Patent Law FAQ

MPEP 2114 provides guidance on distinguishing apparatus claims from method claims, particularly when functional language is involved. The manual states:

“While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function.”

This means that for apparatus claims, the focus should be on the structural elements rather than how the apparatus functions. In contrast, method claims are defined by the steps or actions performed. The MPEP further clarifies:

“The recitation of a new intended use for an old product does not make a claim to that old product patentable.”

This highlights that merely describing a new way to use an existing apparatus doesn’t make it patentable. To be patentable, an apparatus claim must have structural differences from the prior art. If an applicant wants to protect a specific way of using an apparatus, they should consider filing method claims in addition to apparatus claims.

To learn more:

• apparatus claims
• method claims
• functional language
• structural elements