0

I do understand the transitional phrase "comprising" is a broad one.

A method comprising Step 1

The above method is infringed as long as step 1 is executed.

But how do I protect when an equivalent step is executed?

For example SSL was popular in the 90s. But today SSL deprecated in favour of TLS. If my claim covers only SSL, then the patent can be infringed in time. So how do I cover future technologies?

The method of Claim 1, wherein the encryption mechanism comprises SSL

Basically, I want to use words like "e.g. SSL" in claims. Is that acceptable?

The method of Claim 1, wherein the encryption mechanism comprises one or more known encryption technologies. e.g. SSL  
  • Claims are the special area of patent attorneys and agents who are trained to try and encompass the broadest possible interpretation of your claimed invention into legal language. It's a lot like surveying (even using the same language) where a surveyor uses well-defined legal language to describe the boundaries of your property. Likewise attorneys and agents use well-defined legal language to define the virtual boundaries of your intellectual property. If it's valuable then getting it wrong will cost you a lot more than the fee you'll pay. – Patently Aug 6 at 20:33
1

If the particular method of encryption is not relevant and encryption in general is well known, then a step that says - "encrypting the password" covers encrypting the password, for example, and is independent of the specifics of the encryption.

1

This is the part where you definitely need to speak with an attorney. This depends entirely on the method you're trying to claim and its possible alternatives. There's not really a way to answer this -- and it shouldn't EVER be done in a public forum.

Related to transitional phrases:

If you're working on a US patent the principal ones cited by the USPTO are:

2111.03 Transitional Phrases [R-08.2017]

The transitional phrases “comprising”, “consisting essentially of” and “consisting of” define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim. The determination of what is or is not excluded by a transitional phrase must be made on a case-by-case basis in light of the facts of each case.

It is possible to use "having:" which refers back to the specification. I'm not really sure how that one works--as I've not fully read-up on the case law involved in the use of that phrase.

All that said. I'm not sure legal theory would support someone trying to claim future technologies not yet invented if you can't describe them. Further, I doubt it would be doable merely using a transitional phrase.

In many venues the essential purpose of the claims is to cite matter that has already been invented and disclosed and identify those parts which the inventor claims deserve special legal protection. If it hasn't been invented yet, and can't be described yet, then it isn't technically part of the "prior art" and isn't even part of the "disclosed specification". Consequently I'm not sure it can be successfully claimed.

I believe this may be one of the purposes the USPTO has for continuing patent applications--to address changes in ongoing work, or changes in technology for which the original specification might apply.

  • You make good points. Thanks for the answer. – Giri Aug 6 at 22:38
  • 1
    "Having" does NOT refer back to the specification. If there are many ways of accomplishing something listed in the spec and you want to include them all, you can take advantage of section 112 and use "step for", which is like "means for". Continuing patent applications - other than a CIP, do not allow addressing anything beyond the original specification. I would reconsider this as the accepted answer. – George White Aug 7 at 6:11
  • @GeorgeWhite Please include your comment content (e.g. "step for") in the answer you posted. It contains useful info. Thanks – Giri Aug 7 at 17:03
  • @GeorgeWhite The USPTO seems to believe having refers back to the specification such as "IV. OTHER TRANSITIONAL PHRASES Transitional phrases such as “having” must be interpreted in light of the specification to determine whether open or closed claim language is intended." – Patently Aug 12 at 16:36
  • Almost everything in a claim is read in light of the specification. "Having", as a transitional phrase is, a you point out, is ambiguous. We know what "comprising" means and what "consisting of" means so they are much better to use. "Having" might mean one or the other. – George White Aug 12 at 17:45

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Not the answer you're looking for? Browse other questions tagged or ask your own question.