7
votes
Accepted
What is the role of dependent claims?
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 ...
- 1,775
7
votes
Urgent - My Patent Application received a Non-Final Rejection, Advice?
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 ...
- 491
6
votes
What is the difference between a withdrawn claim and a cancelled claim?
The implication with withdrawn is that you may seek to re-introduce it later while canceled is cancelled.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 ...
- 25.3k
5
votes
How to check the novelty in a patent?
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 ...
- 121
5
votes
Claim dependence on later claim
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 ...
- 7,033
5
votes
Do you have to amend claims lacking novelty or an inventive step
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 (...
- 101
5
votes
Accepted
Two aspects of the same invention and one aspect is not unique
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 ...
- 7,033
5
votes
Accepted
Okay to use "optionally" in a claim?
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 ...
- 7,033
5
votes
Can claims be amended after patent contents become public?
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 ...
- 25.3k
5
votes
Accepted
What is a difference between System Claims and Method Claims?
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 ...
- 25.3k
4
votes
Combinations of independent options creating exponentially numerous claims
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 ...
- 636
4
votes
Is there a custom or policy of obfuscating dangerous details in patents?
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 ...
- 131
4
votes
Patent Troll Alert PCT/US2016/031871
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 ...
- 5,827
4
votes
To patent a technology on a smart device and a yet to be made apparatus
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 ...
- 7,033
4
votes
Accepted
When the examiner's rejection is based on "one of" language, does this necessarily mean the statement can only be allowed by changing to plural?
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 ...
- 7,033
4
votes
What are the key questions that should be answered in Claims
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 ...
- 5,827
4
votes
Accepted
Amendment of objectionable or rejected claims?
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) ...
- 25.3k
4
votes
Accepted
Combination of Dependent Claims Infringement
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% ...
- 5,827
4
votes
Accepted
Will there be any downside if I show my patent claims to my infringer before publication?
The letter from the lawyer is very logical and doesn't at all hint that they believe they are infringing anything. It just says that they can't evaluate your assertion that they are infringing since ...
- 25.3k
4
votes
Can claim preamble contain terms not present in specification?
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 ...
- 25.3k
4
votes
Accepted
Is the phrase "none or more" acceptable in a USPTO patent claim?
I hesitate to answer since I'm not a lawyer, but why don't you just have two dependent claims? Something like:
Claim 2: The method of claim 1, wherein A comprises B.
Claim 3: The method of ...
- 9,607
4
votes
Computer readable medium claim rejected by USPTO examiner
Yes, I do. Check out Claim 10 of US10067111B2
Which is an independent System claim referring to a method claim
And not only that, but the examiner proposed the amendment. Check out the response to ...
4
votes
Accepted
Can the preamble be same for all independent claims?
There is nothing wrong with being boring in writing claims.
- 25.3k
4
votes
Accepted
After drafting two independent claims for interrelated apparatus, is it possible to draft 3rd independent which include both?
You an do this, in fact it doesn't even need the third claim to be independent. I do not know EPO law very well but there are innumerable U.S. patents with a claim 1 to a transmitter that sends a ...
- 25.3k
4
votes
Accepted
Is hiring a professional attorney/prosecutor after the first evaluation a good idea?
I do not think you will save much money in the long run by waiting to involve a professional after you have filed your own document and waited a year or more to get an initial rejection.
There are ...
- 25.3k
3
votes
Accepted
Finding prior art rejects an independent claim
A dependent claim is ALWAYS valid when its independent claim is valid. However, if an independent claim is invalidated, that DOES NOT ALWAYS necessarily mean that dependent claim is also invalid.
...
- 776
3
votes
A patent with both apparatus (i.e. system) and method?
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. ...
- 636
3
votes
How to Use Patented Method Without Infringing?
Unless you are doing all of the steps of a claim you are not infringing it. Claim 1 of US8568309 requires putting voltage through a test strip, and getting readings from 3-axis accelerometers to ...
- 25.3k
3
votes
Accepted
Is dependent claim of another dependent claim a multiple dependent claim?
No, that's just a second-level dependent claim. A multiple dependent claim is "[a]ny dependent claim which refers to more than one other claim" in the alternative.
37 C.F.R. 1.75(c):
Any ...
- 169
3
votes
I have a problem about the US Patent Examiner's requirement for the use of "a" rather than "the" in three of my claims
The rejection can easily be overcome by simply amending the claim to "a substantially transparent sphere having a center". You are currently limited by prosecution history estoppel. A telecon or ...
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