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In patent claims why the clause 'based on' is considered to have a broader scope as compared to the other clauses (e.g. using, depending, etc.).

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I think the answer is that it depends on the context. I have included three examples from three different patents. The first uses depending upon while the second uses based upon. I do not think the meaning would be changed if they were reversed. The third uses using. In the context, the other two terms would not make sense if placed into this claim. This is a rare case where it is just English - not "patentese.

  1. The method of claim 1, wherein the calculating comprises: calculating a first distance from the first location to a location of a previous usage associated with the phone number; and calculating a second distance from the second location to the location of the previous usage associated with the phone number, wherein the first fraud score is based upon the first distance and the second fraud score is based upon the second distance

  2. The system of claim 1, wherein the occlusion mask device comprises a display configured to either occlude or pass light at each of a plurality of portions of the display, depending upon a pertinent command to occlude or pass light at each portion.

  3. The apparatus according to claim 1, wherein the information providing circuitry is operable to signal the information between a base station and the Mobility Management entity using a wired inter-face between the base station and the core of the wireless communication net-work.

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The scope often differs from patent to patent, i would try to explain the difference using following example.

In simple term the term Based on protects the underlying principle i.e., alternates that uses the same principle can be covered by this phrase.

Eg 1; A patent claims an oil-based substance the claim scope can cover a lotion or a greasy or oily substance as all are based on oil. This gives broad protection irrespective even your final product is an oil.

Eg 2; Consider a patent claim a product/ process using oily substance then the claim scope is limited to only the claimed oily substance, the lotion or greasy substance may be still in scope under Doctrine of Equivalents.

Note: In the example above the final out come would vary based on the patent disclosures, claims surrendered during prosecution, state of the art etc.,.

  • Could you refine this answer? The examples don’t adequately clarify your point for me. – Eric Shain Feb 7 at 15:45
  • @EricShain i would really add something but i cant imagine any other example. what i tried to exemplify is when " based on" term is used in claim it ensnare the mechanism or principle involved. – RishiM Feb 8 at 4:36
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The expression 'based on' looks vague and ambiguous to me. Its breadth, no matter what the cause, risks coming at a cost.

If I were procuring a patent I would prefer to avoid the expression and use clearer and more definite language. One does not have to lose generic character in the search for definiteness.

If I were confronted with a third-party patent that uses this expression in its claims, I would have to look very carefully at the content and meaning of the whole document to see what on earth they meant by it. If as is likely there would be two or more competing possible meanings, then this could stimulate a variety of actions, including prior art search to see if one of the possible meanings is broad enough to leave the claims covering prior art, i.e. to render them invalid or at least of doubtful validity.

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