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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 ...
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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 ...
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6 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 ...
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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 (...
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 ...
  • 6,168
5 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What is the difference between a withdrawn claim and a cancelled claim?

The implication with withdrawn is that you may seek to re-introduce it later while canceled is cancelled.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 ...
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4 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. ...
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 ...
4 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 ...
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4 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 ...
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4 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 ...
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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 ...
  • 9,864
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.
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4 votes
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Can ML applied on an existing idea be patented?

I am not a lawyer but here is my take. If someone has a patent with a claim covering steps A, B and C and you file a patent application for using steps A, B and C plus machine learning (ML), you might ...
  • 9,864
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 ...
3 votes

If a dependent claim only limits the independent claim, then is it still infringement when a product only differs from that dependent claim?

You can't infringe a dependent claim without also infringing the independent claim (at least I haven't seen any case where it happened, since dependent claims are subsets of the independent claim). ...
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3 votes
Accepted

How to write claim with only novel elements of my invention

Not every feature of your claim needs to be novel It would be a very rare invention that consists entirely of a new thing with no previously existing components. Instead, an invention typically ...
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3 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 ...
  • 6,168
3 votes

Patent with Multiple Claims

Patent claims are numbered. So if a patent has claims 1, 2, 3 and 4, you can infringe on the patent if you practice even just one of the claims. However, a claim might have multiple steps in it. So if ...
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3 votes
Accepted

Inventive step and how to express multiple solutions to a problem

So I will present one approach. But I should caution that this is not the approach, and others may quite reasonably differ. If an inventive step solves several problems outlined in the background, ...
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3 votes
Accepted

Claims statements repeated in different categories such as "a method for," "a system for," etc

Method A method is the simplest: it simply comprises a series of steps. There is no obligation for any hardware to be included at all, though in most cases there will be some mention of the method ...
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3 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 ...
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3 votes

Does the finding of an invalid claim defeat the patent application?

No. First, you have it backwards. A dependent claim found not novel or obvious means the independent claim is even worse, not the other way around. A reason for having dependent claims is to fall back ...
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