How does claim construction differ in interference proceedings compared to written description evaluations?

In interference proceedings, claim construction differs from written description evaluations in a crucial way. The MPEP 2301.03 explains: “Every claim must be construed in light of the application in which it appears for purpose of evaluating whether there is interfering subject matter, unlike when evaluating whether copied claims comply with the written description requirement where…

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How are claims construed when copied from another application or patent in an interference?

When an applicant copies a claim from another application or patent to provoke an interference, the construction of these claims follows a specific rule. According to MPEP 2304.02(d): “When an applicant copies a claim from another application or patent, the applicant’s claims are construed in view of the originating specification when the other party challenges…

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How are claims construed in ex parte reexamination?

In ex parte reexamination, claims are given the broadest reasonable interpretation consistent with the specification. The MPEP states: “During reexamination ordered under 35 U.S.C. 304, and also during reexamination ordered under 35 U.S.C. 257, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the…

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What are the limits of the broadest reasonable interpretation standard?

While the broadest reasonable interpretation (BRI) standard allows for a wide interpretation of claim terms, it is not without limits. The MPEP 2111 clarifies these limits: “The broadest reasonable interpretation does not mean the broadest possible interpretation. Rather, the meaning given to a claim term must be consistent with the ordinary and customary meaning of…

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How does the broadest reasonable interpretation differ from the Phillips standard used in litigation?

The broadest reasonable interpretation (BRI) standard used by the USPTO differs from the Phillips claim construction standard used in federal courts during patent litigation. MPEP 2111 acknowledges this difference: “The broadest reasonable interpretation does not mean the broadest possible interpretation. Rather, the meaning given to a claim term must be consistent with the ordinary and…

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How can inventors avoid indefiniteness rejections when using functional language?

Inventors can avoid indefiniteness rejections when using functional language by following these guidelines derived from MPEP 2173.05(g): Provide clear support in the specification: Ensure that the specification clearly describes the claimed function and provides sufficient details about how the function is achieved. Use well-defined terms: Employ terminology that has a clear meaning to those skilled…

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What is a Markush claim?

A Markush claim is a type of patent claim that recites a list of alternatively useable members. The key characteristics of a Markush claim are: It lists specified alternatives within a claim The alternatives are selected from a closed group “consisting of” the listed members The members share a “single structural similarity” and a common…

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