Patent Claims

Unreasonably Broad Claim Construction during Patent Prosecution

During patent prosecution, patent claims are to be given their broadest reasonable interpretation consistent with the specification and as interpreted by a person having ordinary skill in the art.  (see MPEP 2111 – Claim Interpretation; Broadest Reasonable Interpretation)(emphasis added) This article examines a recent BPAI decision which found an Examiner’s claim construction as unreasonably broad [...]

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Patent Claim Drafting Tips

Relative Terminology When used appropriately, it is generally preferred that claims employ relative terminology in view of the broadening advantages that such terms provide.  However, if relative terms are employed in a claim, an Applicant must be aware of potential definiteness issues (35 USC 112, Second Paragraph).  More specifically, MPEP 2173.05(b) states: “the fact that claim [...]

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Drafting Patent Claims

Parts of a Claim / Transitional Phrase Unless there is a compelling reason otherwise, the transitional term “comprising” should always be used in a patent claim as it is “inclusive or open-ended and does not exclude additional, unrecited elements or method steps.” (see MPEP 2111.03 – Transitional Phrases)  Further, MPEP 2111.03 states that the transitional [...]

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Patent Claim | Patent Application

What is a patent claim? While a patent application includes many parts (e.g., specification, drawings, etc.), the patent claims are the most important component of the patent application as they define the exclusionary boundaries of a patent application. If an Applicant wants to obtain protection over a particular feature of an invention, said feature MUST [...]

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Narrow Patent Claims | Patent Application

What are the Advantages and Disadvantages of Narrow Patent Claims? As more narrowly drafted patent claim contain a greater number of recitations/features than more broadly drafted patent claims, they may indeed prove invaluable during patent litigation and patent prosecution. During litigation, if the Patentee is indeed faced with an invalidity defense, more narrowly drafted patent claims [...]

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Broad Patent Claims | Patent Application

Patent claims which are drafted more broadly provide greater exclusionary rights to an Applicant as they include fewer recitations/features than more narrowly drafted patent claims. As the appropriate level of claim breadth for patentability purposes is determined in view of the prior art, patent claims are generally permitted to be as broad as the prior [...]

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