7

Hire a professional. 1) Neither question you ask can be answered with the information you gave, and even if you posted your application I doubt anyone would be willing to wade through it to give you an opinion for free. You have no idea how much effort what you are asking for requires, or what level of detail in the information you supply is required to ...


7

When filing a patent, the goal of the Independent Claim(s) is to define the invention as broadly as possible. Your goal is to obtain Freedom to Operate, with enough "white space" around your Preferred Embodiment that competitors cannot change minor details to avoid licensing your patent. Dependent claims provide paths to multiple embodiments of your ...


4

It's purely a stylistic difference, based on how the drafter thinks the claim would be most clearly described. Notably, there is no scope difference. The real benefit is to allow you to explain each element with proper antecedence. It's less obvious in your claims, but consider this example: A system comprising: a first device, configured to send a ...


4

Is it okay to use "optionally" in a claim? No, for two reasons. The purpose of an independent claim is to define the scope of the protection that you seek. Including an optional feature does not serve this aim (since you intend for it not to be a limitation on the scope), and so should not be included. Moreover, it could unintentionally be an implicit ...


4

You include the claims you haven't yet claimed and want to claim. You can't have the same claim word-for-word in more than one patent. It would be double patenting. If you didn't care about making claims that are fully supported in the parent, you would not file a CIP, but rather a "new" application with no connection to the previous application. A CIP is ...


3

Prior art anticipates if each claim element of the later patent is found in the prior art. Here, each claim element of claim a system which detects X is found in prior art and therefore prior art anticipates claim. So yes, assuming system of prior art = system of claim and x of prior art = x of claim. Without more in the claim it would rejected under 102.


2

You wouldn't want to file identical claims. Identical claims will receive a "Statutory Double Patenting" rejection. On other note why to pay fee twice on claim already filed and pending. Unlike the "Non-Statutory Double Patenting" rejection referred to by Gary, the you can not overcome the Statutory Double Patenting rejection with a terminal disclaimer. ...


2

Independent claims can be extremely long. Refer to the patent for the game "4 Square in the Air", which contains a number of sub-clauses that describe the set-up of a playing field, apparatus and some rules of the game. The more specific an Independent Claim is, the more likely it is to pass examination on the first pass. However, providing claims that are ...


2

Yes, that is permissible and defined in paragraph 6.18. For instance, US 7,756,129 is a grant with 401 claims, although they are not all in serial as in your example. Keep in mind that writing dependent claims in serial creates easy targets for invalidating large numbers of your claims. ¶ 6.18 Series of Singular Dependent Claims A series of singular ...


2

Could they reject it because an equipment to detect X already exists (no matter if they use spoon in their dependent claims)? Yes, Claim 1 will be rejected if the examiner finds prior art showing that equipment to detect X already exists (and you have a duty to bring such prior art to the examiner's attention if you know of it). Dependent Claim 2 will not ...


2

As Macas answer already says, you can't have dependent claims that protect anything outside the scope of the independent claim. What you can do would be saying “... controlled by an input device, preferably a touch screen,“. This gives you a way of having a dependent claim (touchscreen) in the independent claim as an optional element. So basically two ...


2

Is it essential that the computing device has a touchscreen? If not, then it should not be in your independent claim. It is generally irrelevant whether it is your most likely implementation or not, if your goal is to maximise your scope of protection. That is, by including this feature, you are limiting your protection to a single embodiment. While this ...


2

In the US, there is an extremely punitive fee of USD 820 for each multiple dependent claim. Moreover, since the US isn't so strict with added matter arising from combining claims independent of each other, there is not a huge benefit in multiple dependencies anyway. In contrast, the EPO doesn't charge for multiple dependent claims, but does generally ...


2

I agree with DonQuiKong's answer in that your dependent claim seems to be broader than your independent claim, which is not appropriate. I will therefore limit myself to your later question about "can be accomplished". Importantly, "can be accomplished" is not really a useful limitation, since you're only stating that it's possible, not that it actually ...


2

Your dependent claim, if I understand your question correctly, won't be allowable for two reasons: 1: A dependent claim may not leave out any limitation of the independent claim it depends on. Your first claim says “by drag and drop“ the second says “claim one plus something other than drag and drop“. Combined, your second claim says “by drag and drop and ...


2

I did my own research and found out that: Among 3,019,895 utility patents published 04/01/2005 through 16/01/2018, 1,707 patents (%0.057) have at least one independent claim starting with 'The' article. Thus, the chance is about %0.057.


2

Do disparaged embodiments lack claim support? Probably. I will preface this by saying that, much to my frustration, I could not find a case on all-fours with what you are proposing. It could well a novel situation1. But there are two well-established principles that are related: claims are interpreted to exclude disparaged subject matter, and claims ...


2

The specification explains the invention with detail and with multiple embodiments and variations on those embodiments. It does not necessarily single out the novel aspects from the rest of the description. Claims define what you are claiming to be yours. The analogy used is of a prospector defining the boundaries of a mining claim. If somebody does ...


2

One on-line resource is Patent Drafting for Beginners: A prelude to patent claim drafting at ipwatchdog. The "bible" of the mechanics of claim drafting is Faber on Mechanics of Patent Claim Drafting. It is about $500 on Amazon. You might find a version from a couple of years ago for sale somewhere. And Patent it Yourself would be a good start. One exercise ...


2

Practice, sure. Someone correcting the claims would help though .. You could try the old european patent attorney exam questions pertaining to claim analysis and design. There are courses and such too. It's not exactly easy to learn on your own in my opinion.


2

First, the phrases are incomplete because they're missing the conjunction word "and" or "or". The effect should be a rejection by the Examiner under section 112 for being indefinite. To appreciate the importance of the conjunctions, see Superguide Corp v. DirecTV Enterprises, 358 F.3d 870 (2004). Regarding the term "combination thereof" itself, it's a very ...


2

They did it to get one narrow patent issued early while continuing to fight for a broader patent. The continuation application (15/851,879) was filed with the narrowest claim and filed with an optional costly process that provides accelerated examination. IBM got a notice of allowance on the continuation but the parent (15/429,121) application is still ...


2

Written as a long group, the claim will be invalidated by finding something in the prior art with anything on the list (and otherwise satisfying the claims). Written individually, only the single claim with that item will be invalidated and the rest will still be enforceable.


2

Yes, 'marks' lack antecedent basis. You have positively declared one mark, with the possibility of more marks*. Your dependent claim must introduce additional marks if you want to switch to the plural. How you go about it is up to you and the rest of the claim language. One possibility is 'at least a first guide mark' in the independent claim, with a ...


1

If possible please try to use the term comprising and wherein as it appears to clearly define the invention. please see the below claim of US 8,895,612 A method of treating a disease, disorder, or condition characterized by iron deficiency or dysfunctional iron metabolism resulting in reduced bioavailability of dietary iron, comprising administering ...


1

If size is irrelevant to the functioning and use of the enclosure in its broadest sense, the broadest claim can and should be silent on size. The broadest claim should only pin down the aspects of the invention that make it novel and non-obvious.


1

To Part 1: Yes it is acceptable to add an ordered list as long as the claim is written clearly, and the claim follows the rules for claim writing (so no ‘a. b. c.’ that would add periods within the claim and is a no-no). It is fairly common to present ordered lists in method claims, and MPEP 2173.05(h) states that for Markush groups “Alternative expressions ...


1

Is it possible for a US independent claim to start with 'the'? Yes. Typically you would not have an independent claim starting with "the". That is because the term lacks an antecedent, so would generally be objected to. However, this is only a tendency, and not an inviolable rule. So there is a reasonable chance that at least some patents have been issued ...


1

The independent claim must include everything essential to the broadest conception of your invention. You can include other things if you want, but there is no need unless you're trying to avoid specific prior art that you're aware of. As such, there is no need to include every feature in an independent claim. As you suggest, dependent claims are for those ...


1

Yes. A dependent claim contains all the limitations of the claims from which it depends, whether directly or indirectly. Thus, claim 2 includes all the limitations of claim 1, and claim 3 includes all the limitations of claims 1 and 2. Your claim 3 has antecedent basis for referring to elements W, Y, and Z without having to reintroduce them.


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