Questions tagged [claims]

Related to claims definition, interpretation, technical terms, the extent, scope, of the protection conferred to a patent

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Can one use inconsistent terms in the claims?

My speciation contains terms like this. The term "Service" means .... The term "Service Administrator" means .... I have already filed my application. At the moment I'm amending my claims. I think I ...
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34 views

System claim with method steps included by reference

The following claim was rejected by the USPTO examiner for mixing system and method: An online computer system comprising a processor configured to perform the steps of the method of claim 16. As ...
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1answer
20 views

Co-inventorship when claims based on the contributing inventor's concepts are dropped during prosecution

First, an explanation of the overall context is needed: A CIP has been filed by a sole inventor (me). After filing, it was decided that another individual probably should have been credited as a co-...
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Can the preamble be same for all independent claims?

Let's say my patent has 5 independent method claims. Can all these claims have the same preamble? e.g. A method for doing X, the method comprising:
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How to write claim language for a clasp designed for a variably sized enclosure?

I want to state that the clasping system in my invention can be used in any size of enclosure. Specifically, I have doubts between using the words: "may" or "is" 2 examples: "enclosure may be ...
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1answer
25 views

Legal implications of description vs claims

A theorethical patent situation: Claims include: 1. A machine comprising device type A and device type B arranged to achieve X. 2. A machine according to claim 1 in which device type A is an M. 3. ...
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Computer readable medium claim rejected by USPTO examiner

The following claim was rejected by the USPTO examiner for two reasons: For mixing a product and a method. The examiner also stated that the preamble says that this is an independent claim which ...
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1answer
19 views

Can a really broad claim like 'the top is made of plastic' cause an infringement?

I came up with an idea for which a device has already been patented which has some of these really broad claims. My design would be very different from the design in the patent, but at the end they ...
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1answer
20 views

can claims of another patent overlap with product?

I'd like to point out I have zero experience with patents. I am a student engineer who is looking to develop a product. A company has already filed a patent for a very similar product. In claim 1 ...
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61 views

Election of species for prosecution

I wonder if anyone can answer this. What the US examiner says appears at first sight ambiguous, but there is perhaps a clue in the reference to 35 U.S.C. 121 (which I looked at). The examiner says: “...
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56 views

Is it possible for patents to have trade secrets?

Is it possible to omit miscellanous or detailed mechanisms which directly depend on the main mechanism of an invention from a patent. e.g. say A is the main mechanism for an invention, B mechanism ...
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Is the phrase “none or more” acceptable in a USPTO patent claim?

The Examiner has objected to three of the claims in a patent application I have filed, due to the presence of the phrase "none or more" and requires it to be corrected to "one or more". The claim is ...
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If a product doesnt meet one claim of a patent, would it get patent infringement notice?

If there is a patent for a product that has 16 claims and I sell a similar product and my product falls under 15 claims of the patented product but not the 16th claim then is it sellable? Or would I ...
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56 views

Patent Application Development Artifacts

From the inventor perspective that has an patenet attorney team developing a patent, I am trying to put together a plan comprising a list of deliverables (to be produce by patent attorneys), each with ...
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Claims - Tangible difference between system claims and method claims - 101 thoughts

Does a system claim which state tangible items, for example "processor configured to" help satisfy the "practical application" aspect of the new guidelines which were released in January 2019? I am ...
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65 views

How to delimit the last element in a list of means?

The claim 2 has a list of means that apply to "the object" but it may be misconstrued that the last element in the list is not "intercepting" but rather "intercepting the object" in which case the ...
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25 views

Is there any fee for amending claims before the publication in USPTO?

My USPTO non-provisional application is not published yet. It contains 1 independent claim and 19 dependant claims. I would like to remove some dependent claims and then add some new claims. The ...
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Older US Utility Application

... that I am wanting international coverage but cannot as the time to do so has expired. I have designed a new component that works with the old claims as a single unit. Can I resume international ...
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Claiming various solutions to solving the same problem

if my invention includes various solutions to solving the same problem such that all solutions are independent of each other, how should I claim such an invention?
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Can claim preamble contain terms not present in specification?

I would like to use the term "non pliable" in the claim preamble which does not appear in the specification. However the term "pliable" does appear in the specification but is not specifically defined....
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1answer
37 views

Is a claim containing two alternatives valid?

Is this claim valid or is this an example of alternative claiming of one or more species. 2. A method of claim 1 further comprising: enforcing at least one of: application rights, application ...
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44 views

Is it necessary for a national application to claim priority to the PCT application to get the provisional protection?

A week back, I got a very good answer regarding PCT provisional protection. I have a related question. Is it necessary for a national application to claim priority to the PCT application to get the ...
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Non-Elected, Rejected and Objected claims, and reviving the abandoned patent

I followed my patent application after 3 years and found that it is abandoned. The abandonment report mentioned that patent has been abandoned because "No reply has been received". The final claim ...
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1answer
878 views

Dependent claim from invalid independent claim

I'm following an Inter Partes Review where the petitioner is trying to invalidate every independent claim of a patent based on prior art. If this is successful, some dependent claims will remain. ...
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Can a claim “wherein” clause contain past tense?

I have a claim like this. 1. A method for ....., the method comprising: providing X for a user; 2. The method of claim 1, wherein the user was instructed to do X The claim 2 contains the ...
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1answer
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Is this a common practice to amend a claim by striking through every word in the original claim?

Is this a common practice to amend a claim by striking through the entire text of the claim and introducing completely new text, instead canceling the claim and introducing a new claim. I mean no word ...
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33 views

Nested Claim Construction (US patent practice)

How do you separate the sections of nested method claims to avoid misinterpretation. Claim 1. A method for doing something the method comprising: making square widget comprising: petting the ...
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1answer
39 views

Is amending an independent claim in an amendment fully responsive to dependent claim rejections?

As in the title, if an examiner rejects claims 1 and 2, with claim 2 being dependent on claim 1, would amending only claim 1 be fully responsive to the office action? For example, Claim 1: A Z ...
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40 views

Should I file a design patent on a different embodiment of a utility patent?

After filing a utility patent a simpler embodiment of the invention came to mind as a separate product. The simpler embodiment is covered in the first claim only since the dependent claims define the ...
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1answer
43 views

Can an inventive step included in the “wherein” clause?

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?
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1answer
36 views

Should I use “and” or “or” for “at least one of” structure when only two items involved?

From my understanding, when we use the phrase like "at least one of A, B, C and D", it means AD, BD, CD, ABD, BCD etc. i.e. D is mandatory "at least one of A, B, C or D" means any single item or any ...
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Is there any consequences if I don't amend claims properly before the PCT deadline?

PCT application claims can be amended one time via Article 19 and 34. From my understanding, one can amend claims in the national phase. So what is the point of having limitation in PCT? In US, one ...
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74 views

How exactly patent priority date works when multiple priority dates claimed?

I still can't able to understand how priority date works. Let's say I filed a provisional patent in Jan 2019. That specification contains nearly 95% of the real invention. In Jun 2019, I filed one ...
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53 views

What is the proper way to file both USPTO and PCT application?

I have two USPTO Provisional Applications. I'm about to file a USPTO non-provisional by claiming priority to those two Provisionals. I'm also planning to file a PCT application. The specification, ...
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38 views

Is this patent US only?

I'm unclear on what does patent US D781711S claim & specifically in which region. I've talked with some mates that have studied patent law & they seem as puzzled as me. Anyone care to help? ✌️
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What is the proper way to cover alternative methods in claims?

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 ...
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1answer
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When exactly patents fall under double-patenting?

I have an omnibus specification and I want to split it into multiple patents at a later point. I'm little afraid that accidentally I'll double patent my work. So I just need some clarification. I ...
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1answer
46 views

What happen to a “at least one of” claim when one of the item found to be invalid due to a prior art?

A system, comprises at least one of: A B C B becomes invalid after patent get granted and someone proves that in court. 1) Does this make the entire claim invalid or only the ...
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1answer
36 views

What is the minimum number of step required in an independent claim?

Can an independent claim can have only one non-obvious inventive step? e.g. A system comprising: Obvious step Inventive step Obvious step Can it be like this to make it broad? A ...
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1answer
35 views

Can a patent owner add more claims by requesting re-examination?

I found a prior art which contains the base part of my invention. It's a granted patent published 5 years back. My patent claims will be narrow to avoid rejection. Can this patent owner, apply for ...
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50 views

Can someone infringe my invention by reordering the steps?

My claims looks like this A system for X comprising: Step 1 Step 2 Step 3 Step 4 Can someone infringing my invention by reordering the steps? A system for X comprising: ...
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Can an independent claim depends on other independent claims?

I have two independent claims and they have multiple dependent claims. I have a third independent claim. Can this third independent claim refer to independent claim 1 and 2? Example: Independent ...
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1answer
90 views

Will there be any downside if I show my patent claims to my infringer before publication?

I already published my paper. [After filing provisional application] A big company seems like copied my work from my paper and they are about to release their product in few months. The reason I ...
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1answer
22 views

Where to find recent claims of CN204293650U

Please let me know where I can find recent claims of patent application CN204293650U.
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27 views

Can one change claims when applying a national stage application using a PCT application?

My PCT application has more than 100 claims. I wanna have the strongest protection possible in some countries whereas in others I need some limited protection. [I don't want to waste too much money ...
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3answers
63 views

Does an intermediate step considered as patent infringement?

An existing patent uses step A, B, C in the independent claim. My invention inserts a non-obvious step X before step C. So my invention looks like this. A, B, X, C Can the existing patent owner sue ...
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2answers
45 views

Can one rearrange a claim when examined by the examiner?

I have plenty of dependent claims. I wanna rearrange claims if the main claim rejected by examiner. For example, Claim 4 and 5 depends on claim 3. Claim 3 and 2 depends on the main claim. Claim 1 ...
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1answer
46 views

difference between count and claim?

I've been reading a decision from 93' - throughout the decision the court refers to the one claim as "count". is there a difference or are these interchangeable?
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Combination of Dependent Claims Infringement

I have a question regarding dependent claim combinations and the infringement of them. Lets say I have these claims: A + B Claim 1 + C Claim 1 + D If someone has an apparatus A + B + C + D, would ...
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1answer
131 views

Who owns the rights to plastic spoons now? (US D234017 S)

In reference to the patent: USD234017 Who owns the rights to plastic spoons now? Their patent was only to last 14 years