a claim element to be written as a means or step for performing a specified function without specifying structure or material or acts thereof in support thereof, but this section is construed to be authorizing only the claimed structure or equivalent. Both approaches provide a room for functional claiming but the room is limited and the practitioners have to make a conscious effort in order to overcome the challenges posed by designing for upgradeable architectures.

An equivalent doctrine. : However, prosecution history estoppel is a judicial limitation on the doctrine of equivalents : If an applicant has taken steps during prosecution to limit a claim to avoid prior art, the scope of equivalents is limited. The risk of such an occurrence is particularly severe in the case of modular products, where an applicant that restricts claims to exclude coverage for a particular hardware module may be giving up coverage of the equivalent modules that may have been developed after the grant.

Equivalences : US law (35 U.S.C. § 112(a)) as well as Indian law (Section 10(4), the Patents Act) require that the specification clearly and completely disclose the invention so that a person knowledgeable in the art can make and utilize it. For modular inventions, this presents a dilemma: The drafter would like to draft broadly in terms of architecture, while the specification must allow the scope claimed. If the future upgrades are not mentioned, the claims that cover the upgrades might be susceptible to being invalidated because they are not enabled.

A review of the structural issues in traditional drafting

The Obsolescence Trap : Imagine a medical device that has a replaceable diagnostic sensor and a central processing unit, which have a standard communication protocol between them. If the independent claim has been written to specifically state the protocol version or the technical specifications of the sensor or the exact physical interface dimensions, the claim will be technically correct as of when it is filed and strategically disastrous after five years.

The competitor merely has to switch to a new successor protocol, a more powerful sensor or a slightly different connector specification to get outside of said claim's literal meaning. This is not a litigation risk that would otherwise be speculative, it's the design methodology that is done on purpose in fast-moving areas. Design - around analyses are common within companies of consumer electronics products, automotive, medical devices and telecommunications. Component specific claim language is one of the easiest to navigate around.

The value of the interface as the locus of value : The value that is often proprietary is usually not one of the separate parts of the product in a modular product. It lives in the interface; it is the communication protocol, the physical and logical norms that enable the modules to interoperate with one another and the logic of the ecosystem that makes the whole more than the sum of its parts. It's not just a connector, it's a control architecture, Apple's Lightning connector. The modular satellite bus does not have a value in itself; it values only because of the standardised interface which enables different payload configurations.

Traditional drafting that is centred on modules is missing the strategic piece of the asset. Competitors look to replicate or free ride on the interface, interaction protocol and the upgrade pathway. If these elements are not covered by a claim portfolio, it’s not a portfolio, it’s a bunch of soon to expire technical descriptions.

The Narrow Dependent Claims in a Fast Moving Sector is a Problem.

Typically dependent claims are used for two things : to provide an alternative claim in case the more general independent claims are found to be invalid and to provide additional specificity so as to define the “preferred embodiment.” However, in fast-moving technology areas, claims which are dependent on particular operations of the modular elements can be detrimental to the patentee. In modular products parlance, this can mean that a particular hardware embodiment of a dependent claim is read back into an independent claim, which was supposed to be read at an architectural level, thus drastically restricting the protection of the independent claim.

Relevant Case Law

In Williamson v. Citrix Online, LLC, The Federal Circuit adopted a more stringent requirement for invoking means-plus-function claiming which holds that the word ‘module' does not, on its own, suggest enough structure to avoid Section 112(f) treatment. The decision will have direct patent implications for patents that recite a 'processing module' or 'interface module' without any structure, as this could be interpreted as a processing module as claimed in the means-plus-function claim and thus open up to the disclosed embodiment and equivalents in structure. Either the practitioner must give enough structural context to the text or they must be aware of and agree with the more limited means + function construction.

The decision of Novartis AG v. Union of India, which was mainly about the Section 3(d) bar on incremental pharmaceutical innovations, has a more general doctrinal lesson for the Indian patent system for modular product patents: the Indian Patent Office and courts are looking to distinguish between genuine incremental innovation and incremental variation. This rule of thumb is of particular importance for a patent applicant for modular architecture in cases where the architecture is based on standardised interfaces which are likely to be prior art.

It is also instructive how the EPO in T 1194/97 (Modular software/IBM) has dealt with the above case. The Technical Board of Appeal reiterated that a software implemented modular architecture may be claimed at a functional level of the invention, as long as the functional features had a technical impact. The foregoing principle can be applied to hardware/software hybrid products such as interfaces and upgrade pathways: The claim could refer to the technical result that the interface or the upgrade pathway causes, but not necessarily to the manner of its implementation provided the specification contains enough technical information to cover that scope.

Patent Practitioners’ and Inventors' Practical Considerations

Prototype for Architecture, not for the Iteration : In modular product areas, the concept is the top priority for any patent practitioner advising the client: the claim should focus on the architecture, rather than the configuration of the components. This means that the independent claims consist of claims that do not necessarily belong to one generation of components, but represent an abstraction of the principles of interaction between the modules, the functional relationship between the modules, the role of the interface in enabling interoperability and the resulting product produced by the modular configuration.

Claim Intermediately : If the proprietary value of the interface is at that level, then the interface needs to be specifically claimed in the independent and in the dependent claims, at different levels of generality. A good claim hierarchy should comprise (i) a claim which is as broad as possible and covers the interface at functional or protocol level with an outcome, (ii) dependent claims which cover the physical or logical implementation of the interface as of the filing date, and (iii) further dependent claims that capture the specific commercial embodiment of the interface. This ‘layered’ approach retains scope and has ‘fallback’ solutions down the claim tree.

Design a well-defined, holistic strategy that focuses on the issue's continuity and evolves over time : The continuation filing strategy is not a choice for products with planned upgrades, but is essential. Continuation Applications are allowed which enable the applicant to continue with further claims for later generation improvements that reflect the priority date of the original Application. A continuation-in-part is a new document that can allow new matter to be added when the upgrade adds technical subject matter that wasn't covered in the parent. The strategy has to be part of the first filing blueprint, as opposed to being added after two upgrade generations of the product have been shipped.

Before filing, the claims should be robustly challenged by considering design-around. It is important for the practitioner to ask : Does the functional outcome of a module specification, an interface protocol, or an upgrade delivery mechanism remain valid if the competitor is able to achieve the same function with a different module specification, interface protocol or upgrade delivery mechanism? If not, the claim is too specific. The specification and prosecution file history must be maintained to allow for the widest possible scope of interpretation of the independent claim against the prosecution record that will not put the infringement theories that the client is most likely to rely on in litigation at risk of estoppel.

Conclusion

Modularity and upgradeability are not something that will pass this generation, but rather it will grow stronger with the increasing integration of software and hardware, and with Design for Sustainability pushing the designers towards repairable and upgradeable designs. Patent law has not developed in a similar manner. The doctrine functional claiming, the doctrine of equivalents and continuation practice are still available, but underutilized for applicable to the modular realities.

It's now up to the patent practitioners to fill in this void. An approach to drafting that is narrow and specific to a particular sector, in a very fast-moving sector is not a conservative approach, it is a negligent approach. Takes out patents that are technically valid and commercially “hollow” - that is, they will fail the first upgrade cycle. The solution is a new approach to claim strategy for architectural protection, namely "claiming the interface", "claiming the interaction logic", "claiming the functional result of modularity". This isn't some shadowland; it's a reality that can be achieved in today's legal landscape and it's what advanced patent portfolios in the technology industries are increasingly seeking.

Author :- Nikitha Kotteswaran, in case of any query, contact us at Global Patent Filing or write back us via email at support@globalpatentfiling.com.

Endnotes

1. The Patents Act, 1970, No. 39 of 1970, § 10(4), India Code (requiring a complete specification to fully and particularly describe the invention and the method by which it is to be performed).
2. 35 U.S.C. § 112(a), (b), & (f) (2024) (governing the written description, enablement, definiteness, and means-plus-function claiming requirements under United States patent law).
3. Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc in relevant part) (clarifying the application of § 112(f) to functional claim language such as "module" and the circumstances in which such terms invoke means-plus-function treatment).
4. Novartis AG v. Union of India, (2013) 6 S.C.C. 1 (interpreting Section 3(d) of the Patents Act, 1970 and emphasizing that patent protection requires genuine technical innovation rather than mere incremental modification).
5. Technical Board of Appeal of the European Patent Office, T 1194/97 (Data Structure Product/IBM), O.J. E.P.O. 1999 (recognizing that software-related inventions may be claimed in functional terms where the claimed features produce a technical effect and are adequately supported by the specification).