How should examiners handle dependent claims in a subject matter eligibility analysis?

Examiners should evaluate the eligibility of dependent claims separately, as they may be eligible even if the independent claim is ineligible. The MPEP states: “The evaluation of whether the claimed invention qualifies as patent-eligible subject matter should be made on a claim-by-claim basis, because claims do not automatically rise or fall with similar claims in…

Read More

How does the International Searching Authority assess unity of invention?

How does the International Searching Authority assess unity of invention? The International Searching Authority (ISA) assesses unity of invention by examining whether the claims in an international application are linked by a common inventive concept. According to MPEP 1850: “Unity of invention has to be considered in the first place only in relation to the…

Read More

What are excess claims fees in patent applications?

Excess claims fees are charges that applicants must pay for claims that exceed certain thresholds in a patent application. According to MPEP 714.10: Applicant is required to pay excess claims fees for each claim that is in excess of 3 in independent form or in excess of 20 (whether dependent or independent). These fees are…

Read More

What is the recommended order for elements in an independent claim?

The MPEP provides guidance on the recommended order for elements in an independent claim, particularly for improvements. According to 37 CFR 1.75(e), the recommended order is: A preamble comprising a general description of all conventional or known elements or steps of the claimed combination. A phrase such as “wherein the improvement comprises.” The elements, steps,…

Read More