10
Design patents are often granted for relatively small changes but then they have a corresponding narrow scope. In this case Page 2 of this design patent D661296 lists all of the prior art the examiner took into consideration. The Sony X505 is listed as well as a couple of dozen other things.
All of those cited references are - by definition - not the same ...
7
For a complex computer implemented invention it
is advisable to have independent claims for a system, for a method and for a so-call CRM (computer readable medium). For a device, machine or system that comes all together from one vendor ready to do what it does (egg beater, laser printer, machine gun) a claim on the "thing" is usually more desirable than ...
7
One reason for having dependent claims in the first place is that they can potentially stand on their own even if the claim that they depend from is deemed invalid. So no, if a particular claim has prior art it doesn't necessarily mean that its dependent claims will also be invalidated. However, depending on the particular prior art they could very well be ...
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 ...
6
A continuation is a later patent application filed during the pendency of an earlier ("parent") application which has the same disclosure as the parent application. If the continuation includes additional subject matter it is called a "continuation-in-part" or "CIP". If the continuation has claims directed to a different invention than the claims of the ...
6
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 ...
5
As the second part of your question's been answered, I'll just answer the first part. Yes, both method and apparatus claims are both permissible for UK patents. Sometimes I write 'system' claims that are a bit of both!
You are also correct that methods of doing business, and programs for computers are both excluded - insofar as the invention relates to ...
5
I am creating a wiki for the answer(s), please feel free to update below each question as appropriate. If you have a second answer, number it accordingly and place it below other answers.
For (a) an application that has NOT yet been issued, sub-questions:
(1) Does the NEW application cancel the previous (original) application, taking its priority (filing)...
5
One way to form a system claim is by saying it includes hardware and the hardware performs the following steps a), b) and c). The steps then look like the steps in a method claim. So a method claim can usually be turned into a system claim by putting "A system for doing X, the system comprising: a computing system including a processor configured to ...
5
You have asked about patents. However, your use of status identifiers (like "previously presented") implies you actually mean to ask about applications.
For applications, this is permitted (and in fact near unavoidable in certain cases).
MPEP § 714 provides:
The original numbering of the claims must be preserved throughout the prosecution.
Thus if an ...
5
Since you mention Articles 33(2) and (3) PCT, I assume that you requested International Preliminary Examination, and that the Examiner who drafted the International Preliminary Examination Report (IPRP) found that some of your claims are not novel.
However, the IPRP is just that - preliminary. You may respond to the IPRP to try and overcome the objections ...
5
So here we have a tidy distinction between description and claims.
Description
You must provide a description sufficiently detailed that the skilled person, reading your description, would understand how to put the invention into practice. You must also disclose the best way of doing it that you know. To this end, it is irrelevant whether the different ...
5
You can amend and add claims in the application and can file continuation and divisional applications from it with new claims. However, any added or amended claims need to be fully supported in the original application's disclosure. "No new matter", after the filing data, is a strict rule.
4
We were trained to start by reading claims, but claims are often hard to decipher. So, here's a few tips that may help you. 1 and 2 are the easiest, while 5 is probably the most authoritative.
Look at the last 1 or 2 elements in the claim. "Claim 1: Blah ... blah ... blah ... [all very ordinary standard items] WHEREIN [something special, this may be what ...
4
You can include multiple independent claims of varying scope in a patent application. Each of these independent claims can have several dependent claims that are written using terminologies that may be common to multiple variations that can be grouped together. The terminologies can be described in detail in the description to cover the variations.
The ...
4
Originally, there was a requirement that the inventor teach the best mode (that the inventor knows about) in the specification. In recent years, that requirement has been a bit relaxed, but it still is in effect.
Personally, I don't like obfuscation. If the patent obfuscates too much, it can potentially be rejected or invalidated as not being enabling ...
4
Anyone can try to patent everything he wants to without that beeing fraud. After the application comes the examination where claims like these are just getting rejected. If you want to do something against the patent you can however send "prior art", meaning documents proving that these steps were known before the date of the patent to the patent offices.
...
4
Perhaps it would be clearer by going back to first principles for patents.
The purpose of a claim is to set out certain things that others cannot do. Once a patent is granted, nobody else can do anything that is claimed. This is true regardless of the category of the claim (whether method, apparatus or whatever else).
It is therefore not correct to say ...
4
Consider the claim:
1. A system comprising one of:
a first widget; or
a second widget.
This claim covers two completely different things: a first widget alone, or a second widget alone. It therefore is logically two claims written together:
1A. A system comprising a first widget and not a second widget.
1B. A system comprising a second ...
4
What can the device do?
How is it useful?
How is it novel?
How do I build it?
What does it look like?
How do I use it?
What is the scope of the device?
All of those should be explicitly or implicitly answered by the description/drawings.
The claims only answer one question which would be something like
What invention am I ...
4
Under most circumstances the examiner can make a second rejection a "final rejection". After a final rejection you can keep the process going by filing an RCE (request for continuing examination) along with your response. While there is no fee to respond in a timely manner to a rejection, there is a fee to file an RCE. A second or subsequent RCE fee is 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
The implication with withdrawn is that you may seek to re-introduce it later while canceled is cancelled. However, at most points in the process you can enter amendments and an amendment could add a new claim with the exact wording of a previously canceled claim so canceled doesn't mean the wording can't come back.
On the other hand, you do not ...
4
Speaking specifically of U.S. law, a system is a physical thing, just like a device, a machine, an apparatus, a manufactured item or a composition of mater. A method, or process, is a series of steps or actions to achieve some end. A method might be performed by a person or it might performed by a machine/system. A system, inherently, is a complex "machine". ...
4
For infringing a claim, all elements of a claim need to be infringed.
A claim a + b can either be “at least and b“ (typically) or “exactly a and b“ (for example exactly 40% sparkling water and 60% apple juice, very rare).
In your example, at least claim 1 must be “at least a and b“ because else a+b+c would not be a dependent claim as dependent claims are ...
4
It is best not to use terms in a claim that are not present in the specification however it will not necessarily be objected to as indefinite. I assume, in your example, that the specification does explain how a non-pliable widget is made into a pliable widget. If you also explain why one would want a pliable widget and what you can do with a pliable widget ...
3
Dependent claims are the place to get narrower and are often chained to get more and more specific as they descend. The use of "further comprising" vs "wherein" is unrelated to the extent of narrowness you are adding. The parent claims requires an A and a B and a C.
"Further comprising an X "says you are adding a new element, X to the already required A, B,...
3
Ultimately it is up to you, but consider the consequences of your decision:
You write some additional language describing how to perform the method. All you've lost is the time spent writing that additional language, much of which can be adapted from your system language, not to mention the flowchart you already created.
You submit the application as-is ...
3
It is a good practice to include multiple independent claims of varying type (system, method, means etc) in a patent application. One should not restrict the invention by claiming it in only one form. It is advisable to claim an invention in multiple forms in order to ensure the broadest possible protection.
To determine infringement of a patent by a ...
3
Any claims in a patent application not rejected by the patent examiner (i.e. covered by the prior art) would be considered to be allowable.
Just because a piece of prior art may not cover all the claims does not mean it is "bad" prior art. This type of prior art could be used in an obvious-type rejection.
Only top voted, non community-wiki answers of a minimum length are eligible
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