I have a process that performs the same steps as prior art.

However my "wherein" part is completely unique.

Will it be considered as a valid independent claim?

1 Answer 1



A wherein clause can definitely contain a limiting element in a claim. In contrast, a therefore clause that explains the result of previous steps would not contain a limiting element.

FYI, In the US patent system we do not think in terms of inventive step. The claim as a whole is what either defines something as novel and non-obvious or does not. The rest of the world, in contrast, does think of claims as the old part and the inventive step.

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    I disagree with you concerning your second paragraph. In other countries the claim as a whole must be novel and inventive (or non-obvious) as well. Drafting the claim in the two-part form (i.e. preamble with the features known from the prior art, characterizing portion with the features not known from the prior art) does not mean that the patentability only depends on the characterizing portion. In fact, in Europe often times the claims are not drafted in the two-part form yet the patents are granted. Aug 14, 2019 at 6:18

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