How does the USPTO view claims that refer to figures or tables?
The United States Patent and Trademark Office (USPTO) generally discourages claims that refer to figures or tables. According to MPEP 2173.05(s): “Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table ‘is permitted only in exceptional circumstances where there is no practical way to define the invention…
Read MoreCan trademarks or trade names be used in patent claims?
While trademarks or trade names can appear in patent claims, their use to identify or describe a particular material or product generally renders the claim indefinite under 35 U.S.C. 112(b). According to MPEP 2173.05(u): “If the trademark or trade name is used in a claim as a limitation to identify or describe a particular material…
Read MoreWhat is a single means claim and why is it problematic?
A single means claim is a claim that recites a means-plus-function limitation as the only limitation of the claim. These claims are problematic because they cover every conceivable means for achieving the stated result. The MPEP explains: “The long-recognized problem with a single means claim is that it covers every conceivable means for achieving the…
Read MoreWhat are the risks of incorporating figures or tables into patent claims?
Incorporating figures or tables into patent claims can pose several risks: Clarity Issues: Claims may become unclear or ambiguous if they rely too heavily on external references. Scope Limitations: The claim scope might be unintentionally limited by the specific details in the figure or table. Rejection Risk: Claims may be rejected for not complying with…
Read MoreHow can I rewrite a “use” claim to make it acceptable in a U.S. patent application?
To rewrite a “use” claim and make it acceptable in a U.S. patent application, you should: Convert the “use” claim into a method claim by specifying active steps. Ensure the claim clearly outlines the process or method of using the product or composition. Include specific, definite actions that describe how the product or composition is…
Read MoreWhen is it acceptable to reference figures or tables in patent claims?
Referencing figures or tables in patent claims is generally discouraged, as claims should be complete in themselves. However, the MPEP 2173.05(s) states that it is permitted “only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a…
Read MoreWhat are examples of permissible negative limitations in patent claims?
What are examples of permissible negative limitations in patent claims? Permissible negative limitations in patent claims can include: Excluding an element or step that is not part of the invention Describing what the invention is not, to clarify its scope Distinguishing the invention from prior art The MPEP 2173.05(i) states: “If alternative elements are positively…
Read MoreWhat are negative limitations in patent claims?
Negative limitations in patent claims are statements that describe what the invention is not, rather than what it is. According to MPEP 2173.05(i), “The current view of the courts is that there is nothing inherently ambiguous or uncertain about a negative limitation. So long as the boundaries of the patent protection sought are set forth…
Read MoreAre negative limitations allowed in patent claims?
Yes, negative limitations are allowed in patent claims. The Manual of Patent Examining Procedure (MPEP) 2173.05(i) states: “The current view of the courts is that there is nothing inherently ambiguous or uncertain about a negative limitation. So long as the boundaries of the patent protection sought are set forth definitely, albeit negatively, the claim complies…
Read MoreHow does the MPEP address “or the like” phrases in patent claims?
The MPEP addresses the use of “or the like” phrases in patent claims in MPEP 2173.05(h). The section cautions against using such phrases as they can lead to indefiniteness: “Use of the phrase “or the like” or “or similar meaning” renders a claim indefinite if the metes and bounds of the claim are not clear.”…
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