7 votes

Risks of "kitchen sink" disclosures?

Practice differs across jurisdictions worldwide. The idea is the same behind all of them, but usually the tools to analyze enablement are different. I think patent attorneys don't like broad claims ...
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5 votes

Why not refer to the invention as the invention?

If you say "the invention includes a widget", this can be seen as equivalent to saying that a widget is an essential feature which must be present. This means that if a claim omitted the widget, it ...
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  • 7,033
3 votes
Accepted

What does the term "embodiment" mean in the software patent?

It means an example of something that includes the claimed invention. An embodiment is a concrete thing or process that practices the more abstract “invention-as-claimed”. Implementation is close to ...
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  • 25.3k
3 votes
Accepted

Two alternative element in one independent claim

Claims are hard to draft and your approach might not be artful but alternatives are allowed in EPO claims if they don't get too confusing. A claim, whether independent or dependent, may refer to ...
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  • 25.3k
3 votes

What does "in a further preferred embodiment" refer to in a patent?

It means “the following limitation is optional“. In Europe for example, if you describe an example with limitations a, b and c only, you cannot claim a and b without c. If however you say a, ...
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  • 5,827
3 votes

Extracting a detail from specifications of one patent application to create a new patent application

Q. "Can it then be written up as a separate application?" A. Yes. Each of the two regular applications should claim priority to the provisional application which you have already filed. To do that, ...
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  • 511
3 votes

When are "new embodiments" new embodiments and when are new inventions?

However you are not sure the examiner is correct. Examiners decisions are frequently overturned by the courts. Yes, Examiners can be wrong, but failure of an Examiner to issue a restriction ...
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  • 1,013
2 votes

Why not refer to the invention as the invention?

It is proper to interpret claims in light of the specification. It is not proper to "import" limitations from the specification into the claims. This was a relatively clear line until a decade or so ...
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  • 25.3k
2 votes
Accepted

‘Preferred embodiment’ containing salient details

What is protected is what is described in the claims. Nothing more, nothing less. While the rest of the patent describes the background, the invention and how it works, only what is in the claims ...
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  • 9,607
2 votes

Reciting claims for elements whose function can be achieved by multiple different mechanisms

First of all you should consider whether the technical feature you are referring to is necessary for the definition of your invention, maybe you can claim your invention without any such feature. In ...
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2 votes

"embodiment" vs. "invention"

I can't speak for patent attorneys since I'm not one, but in my mind the words "invention" and "embodiment" aren't synonyms. An embodiment is a particular way of implementing the invention. When a ...
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  • 9,607
1 vote
Accepted

Can alternative embodiments well known to skilled persons but not described in my description be protected by my broad claim?

If you have a granted patent with a broad claim, then you can enforce that patent against others who infringe upon it. If you are worried about some minor variations of the invention getting patent ...
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  • 9,607
1 vote

"embodiment" vs. "invention"

As a former patent attorney, I recall routinely including terminology referring to "these and other embodiments of the disclosed invention..." as a way to help a reader more clearly focus on the fact ...
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  • 341
1 vote

Is there a requirement to explicitly call out a preferred embodiment?

You must describe the preferred embodiment, but you do not need to state which of several embodiments is the preferred one.
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  • 511
1 vote

Can a patent have more than one, multiple preferred embodiments?

A patent can, and should, describe several embodiments. The preferred embodiment must be described, but it is not necessary, or even desirable, to state which embodiment is preferred. You must not ...
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  • 511

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