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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 ...


2

These do sound like separate inventions. Patents are given for specific solutions, not to results. Three solutions to the same problem that are technically independent are not a single invention just because they address the same problem. If you have already filed a provisional application that discloses more than one invention it is not a problem. Many ...


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The number of alternatives and the way the claim is drafted does not really matter, and it should not depend on the examiner whether a restriction requirement is issued. The alternatives should be assessed from a technical standpoint, and restriction requirement should be issued when the following occurs: There are two criteria for a proper requirement for ...


2

Use of a term as a preamble when it is not present in the Description: a higher chance of an indefiniteness rejection. That is, can be used against you. If the claim's steps actually define the term you use in the preamble, lesser chance of an indefiniteness rejection. The term can be used in the preamble even if not present in the Speci as filed (that is, ...


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I have seen it from time to time, I personally do not like it because I do not know how that would be interpreted in case of litigation, but there are granted patents with past tenses in the claims, so apparently it should be OK. My preference is to draft that as a further normal step of the method, e.g. 2. The method of claim 1, further comprising ...


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Is this filing in the US, EPO or some other place? Background: Practice varies from place to place, but can be broadly bunched together under USPTO (Restriction) and PCT (Lack of Unity). In a majority of cases, it will end up with the same decision by all the patent office, but in some, it will not. I have seen several cases where the USPTO required the ...


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In the US, the basic fee for a non-provisional patent application allows you to have 3 independent claims, and further independent claims can be included by paying additional fees. You can claim each solution as an independent claim, but the Examiner may force you to restrict the application to one or some of these solutions and move the other one or ones to ...


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In your example, you cannot claim priority from the PCT in your US non-provisional because the PCT does not predate the US non-provisional. The only way you would be able to claim priority from the PCT is by filing a subsequent US non-provisional within the applicable priority year. Accordingly, if the subject-matter of all the claims of the PCT was ...


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The U.S., the EPO and other locations offer provisional rights related to the publication of patent applications. The rights vary, but the idea is that you can potentially recover royalties from others who make, sell, use, etc. in a way that infringe the claims you eventually get in an issued patent, the royalties essentially back-dated to the time of your ...


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