2

The example is an invention depending on precise definitions of a series of antecedent phrases that will be repeated numerous times in a series of following claim parts, some of the phrases being partly similar therefore need to be carefully distinguished. Here is an attempt at constructing something that is parallel to my invention’s claim characteristics:

Claim construction 1

A method for [doing something useful with a computing device having a graphical user interface] comprising:

upon detecting [something], displaying a message input interface [having these specific characteristics];

displaying one or more of special icons of type 1 [that represent a function A];

accepting user input to select one or more of the special icons of type 1;

displaying one or more of special icons of type 2 [that represent a function B];

accepting user input to select one or more of the special icons of type 2;

etc. (several more statements of this sort).

–– Compared TO to this kind of construction, for any benefit or advantage:

Claim construction 2

A method for [doing something useful with a computing device having a graphical user interface] comprising a message input interface, special icons of type 1, and special icons of type 2, wherein

upon detecting [something], displaying the message input interface [having these specific characteristics];

displaying one or more of the special icons of type 1 [that represent a function A];

accepting user input to select one or more of the special icons of type 1;

displaying one or more of the special icons of type 2 [that represent a function B];

accepting user input to select one or more of the special icons of type 2 ;

etc. (several more statements of this sort).

Summarizing the question: Is there any reason for stating those antecedent phrases in what I believe is called the Preamble of the independent claim? In my actual case, there would be exactly 10 of them.

  • 1
    Read about the two-part form the EPO normally requires. It doesn't answer your question but it might help understand why often claims, especially those originating in Europe, have a preamble. – DonQuiKong Jan 28 '18 at 21:43
  • Thanks, and Do you mean, something to be aware of in case a patent will be sought in Europe? (I just added the previously missing usa tag to clarify that my question is specific for the U.S. system, but acknowledge that if successful, I will of course want to know about international differences.) – Charles Jan 28 '18 at 22:54
  • 1
    Macas answer covers that I think. On a completly unrelated topic, I don't think your example claim should be limiting itself to an input by icons. And possibly the input shouldn't even be part of the claim , but that's hard to say without knowing the real thing. Always ask yourself, which components are relevant to separate the invention from the prior art and to characterize that difference, everything else goes into dependent claims. The claim doesn't need to be "complete" in the sense of input, processing, output, as those are known anyways. – DonQuiKong Jan 29 '18 at 7:18
4

It's purely a stylistic difference, based on how the drafter thinks the claim would be most clearly described. Notably, there is no scope difference.

The real benefit is to allow you to explain each element with proper antecedence.

It's less obvious in your claims, but consider this example:

A system comprising:

a first device, configured to send a message to a second device using a cable;

the second device; and

the cable.

In this case, it feels wrong for the second device and the cable to be described before it is noted that they are part of the system. It is not unclear as such, but it feels wrong.

This is avoided by:

A system comprising a first device, a second device, and a cable, wherein:

the first device is configured to send a message to the second device using the cable.

This feels better, but contains no different features.

Two-part form

The EPO mandates that the novel part of the claim (the "characterising portion") is separated from the known part of the claim (the "preamble") by the phrase "characterised by" or "characterised in that".

Since most components per se are known, they should be in the preamble: it is how they are configured that is novel.

Thus you might have:

A system comprising a first device, a second device, and a cable, characterised in that: the first device is configured to send a message to the second device using the cable.

Such two-part form is impossible if you don't list the components initially.

The EPO's requirement for two-part form should not guide your drafting now though, as it's something that can be easily added later (and there are many much more important European requirements to be wary of). And indeed, you don't know what prior art the EPO will require you to use to characterise your claim.

  • 1
    If you intend to file at the EPO (PCt/direct) you should make sure that your claim is easily transferrable into the 2 part form. In other words, don't use sentence-constructions like "A system comprising a first, connected by a cable to the second, message receiving device, device which sends a message through said cable connected to said second, different from said first, device to said second device ..." which would be almost impossible to separate without rewriting. While the EPO does allow rewording if the meaning is not changed, it bears a very real danger of adding matter. – DonQuiKong Jan 29 '18 at 7:11
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    At least for the EPO understanding of "adding matter", which is more restrictive than the US one. – DonQuiKong Jan 29 '18 at 7:12
  • @DonQuiKong True, though that's often a good way of getting out of two-part form. – Maca Jan 29 '18 at 19:30
  • maybe, but the moment you have to add something from a similarly worded description to the claims you're screwed. – DonQuiKong Jan 29 '18 at 20:00
  • To make the claim broader - a first device and a second device, the first device configured to send a signal to the second device over "a" cable. Don't positively claim the cable unless it is needed for patentability. With your wording a competitor can sell the first device and the second device and leave out the cable. Then they are not directly infringing. – George White Feb 2 '18 at 21:42

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