Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2100 – Patentability (5)
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:
Product-by-process claims and method claims are distinct types of patent claims with different scopes and considerations:
- Product-by-process claims are directed to the product itself, defined by the process used to make it. The patentability is based on the product, not the process.
- Method claims are directed to the process or steps used to make a product or achieve a result.
According to MPEP 2113:
“The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art.”
Key differences include:
- Focus: Product-by-process claims focus on the end product; method claims focus on the process steps.
- Infringement: Product-by-process claims are infringed by identical products, regardless of how they’re made; method claims are infringed only when the specific steps are performed.
- Examination: Product-by-process claims are examined based on the product structure; method claims are examined based on the specific steps and their order.
Understanding these differences is crucial for proper claim drafting and patent strategy.
To learn more:
The key differences between “use” claims and method claims in patent applications are:
- “Use” claims typically state the use of a product without any active steps, while method claims outline specific steps or actions.
- “Use” claims are often considered indefinite under 35 U.S.C. 112(b), while properly constructed method claims are not.
- Method claims are generally more acceptable in U.S. patent practice, whereas “use” claims are more common in some foreign jurisdictions.
As stated in MPEP 2173.05(q): “Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b).” This highlights why “use” claims are problematic in U.S. patent applications.
To learn more:
Yes, method claims can reference limitations from apparatus claims, as long as the reference is clear and does not introduce confusion. The MPEP 2173.05(f) provides an example of an acceptable reference:
“A method of producing ethanol comprising contacting amylose with the culture of claim 1 under the following conditions …..”
Additionally, the MPEP cites a relevant case:
“See also Ex parte Porter, 25 USPQ2d 1144 (Bd. Pat. App. & Inter. 1992) (where reference to “the nozzle of claim 7″ in a method claim was held to comply with 35 U.S.C. 112, second paragraph).”
These examples demonstrate that method claims can reference specific elements or entire apparatus claims, provided the reference is clear and does not create indefiniteness issues.
To learn more:
What are the key differences between product-by-process claims and method claims?
Product-by-process claims and method claims are distinct types of patent claims with important differences:
- Focus of Protection:
- Product-by-process claims protect the product itself, regardless of how it’s made.
- Method claims protect the process or method of making or using something.
- Patentability Assessment:
- For product-by-process claims, patentability is based on the product, not the process. As stated in MPEP 2173.05(p): “If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”
- For method claims, the novelty and non-obviousness of the process steps themselves are crucial.
- Infringement Considerations:
- Product-by-process claims are infringed by products meeting the claim limitations, regardless of their production method.
- Method claims are infringed only when the specific claimed process is used.
Understanding these differences is crucial for patent applicants to choose the most appropriate claim type for their invention and to navigate the patent examination process effectively.
To learn more:
MPEP 2113 – Product – By – Process Claims (1)
Product-by-process claims and method claims are distinct types of patent claims with different scopes and considerations:
- Product-by-process claims are directed to the product itself, defined by the process used to make it. The patentability is based on the product, not the process.
- Method claims are directed to the process or steps used to make a product or achieve a result.
According to MPEP 2113:
“The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art.”
Key differences include:
- Focus: Product-by-process claims focus on the end product; method claims focus on the process steps.
- Infringement: Product-by-process claims are infringed by identical products, regardless of how they’re made; method claims are infringed only when the specific steps are performed.
- Examination: Product-by-process claims are examined based on the product structure; method claims are examined based on the specific steps and their order.
Understanding these differences is crucial for proper claim drafting and patent strategy.
To learn more:
MPEP 2114 – Apparatus And Article Claims — Functional Language (1)
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:
MPEP 2173.05(F) – Reference To Limitations In Another Claim (1)
Yes, method claims can reference limitations from apparatus claims, as long as the reference is clear and does not introduce confusion. The MPEP 2173.05(f) provides an example of an acceptable reference:
“A method of producing ethanol comprising contacting amylose with the culture of claim 1 under the following conditions …..”
Additionally, the MPEP cites a relevant case:
“See also Ex parte Porter, 25 USPQ2d 1144 (Bd. Pat. App. & Inter. 1992) (where reference to “the nozzle of claim 7″ in a method claim was held to comply with 35 U.S.C. 112, second paragraph).”
These examples demonstrate that method claims can reference specific elements or entire apparatus claims, provided the reference is clear and does not create indefiniteness issues.
To learn more:
MPEP 2173.05(P) – Claim Directed To Product – By – Process Or Product And Process (1)
What are the key differences between product-by-process claims and method claims?
Product-by-process claims and method claims are distinct types of patent claims with important differences:
- Focus of Protection:
- Product-by-process claims protect the product itself, regardless of how it’s made.
- Method claims protect the process or method of making or using something.
- Patentability Assessment:
- For product-by-process claims, patentability is based on the product, not the process. As stated in MPEP 2173.05(p): “If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”
- For method claims, the novelty and non-obviousness of the process steps themselves are crucial.
- Infringement Considerations:
- Product-by-process claims are infringed by products meeting the claim limitations, regardless of their production method.
- Method claims are infringed only when the specific claimed process is used.
Understanding these differences is crucial for patent applicants to choose the most appropriate claim type for their invention and to navigate the patent examination process effectively.
To learn more:
MPEP 2173.05(Q) – "Use" Claims (1)
The key differences between “use” claims and method claims in patent applications are:
- “Use” claims typically state the use of a product without any active steps, while method claims outline specific steps or actions.
- “Use” claims are often considered indefinite under 35 U.S.C. 112(b), while properly constructed method claims are not.
- Method claims are generally more acceptable in U.S. patent practice, whereas “use” claims are more common in some foreign jurisdictions.
As stated in MPEP 2173.05(q): “Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b).” This highlights why “use” claims are problematic in U.S. patent applications.
To learn more:
Patent Law (5)
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:
Product-by-process claims and method claims are distinct types of patent claims with different scopes and considerations:
- Product-by-process claims are directed to the product itself, defined by the process used to make it. The patentability is based on the product, not the process.
- Method claims are directed to the process or steps used to make a product or achieve a result.
According to MPEP 2113:
“The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art.”
Key differences include:
- Focus: Product-by-process claims focus on the end product; method claims focus on the process steps.
- Infringement: Product-by-process claims are infringed by identical products, regardless of how they’re made; method claims are infringed only when the specific steps are performed.
- Examination: Product-by-process claims are examined based on the product structure; method claims are examined based on the specific steps and their order.
Understanding these differences is crucial for proper claim drafting and patent strategy.
To learn more:
The key differences between “use” claims and method claims in patent applications are:
- “Use” claims typically state the use of a product without any active steps, while method claims outline specific steps or actions.
- “Use” claims are often considered indefinite under 35 U.S.C. 112(b), while properly constructed method claims are not.
- Method claims are generally more acceptable in U.S. patent practice, whereas “use” claims are more common in some foreign jurisdictions.
As stated in MPEP 2173.05(q): “Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b).” This highlights why “use” claims are problematic in U.S. patent applications.
To learn more:
Yes, method claims can reference limitations from apparatus claims, as long as the reference is clear and does not introduce confusion. The MPEP 2173.05(f) provides an example of an acceptable reference:
“A method of producing ethanol comprising contacting amylose with the culture of claim 1 under the following conditions …..”
Additionally, the MPEP cites a relevant case:
“See also Ex parte Porter, 25 USPQ2d 1144 (Bd. Pat. App. & Inter. 1992) (where reference to “the nozzle of claim 7″ in a method claim was held to comply with 35 U.S.C. 112, second paragraph).”
These examples demonstrate that method claims can reference specific elements or entire apparatus claims, provided the reference is clear and does not create indefiniteness issues.
To learn more:
What are the key differences between product-by-process claims and method claims?
Product-by-process claims and method claims are distinct types of patent claims with important differences:
- Focus of Protection:
- Product-by-process claims protect the product itself, regardless of how it’s made.
- Method claims protect the process or method of making or using something.
- Patentability Assessment:
- For product-by-process claims, patentability is based on the product, not the process. As stated in MPEP 2173.05(p): “If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”
- For method claims, the novelty and non-obviousness of the process steps themselves are crucial.
- Infringement Considerations:
- Product-by-process claims are infringed by products meeting the claim limitations, regardless of their production method.
- Method claims are infringed only when the specific claimed process is used.
Understanding these differences is crucial for patent applicants to choose the most appropriate claim type for their invention and to navigate the patent examination process effectively.
To learn more:
Patent Procedure (5)
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:
Product-by-process claims and method claims are distinct types of patent claims with different scopes and considerations:
- Product-by-process claims are directed to the product itself, defined by the process used to make it. The patentability is based on the product, not the process.
- Method claims are directed to the process or steps used to make a product or achieve a result.
According to MPEP 2113:
“The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art.”
Key differences include:
- Focus: Product-by-process claims focus on the end product; method claims focus on the process steps.
- Infringement: Product-by-process claims are infringed by identical products, regardless of how they’re made; method claims are infringed only when the specific steps are performed.
- Examination: Product-by-process claims are examined based on the product structure; method claims are examined based on the specific steps and their order.
Understanding these differences is crucial for proper claim drafting and patent strategy.
To learn more:
The key differences between “use” claims and method claims in patent applications are:
- “Use” claims typically state the use of a product without any active steps, while method claims outline specific steps or actions.
- “Use” claims are often considered indefinite under 35 U.S.C. 112(b), while properly constructed method claims are not.
- Method claims are generally more acceptable in U.S. patent practice, whereas “use” claims are more common in some foreign jurisdictions.
As stated in MPEP 2173.05(q): “Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b).” This highlights why “use” claims are problematic in U.S. patent applications.
To learn more:
Yes, method claims can reference limitations from apparatus claims, as long as the reference is clear and does not introduce confusion. The MPEP 2173.05(f) provides an example of an acceptable reference:
“A method of producing ethanol comprising contacting amylose with the culture of claim 1 under the following conditions …..”
Additionally, the MPEP cites a relevant case:
“See also Ex parte Porter, 25 USPQ2d 1144 (Bd. Pat. App. & Inter. 1992) (where reference to “the nozzle of claim 7″ in a method claim was held to comply with 35 U.S.C. 112, second paragraph).”
These examples demonstrate that method claims can reference specific elements or entire apparatus claims, provided the reference is clear and does not create indefiniteness issues.
To learn more:
What are the key differences between product-by-process claims and method claims?
Product-by-process claims and method claims are distinct types of patent claims with important differences:
- Focus of Protection:
- Product-by-process claims protect the product itself, regardless of how it’s made.
- Method claims protect the process or method of making or using something.
- Patentability Assessment:
- For product-by-process claims, patentability is based on the product, not the process. As stated in MPEP 2173.05(p): “If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”
- For method claims, the novelty and non-obviousness of the process steps themselves are crucial.
- Infringement Considerations:
- Product-by-process claims are infringed by products meeting the claim limitations, regardless of their production method.
- Method claims are infringed only when the specific claimed process is used.
Understanding these differences is crucial for patent applicants to choose the most appropriate claim type for their invention and to navigate the patent examination process effectively.
To learn more: