Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2100 – Patentability (3)
While “use” claims are generally problematic in US patent applications, there are rare instances where they might be acceptable:
- Certain process claims: If the claim clearly implies the steps involved, it might be considered definite. However, this is risky and not recommended.
- Product-by-process claims: These are not strictly “use” claims but can describe a product in terms of the process used to make it.
The MPEP 2173.05(q) states: “Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967) held the following claim to be an improper definition of a process: ‘The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction.’ In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966), the following claim was held definite and proper: ‘The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sulfonic acid.’“
Despite these exceptions, it’s generally safer and more effective to draft claims as method or product claims to avoid potential indefiniteness rejections under 35 U.S.C. 112(b).
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:
“Use” claims are closely related to process claims, but they often lack the specificity required for a proper process claim. According to MPEP 2173.05(q), a “Use” claim becomes problematic when it fails to set forth specific steps involved in the process.
The MPEP states:
“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) or pre-AIA 35 U.S.C. 112, second paragraph.”
To be considered a valid process claim, the “Use” claim should include active, positive steps that clearly define how the use is practiced. Without these steps, the claim may be rejected as indefinite or as failing to comply with 35 U.S.C. 101, which defines the categories of patentable inventions.
To learn more:
MPEP 2173.05(Q) – "Use" Claims (3)
While “use” claims are generally problematic in US patent applications, there are rare instances where they might be acceptable:
- Certain process claims: If the claim clearly implies the steps involved, it might be considered definite. However, this is risky and not recommended.
- Product-by-process claims: These are not strictly “use” claims but can describe a product in terms of the process used to make it.
The MPEP 2173.05(q) states: “Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967) held the following claim to be an improper definition of a process: ‘The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction.’ In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966), the following claim was held definite and proper: ‘The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sulfonic acid.’“
Despite these exceptions, it’s generally safer and more effective to draft claims as method or product claims to avoid potential indefiniteness rejections under 35 U.S.C. 112(b).
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:
“Use” claims are closely related to process claims, but they often lack the specificity required for a proper process claim. According to MPEP 2173.05(q), a “Use” claim becomes problematic when it fails to set forth specific steps involved in the process.
The MPEP states:
“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) or pre-AIA 35 U.S.C. 112, second paragraph.”
To be considered a valid process claim, the “Use” claim should include active, positive steps that clearly define how the use is practiced. Without these steps, the claim may be rejected as indefinite or as failing to comply with 35 U.S.C. 101, which defines the categories of patentable inventions.
To learn more:
Patent Law (3)
While “use” claims are generally problematic in US patent applications, there are rare instances where they might be acceptable:
- Certain process claims: If the claim clearly implies the steps involved, it might be considered definite. However, this is risky and not recommended.
- Product-by-process claims: These are not strictly “use” claims but can describe a product in terms of the process used to make it.
The MPEP 2173.05(q) states: “Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967) held the following claim to be an improper definition of a process: ‘The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction.’ In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966), the following claim was held definite and proper: ‘The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sulfonic acid.’“
Despite these exceptions, it’s generally safer and more effective to draft claims as method or product claims to avoid potential indefiniteness rejections under 35 U.S.C. 112(b).
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:
“Use” claims are closely related to process claims, but they often lack the specificity required for a proper process claim. According to MPEP 2173.05(q), a “Use” claim becomes problematic when it fails to set forth specific steps involved in the process.
The MPEP states:
“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) or pre-AIA 35 U.S.C. 112, second paragraph.”
To be considered a valid process claim, the “Use” claim should include active, positive steps that clearly define how the use is practiced. Without these steps, the claim may be rejected as indefinite or as failing to comply with 35 U.S.C. 101, which defines the categories of patentable inventions.
To learn more:
Patent Procedure (3)
While “use” claims are generally problematic in US patent applications, there are rare instances where they might be acceptable:
- Certain process claims: If the claim clearly implies the steps involved, it might be considered definite. However, this is risky and not recommended.
- Product-by-process claims: These are not strictly “use” claims but can describe a product in terms of the process used to make it.
The MPEP 2173.05(q) states: “Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967) held the following claim to be an improper definition of a process: ‘The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction.’ In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966), the following claim was held definite and proper: ‘The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sulfonic acid.’“
Despite these exceptions, it’s generally safer and more effective to draft claims as method or product claims to avoid potential indefiniteness rejections under 35 U.S.C. 112(b).
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:
“Use” claims are closely related to process claims, but they often lack the specificity required for a proper process claim. According to MPEP 2173.05(q), a “Use” claim becomes problematic when it fails to set forth specific steps involved in the process.
The MPEP states:
“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) or pre-AIA 35 U.S.C. 112, second paragraph.”
To be considered a valid process claim, the “Use” claim should include active, positive steps that clearly define how the use is practiced. Without these steps, the claim may be rejected as indefinite or as failing to comply with 35 U.S.C. 101, which defines the categories of patentable inventions.
To learn more: