Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2100 – Patentability (2)
Reviewing claims is a crucial part of patent examination. According to MPEP 2103, the key steps in reviewing claims are:
- Identify and evaluate each claim limitation:
- For processes, identify steps or acts to be performed
- For products, identify discrete physical structures or materials
- Correlate claim limitations with the disclosure:
- Match each claim limitation to portions of the specification that describe it
- Do this for all claims, including those using means- (or step-) plus-function language
- Interpret claims using broadest reasonable interpretation:
- Consider the plain meaning of terms as understood by one having ordinary skill in the art
- Evaluate any limiting effect of claim language
- Consider every limitation in the claim:
- Evaluate the claim as a whole, not as isolated elements
The MPEP emphasizes, The goal of claim analysis is to identify the boundaries of the protection sought by the applicant and to understand how the claims relate to and define what the applicant has indicated is the invention.
It’s important to note that examiners should not dissect a claimed invention into discrete elements and then evaluate the elements in isolation. Instead, the claim as a whole must be considered.
To learn more:
The USPTO uses a two-step process to determine if a claim recites an abstract idea:
- Evaluate the claim language: Examiners analyze the claim to identify any concepts that may be abstract ideas.
- Compare to established abstract idea categories: The identified concepts are compared to the enumerated groupings of abstract ideas and previous court decisions.
According to MPEP 2106.04(a): “To determine whether a claim recites an abstract idea in Prong One, examiners are now to: (a) Identify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea; and (b) determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance.”
To learn more:
MPEP 2103 – Patent Examination Process (1)
Reviewing claims is a crucial part of patent examination. According to MPEP 2103, the key steps in reviewing claims are:
- Identify and evaluate each claim limitation:
- For processes, identify steps or acts to be performed
- For products, identify discrete physical structures or materials
- Correlate claim limitations with the disclosure:
- Match each claim limitation to portions of the specification that describe it
- Do this for all claims, including those using means- (or step-) plus-function language
- Interpret claims using broadest reasonable interpretation:
- Consider the plain meaning of terms as understood by one having ordinary skill in the art
- Evaluate any limiting effect of claim language
- Consider every limitation in the claim:
- Evaluate the claim as a whole, not as isolated elements
The MPEP emphasizes, The goal of claim analysis is to identify the boundaries of the protection sought by the applicant and to understand how the claims relate to and define what the applicant has indicated is the invention.
It’s important to note that examiners should not dissect a claimed invention into discrete elements and then evaluate the elements in isolation. Instead, the claim as a whole must be considered.
To learn more:
MPEP 2106.04(A) – Abstract Ideas (1)
The USPTO uses a two-step process to determine if a claim recites an abstract idea:
- Evaluate the claim language: Examiners analyze the claim to identify any concepts that may be abstract ideas.
- Compare to established abstract idea categories: The identified concepts are compared to the enumerated groupings of abstract ideas and previous court decisions.
According to MPEP 2106.04(a): “To determine whether a claim recites an abstract idea in Prong One, examiners are now to: (a) Identify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea; and (b) determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance.”
To learn more:
Patent Law (2)
Reviewing claims is a crucial part of patent examination. According to MPEP 2103, the key steps in reviewing claims are:
- Identify and evaluate each claim limitation:
- For processes, identify steps or acts to be performed
- For products, identify discrete physical structures or materials
- Correlate claim limitations with the disclosure:
- Match each claim limitation to portions of the specification that describe it
- Do this for all claims, including those using means- (or step-) plus-function language
- Interpret claims using broadest reasonable interpretation:
- Consider the plain meaning of terms as understood by one having ordinary skill in the art
- Evaluate any limiting effect of claim language
- Consider every limitation in the claim:
- Evaluate the claim as a whole, not as isolated elements
The MPEP emphasizes, The goal of claim analysis is to identify the boundaries of the protection sought by the applicant and to understand how the claims relate to and define what the applicant has indicated is the invention.
It’s important to note that examiners should not dissect a claimed invention into discrete elements and then evaluate the elements in isolation. Instead, the claim as a whole must be considered.
To learn more:
The USPTO uses a two-step process to determine if a claim recites an abstract idea:
- Evaluate the claim language: Examiners analyze the claim to identify any concepts that may be abstract ideas.
- Compare to established abstract idea categories: The identified concepts are compared to the enumerated groupings of abstract ideas and previous court decisions.
According to MPEP 2106.04(a): “To determine whether a claim recites an abstract idea in Prong One, examiners are now to: (a) Identify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea; and (b) determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance.”
To learn more:
Patent Procedure (2)
Reviewing claims is a crucial part of patent examination. According to MPEP 2103, the key steps in reviewing claims are:
- Identify and evaluate each claim limitation:
- For processes, identify steps or acts to be performed
- For products, identify discrete physical structures or materials
- Correlate claim limitations with the disclosure:
- Match each claim limitation to portions of the specification that describe it
- Do this for all claims, including those using means- (or step-) plus-function language
- Interpret claims using broadest reasonable interpretation:
- Consider the plain meaning of terms as understood by one having ordinary skill in the art
- Evaluate any limiting effect of claim language
- Consider every limitation in the claim:
- Evaluate the claim as a whole, not as isolated elements
The MPEP emphasizes, The goal of claim analysis is to identify the boundaries of the protection sought by the applicant and to understand how the claims relate to and define what the applicant has indicated is the invention.
It’s important to note that examiners should not dissect a claimed invention into discrete elements and then evaluate the elements in isolation. Instead, the claim as a whole must be considered.
To learn more:
The USPTO uses a two-step process to determine if a claim recites an abstract idea:
- Evaluate the claim language: Examiners analyze the claim to identify any concepts that may be abstract ideas.
- Compare to established abstract idea categories: The identified concepts are compared to the enumerated groupings of abstract ideas and previous court decisions.
According to MPEP 2106.04(a): “To determine whether a claim recites an abstract idea in Prong One, examiners are now to: (a) Identify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea; and (b) determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance.”
To learn more: