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 ...
- 6,218
3
votes
Accepted
Are the dependent claims still infriengble if the independent claim is meaningfully different from mine?
As @EricS says - dependent claims, by definition, narrow the claim(s) they depend from. Therefore there is no way to not infringe an independent claim but infringe a claim that depends from that ...
- 30.7k
3
votes
Accepted
Novelty requirements for dependent claims
If A is unknown, then a B that is A plus a regular thing "delta" is inherently unknown. So, a claim that says, "the thing of claim 1 where the bottom is red" is inherently novel if claim 1 is novel ...
- 30.7k
2
votes
Is novelty in every dependent claim a necessity?
First, a small note about terminology: the word "limitation" is almost a synonym for "feature."
To answer the questions, I'll come up with a simple example. Let's say your invention is a chair that ...
- 237
2
votes
Accepted
How to introduce two instances of an antecedent that are not directly related?
You need use a dependent claim to narrow. “2. The device of claim 1 where the B comprises an XYZ.” That narrows claim 1 by adding specificity to one part of it.
As you wrote it (in the original ...
- 30.7k
2
votes
Accepted
If an invention requires an X number of whatever, does a specific X has to be explicitly stated in the patent applicable?
For a broad independent claim "two or more compartments" seems perfect if it is the case that it works with any number of compartments above 1. You could also say “at least two compartments”....
- 30.7k
2
votes
Accepted
Equating claim elements in dependent claims?
Concerning the European patent practice, most probably you would receive an objection on the grounds of lack of clarity because there is an inconsistency between the scope of the independent claim and ...
- 2,264
2
votes
Equating claim elements in dependent claims?
I can imagine a case like this - claim 1. A system with an A and a transmitter module and a receiver module. Claim 2, the system of claim 1 where the transmitter module and the receiver module are ...
- 30.7k
2
votes
Are the dependent claims still infriengble if the independent claim is meaningfully different from mine?
I am not a lawyer, but I believe that if you don't infringe the independent claim, you can't infringe any claims dependent on that claim. If the independent claim includes a mirror and you don't ...
- 11.7k
2
votes
Accepted
Do prepositional phrases satisfy antecedent basis issues?
I think example B is valid. It is clear that there are (at least) two Xs and gives a way to refer to them.
However if the system sometimes swings around in operation and the “on Y” X ends up under Y ...
- 30.7k
2
votes
Accepted
what's the purpose of dependent claims?
In an ideal world the purpose of dependent claims is almost solely to provide a fallback position if prior art is discovered that renders the independent claim obvious. It is hoped that the details ...
- 1,870
2
votes
Accepted
in a method claim, how to word it such that the order of certain steps can vary?
Generally the order listed in the claim is not assumed to be limiting. Whether there is dependence between the steps is something the specification should ideally make clear explicitly (but it can ...
- 1,870
2
votes
Is a dependent claim that has a narrower condition to realizing the conclusion valid?
No aspect of an independent claim can be broadened in a depended claim.
Example 1. A machine where an elongated member made of steel is between about 1 meter and 2 meters long and further . . . “
The ...
- 30.7k
2
votes
Accepted
grammar of a dependent claim
You appear to asking about whether to use the simple present tense (satisifies) or use participle construction (satisfying).
The simple answer is that you can use both, but the simple present tense (...
- 44
1
vote
Could a proper dependent claim of an allowed independent claim be rejected?
This is probably a controversial subject and I don't think there is going to be any case law that elucidates this kind of issue but here is my humble take on it:
First of all, there are going to be ...
- 1,870
1
vote
what if a dependent claim is actually broader than the independent claim
In your example the dependent claim is not a dependent claim.
If the examiner does his/her job properly then they will raise a clarity objection regarding the dependency of your claim. As by ...
1
vote
what if a dependent claim is actually broader than the independent claim
The answer to the title of the question is a proper dependent is by definition narrower than the claim it depends from. Period.
- 30.7k
1
vote
what if a dependent claim is actually broader than the independent claim
I would say it's not a valid dependent claim. The claim it depends on specifies that C is a variable. If you then fix C to zero, it becomes a constant, which is the opposite of a variable. A dependent ...
- 1,870
1
vote
what's the purpose of dependent claims?
In addition to the good answer by buff36 there is the subtle effect of the doctrine of claim differentiation. This holds that claims are presumed to have different scopes and particularly that a ...
- 30.7k
1
vote
in a method claim, how to word it such that the order of certain steps can vary?
I am not a lawyer. That said, I would interpret the claim such that steps x, y and z are not limited to that order since the steps are not written as dependent on another step.
Now as an inventor, I ...
- 11.7k
1
vote
What is the local scope of definite articles in claims?
Each depend claim has the meaning as if all the claims in its path back to the independent claim are incorporated. Claim 4 could not be
The system of claim 1, wherein the A includes the B and an X.
...
- 30.7k
1
vote
Accepted
How to word this claim to deter sneaky manufacturers?
Direct infringement by a manufacturer requires the manufacturer to either perform a whole set of claimed steps or make/sell something that contains all elements of a device claim.
If a thing is made ...
- 30.7k
1
vote
Is the language '[a] method as claimed in any preceding claim" only available if a special fee is paid for combinations, variation or permutations?
Multiple dependencies are strongly discouraged in the U.S. Here they are thought of as potentially confusing. In much of the world they are thought of as a way to have more compact wording.
In the U.S....
- 30.7k
1
vote
Accepted
Is the language '[a] method as claimed in any preceding claim" only available if a special fee is paid for combinations, variation or permutations?
It will depend upon the jurisdiction the patent application is in. Some jurisdictions let you do that without having to pay any additional fees, for example the EPO, most European jurisdictions, ...
- 2,264
1
vote
Accepted
The singular and plural has been a major issue for me as a pro se first-timer
You could draft it like this:
Device comprising: at least one X, the at least one X comprising a first X at location A.
Device according to claim 1, wherein the at least one X further comprises a ...
- 2,264
1
vote
Equating claim elements in dependent claims?
From finnegan.com/files/Upload/FCN_Aug10_5.html:
The Court noted that “[w]here a claim lists elements separately, ‘the clear implication of the claim language’ is that those elements are ‘distinct ...
- 866
Only top scored, non community-wiki answers of a minimum length are eligible