I found a patent that has a claim that when read out of context could arguably describe my invention. Their claim requires an external device to provide a notification whereas my device recognizes the event itself. Other than that the claim could be stretched to describe my invention.

But when you read the description of the their invention they are definitely describing a different, but similar, system.

The other patent was a refused Japanese patent application.

Given what I have said does it sound like I have to worry about the claim?

  • To be blunt, to answer this question would require a legal analysis of the patent and your application. You aren't going to get an authoritative answer here. My sincere recommendation is to speak to a patent lawyer or agent.
    – Eric S
    Apr 2, 2020 at 14:17

1 Answer 1


It isn't the wording of a claim that would be the clearest expression of the meaning of a reference. The wording of a claim is most relevant to determining if something infringed. In your case the claim never appeared in a granted patent so that is moot

To show that you invention is not novel, it (as claimed in your application) needs to be found described in an enabled manner in a reference document that qualifies as prior art. If it only resembles your invention when taken out of context then it is hard to see how it is enabled. Enablement means teaching someone skilled in the art how to make and use the invention as claimed.

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