Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
" "Adapted For (1)
The interpretation of “wherein” and “whereby” clauses in patent claims depends on their specific context and effect on the claim. According to MPEP 2111.04:
“The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case.”
For “wherein” clauses, they can be limiting if they give “meaning and purpose to the manipulative steps” as noted in Griffin v. Bertina.
For “whereby” clauses, the Hoffer v. Microsoft Corp. case provides guidance:
- If a “whereby” clause states a condition that is material to patentability, it cannot be ignored.
- However, in a method claim, a “whereby” clause that simply expresses the intended result of a process step positively recited is not given weight.
Patent attorneys and examiners should carefully analyze these clauses to determine if they add limitations to the claim or merely state the intended result of other claim elements.
To learn more:
" "Whereby (1)
The interpretation of “wherein” and “whereby” clauses in patent claims depends on their specific context and effect on the claim. According to MPEP 2111.04:
“The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case.”
For “wherein” clauses, they can be limiting if they give “meaning and purpose to the manipulative steps” as noted in Griffin v. Bertina.
For “whereby” clauses, the Hoffer v. Microsoft Corp. case provides guidance:
- If a “whereby” clause states a condition that is material to patentability, it cannot be ignored.
- However, in a method claim, a “whereby” clause that simply expresses the intended result of a process step positively recited is not given weight.
Patent attorneys and examiners should carefully analyze these clauses to determine if they add limitations to the claim or merely state the intended result of other claim elements.
To learn more:
" "Wherein (1)
The interpretation of “wherein” and “whereby” clauses in patent claims depends on their specific context and effect on the claim. According to MPEP 2111.04:
“The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case.”
For “wherein” clauses, they can be limiting if they give “meaning and purpose to the manipulative steps” as noted in Griffin v. Bertina.
For “whereby” clauses, the Hoffer v. Microsoft Corp. case provides guidance:
- If a “whereby” clause states a condition that is material to patentability, it cannot be ignored.
- However, in a method claim, a “whereby” clause that simply expresses the intended result of a process step positively recited is not given weight.
Patent attorneys and examiners should carefully analyze these clauses to determine if they add limitations to the claim or merely state the intended result of other claim elements.
To learn more:
" And Contingent Clauses (1)
The interpretation of “wherein” and “whereby” clauses in patent claims depends on their specific context and effect on the claim. According to MPEP 2111.04:
“The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case.”
For “wherein” clauses, they can be limiting if they give “meaning and purpose to the manipulative steps” as noted in Griffin v. Bertina.
For “whereby” clauses, the Hoffer v. Microsoft Corp. case provides guidance:
- If a “whereby” clause states a condition that is material to patentability, it cannot be ignored.
- However, in a method claim, a “whereby” clause that simply expresses the intended result of a process step positively recited is not given weight.
Patent attorneys and examiners should carefully analyze these clauses to determine if they add limitations to the claim or merely state the intended result of other claim elements.
To learn more:
Inequitable Conduct (1)
According to MPEP 2016, a finding of fraud, inequitable conduct, or violation of duty of disclosure affects all claims in a patent application or patent, rendering them unpatentable or invalid. The MPEP states:
“A finding of ‘fraud,’ ‘inequitable conduct,’ or violation of duty of disclosure with respect to any claim in an application or patent, renders all the claims thereof unpatentable or invalid.”
This means that even if the misconduct is related to only one claim, it affects the entire patent.
To learn more:
MPEP 2000 – Duty Of Disclosure (1)
According to MPEP 2016, a finding of fraud, inequitable conduct, or violation of duty of disclosure affects all claims in a patent application or patent, rendering them unpatentable or invalid. The MPEP states:
“A finding of ‘fraud,’ ‘inequitable conduct,’ or violation of duty of disclosure with respect to any claim in an application or patent, renders all the claims thereof unpatentable or invalid.”
This means that even if the misconduct is related to only one claim, it affects the entire patent.
To learn more:
MPEP 2016 – Fraud (1)
According to MPEP 2016, a finding of fraud, inequitable conduct, or violation of duty of disclosure affects all claims in a patent application or patent, rendering them unpatentable or invalid. The MPEP states:
“A finding of ‘fraud,’ ‘inequitable conduct,’ or violation of duty of disclosure with respect to any claim in an application or patent, renders all the claims thereof unpatentable or invalid.”
This means that even if the misconduct is related to only one claim, it affects the entire patent.
To learn more:
MPEP 2100 – Patentability (5)
The MPEP discusses the use of “optionally” in patent claims in MPEP 2173.05(h). While not explicitly stating a stance, the MPEP provides guidance on how such terms are interpreted:
“A claim which recites “at least one member” of a group is a proper claim and should be treated as a claim reciting in the alternative. A claim which uses the phrase “and/or” should be treated as an alternative expression and should be rejected using the second paragraph of 35 U.S.C. 112 and should be treated as a conjunctive (“and”) or alternative (“or”) expression in the alternative.”
By extension, the use of “optionally” in claims is generally acceptable as it clearly indicates that certain elements or steps are not required. However, care should be taken to ensure that the use of “optionally” does not introduce indefiniteness or ambiguity into the claim. The claim should clearly define the scope both with and without the optional elements.
To learn more:
The phrase “consisting essentially of” occupies a middle ground between the open-ended “comprising” and the closed “consisting of” in patent claims. According to MPEP 2111.03:
“The transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention.”
Key differences:
- “Comprising”: Open-ended, allows for additional, unrecited elements.
- “Consisting of”: Closed, excludes any element not specified in the claim.
- “Consisting essentially of”: Partially open, allows only those additional elements that do not materially affect the invention’s basic and novel characteristics.
For example, “A cleaning composition consisting essentially of ingredients X, Y, and Z” would allow for minor additives that don’t significantly change the cleaning properties, but would exclude major components that alter its fundamental nature.
When using or interpreting “consisting essentially of,” it’s important to refer to the specification to understand what constitutes a material change to the invention’s basic and novel characteristics.
To learn more:
The interpretation of “wherein” and “whereby” clauses in patent claims depends on their specific context and effect on the claim. According to MPEP 2111.04:
“The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case.”
For “wherein” clauses, they can be limiting if they give “meaning and purpose to the manipulative steps” as noted in Griffin v. Bertina.
For “whereby” clauses, the Hoffer v. Microsoft Corp. case provides guidance:
- If a “whereby” clause states a condition that is material to patentability, it cannot be ignored.
- However, in a method claim, a “whereby” clause that simply expresses the intended result of a process step positively recited is not given weight.
Patent attorneys and examiners should carefully analyze these clauses to determine if they add limitations to the claim or merely state the intended result of other claim elements.
To learn more:
“Lack of antecedent basis” refers to a situation in patent claims where a term is used without proper introduction or reference to a previously mentioned element. As stated in MPEP 2173.05(e):
“The lack of clarity could arise where a claim refers to ‘said lever’ or ‘the lever,’ where the claim contains no earlier recitation or limitation of a lever and where it would be unclear as to what element the limitation was making reference.”
This issue can lead to indefiniteness in claims, potentially rendering them unclear and therefore invalid under 35 U.S.C. 112(b).
To learn more:
What is the significance of the ‘the’ vs. ‘a’ or ‘an’ in patent claim language?
The use of ‘the’ versus ‘a’ or ‘an’ in patent claim language is significant for establishing proper antecedent basis. According to MPEP 2173.05(e):
“Obviously, however, the failure to provide explicit antecedent basis for terms does not always render a claim indefinite. If the scope of a claim would be reasonably ascertainable by those skilled in the art, then the claim is not indefinite.”
Generally, ‘a’ or ‘an’ is used when introducing an element for the first time, while ‘the’ is used for subsequent references to that element. However, the MPEP acknowledges that the absence of explicit antecedent basis doesn’t always make a claim indefinite. The key is whether the scope of the claim remains reasonably clear to those skilled in the art.
To learn more:
MPEP 2111.03 – Transitional Phrases (1)
The phrase “consisting essentially of” occupies a middle ground between the open-ended “comprising” and the closed “consisting of” in patent claims. According to MPEP 2111.03:
“The transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention.”
Key differences:
- “Comprising”: Open-ended, allows for additional, unrecited elements.
- “Consisting of”: Closed, excludes any element not specified in the claim.
- “Consisting essentially of”: Partially open, allows only those additional elements that do not materially affect the invention’s basic and novel characteristics.
For example, “A cleaning composition consisting essentially of ingredients X, Y, and Z” would allow for minor additives that don’t significantly change the cleaning properties, but would exclude major components that alter its fundamental nature.
When using or interpreting “consisting essentially of,” it’s important to refer to the specification to understand what constitutes a material change to the invention’s basic and novel characteristics.
To learn more:
MPEP 2111.04 – "Adapted To (1)
The interpretation of “wherein” and “whereby” clauses in patent claims depends on their specific context and effect on the claim. According to MPEP 2111.04:
“The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case.”
For “wherein” clauses, they can be limiting if they give “meaning and purpose to the manipulative steps” as noted in Griffin v. Bertina.
For “whereby” clauses, the Hoffer v. Microsoft Corp. case provides guidance:
- If a “whereby” clause states a condition that is material to patentability, it cannot be ignored.
- However, in a method claim, a “whereby” clause that simply expresses the intended result of a process step positively recited is not given weight.
Patent attorneys and examiners should carefully analyze these clauses to determine if they add limitations to the claim or merely state the intended result of other claim elements.
To learn more:
MPEP 2173.05(E) – Lack Of Antecedent Basis (2)
“Lack of antecedent basis” refers to a situation in patent claims where a term is used without proper introduction or reference to a previously mentioned element. As stated in MPEP 2173.05(e):
“The lack of clarity could arise where a claim refers to ‘said lever’ or ‘the lever,’ where the claim contains no earlier recitation or limitation of a lever and where it would be unclear as to what element the limitation was making reference.”
This issue can lead to indefiniteness in claims, potentially rendering them unclear and therefore invalid under 35 U.S.C. 112(b).
To learn more:
What is the significance of the ‘the’ vs. ‘a’ or ‘an’ in patent claim language?
The use of ‘the’ versus ‘a’ or ‘an’ in patent claim language is significant for establishing proper antecedent basis. According to MPEP 2173.05(e):
“Obviously, however, the failure to provide explicit antecedent basis for terms does not always render a claim indefinite. If the scope of a claim would be reasonably ascertainable by those skilled in the art, then the claim is not indefinite.”
Generally, ‘a’ or ‘an’ is used when introducing an element for the first time, while ‘the’ is used for subsequent references to that element. However, the MPEP acknowledges that the absence of explicit antecedent basis doesn’t always make a claim indefinite. The key is whether the scope of the claim remains reasonably clear to those skilled in the art.
To learn more:
MPEP 2173.05(H) – Alternative Limitations (1)
The MPEP discusses the use of “optionally” in patent claims in MPEP 2173.05(h). While not explicitly stating a stance, the MPEP provides guidance on how such terms are interpreted:
“A claim which recites “at least one member” of a group is a proper claim and should be treated as a claim reciting in the alternative. A claim which uses the phrase “and/or” should be treated as an alternative expression and should be rejected using the second paragraph of 35 U.S.C. 112 and should be treated as a conjunctive (“and”) or alternative (“or”) expression in the alternative.”
By extension, the use of “optionally” in claims is generally acceptable as it clearly indicates that certain elements or steps are not required. However, care should be taken to ensure that the use of “optionally” does not introduce indefiniteness or ambiguity into the claim. The claim should clearly define the scope both with and without the optional elements.
To learn more:
Or Violation Of Duty Of Disclosure Affects All Claims (1)
According to MPEP 2016, a finding of fraud, inequitable conduct, or violation of duty of disclosure affects all claims in a patent application or patent, rendering them unpatentable or invalid. The MPEP states:
“A finding of ‘fraud,’ ‘inequitable conduct,’ or violation of duty of disclosure with respect to any claim in an application or patent, renders all the claims thereof unpatentable or invalid.”
This means that even if the misconduct is related to only one claim, it affects the entire patent.
To learn more:
Patent Law (6)
According to MPEP 2016, a finding of fraud, inequitable conduct, or violation of duty of disclosure affects all claims in a patent application or patent, rendering them unpatentable or invalid. The MPEP states:
“A finding of ‘fraud,’ ‘inequitable conduct,’ or violation of duty of disclosure with respect to any claim in an application or patent, renders all the claims thereof unpatentable or invalid.”
This means that even if the misconduct is related to only one claim, it affects the entire patent.
To learn more:
The MPEP discusses the use of “optionally” in patent claims in MPEP 2173.05(h). While not explicitly stating a stance, the MPEP provides guidance on how such terms are interpreted:
“A claim which recites “at least one member” of a group is a proper claim and should be treated as a claim reciting in the alternative. A claim which uses the phrase “and/or” should be treated as an alternative expression and should be rejected using the second paragraph of 35 U.S.C. 112 and should be treated as a conjunctive (“and”) or alternative (“or”) expression in the alternative.”
By extension, the use of “optionally” in claims is generally acceptable as it clearly indicates that certain elements or steps are not required. However, care should be taken to ensure that the use of “optionally” does not introduce indefiniteness or ambiguity into the claim. The claim should clearly define the scope both with and without the optional elements.
To learn more:
The phrase “consisting essentially of” occupies a middle ground between the open-ended “comprising” and the closed “consisting of” in patent claims. According to MPEP 2111.03:
“The transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention.”
Key differences:
- “Comprising”: Open-ended, allows for additional, unrecited elements.
- “Consisting of”: Closed, excludes any element not specified in the claim.
- “Consisting essentially of”: Partially open, allows only those additional elements that do not materially affect the invention’s basic and novel characteristics.
For example, “A cleaning composition consisting essentially of ingredients X, Y, and Z” would allow for minor additives that don’t significantly change the cleaning properties, but would exclude major components that alter its fundamental nature.
When using or interpreting “consisting essentially of,” it’s important to refer to the specification to understand what constitutes a material change to the invention’s basic and novel characteristics.
To learn more:
The interpretation of “wherein” and “whereby” clauses in patent claims depends on their specific context and effect on the claim. According to MPEP 2111.04:
“The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case.”
For “wherein” clauses, they can be limiting if they give “meaning and purpose to the manipulative steps” as noted in Griffin v. Bertina.
For “whereby” clauses, the Hoffer v. Microsoft Corp. case provides guidance:
- If a “whereby” clause states a condition that is material to patentability, it cannot be ignored.
- However, in a method claim, a “whereby” clause that simply expresses the intended result of a process step positively recited is not given weight.
Patent attorneys and examiners should carefully analyze these clauses to determine if they add limitations to the claim or merely state the intended result of other claim elements.
To learn more:
“Lack of antecedent basis” refers to a situation in patent claims where a term is used without proper introduction or reference to a previously mentioned element. As stated in MPEP 2173.05(e):
“The lack of clarity could arise where a claim refers to ‘said lever’ or ‘the lever,’ where the claim contains no earlier recitation or limitation of a lever and where it would be unclear as to what element the limitation was making reference.”
This issue can lead to indefiniteness in claims, potentially rendering them unclear and therefore invalid under 35 U.S.C. 112(b).
To learn more:
What is the significance of the ‘the’ vs. ‘a’ or ‘an’ in patent claim language?
The use of ‘the’ versus ‘a’ or ‘an’ in patent claim language is significant for establishing proper antecedent basis. According to MPEP 2173.05(e):
“Obviously, however, the failure to provide explicit antecedent basis for terms does not always render a claim indefinite. If the scope of a claim would be reasonably ascertainable by those skilled in the art, then the claim is not indefinite.”
Generally, ‘a’ or ‘an’ is used when introducing an element for the first time, while ‘the’ is used for subsequent references to that element. However, the MPEP acknowledges that the absence of explicit antecedent basis doesn’t always make a claim indefinite. The key is whether the scope of the claim remains reasonably clear to those skilled in the art.
To learn more:
Patent Procedure (6)
According to MPEP 2016, a finding of fraud, inequitable conduct, or violation of duty of disclosure affects all claims in a patent application or patent, rendering them unpatentable or invalid. The MPEP states:
“A finding of ‘fraud,’ ‘inequitable conduct,’ or violation of duty of disclosure with respect to any claim in an application or patent, renders all the claims thereof unpatentable or invalid.”
This means that even if the misconduct is related to only one claim, it affects the entire patent.
To learn more:
The MPEP discusses the use of “optionally” in patent claims in MPEP 2173.05(h). While not explicitly stating a stance, the MPEP provides guidance on how such terms are interpreted:
“A claim which recites “at least one member” of a group is a proper claim and should be treated as a claim reciting in the alternative. A claim which uses the phrase “and/or” should be treated as an alternative expression and should be rejected using the second paragraph of 35 U.S.C. 112 and should be treated as a conjunctive (“and”) or alternative (“or”) expression in the alternative.”
By extension, the use of “optionally” in claims is generally acceptable as it clearly indicates that certain elements or steps are not required. However, care should be taken to ensure that the use of “optionally” does not introduce indefiniteness or ambiguity into the claim. The claim should clearly define the scope both with and without the optional elements.
To learn more:
The phrase “consisting essentially of” occupies a middle ground between the open-ended “comprising” and the closed “consisting of” in patent claims. According to MPEP 2111.03:
“The transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention.”
Key differences:
- “Comprising”: Open-ended, allows for additional, unrecited elements.
- “Consisting of”: Closed, excludes any element not specified in the claim.
- “Consisting essentially of”: Partially open, allows only those additional elements that do not materially affect the invention’s basic and novel characteristics.
For example, “A cleaning composition consisting essentially of ingredients X, Y, and Z” would allow for minor additives that don’t significantly change the cleaning properties, but would exclude major components that alter its fundamental nature.
When using or interpreting “consisting essentially of,” it’s important to refer to the specification to understand what constitutes a material change to the invention’s basic and novel characteristics.
To learn more:
The interpretation of “wherein” and “whereby” clauses in patent claims depends on their specific context and effect on the claim. According to MPEP 2111.04:
“The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case.”
For “wherein” clauses, they can be limiting if they give “meaning and purpose to the manipulative steps” as noted in Griffin v. Bertina.
For “whereby” clauses, the Hoffer v. Microsoft Corp. case provides guidance:
- If a “whereby” clause states a condition that is material to patentability, it cannot be ignored.
- However, in a method claim, a “whereby” clause that simply expresses the intended result of a process step positively recited is not given weight.
Patent attorneys and examiners should carefully analyze these clauses to determine if they add limitations to the claim or merely state the intended result of other claim elements.
To learn more:
“Lack of antecedent basis” refers to a situation in patent claims where a term is used without proper introduction or reference to a previously mentioned element. As stated in MPEP 2173.05(e):
“The lack of clarity could arise where a claim refers to ‘said lever’ or ‘the lever,’ where the claim contains no earlier recitation or limitation of a lever and where it would be unclear as to what element the limitation was making reference.”
This issue can lead to indefiniteness in claims, potentially rendering them unclear and therefore invalid under 35 U.S.C. 112(b).
To learn more:
What is the significance of the ‘the’ vs. ‘a’ or ‘an’ in patent claim language?
The use of ‘the’ versus ‘a’ or ‘an’ in patent claim language is significant for establishing proper antecedent basis. According to MPEP 2173.05(e):
“Obviously, however, the failure to provide explicit antecedent basis for terms does not always render a claim indefinite. If the scope of a claim would be reasonably ascertainable by those skilled in the art, then the claim is not indefinite.”
Generally, ‘a’ or ‘an’ is used when introducing an element for the first time, while ‘the’ is used for subsequent references to that element. However, the MPEP acknowledges that the absence of explicit antecedent basis doesn’t always make a claim indefinite. The key is whether the scope of the claim remains reasonably clear to those skilled in the art.
To learn more: