What is the focus of the utility requirement in patent law?
The focus of the utility requirement is on the claimed invention. As stated in the MPEP, The claimed invention is the focus of the assessment of whether an applicant has satisfied the utility requirement. This means that each claim must be evaluated individually for compliance with the utility requirement under 35 U.S.C. 101. Generally, a…
Read MoreHow 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 MoreCan an examiner convert a dependent claim to an independent claim in reexamination?
Yes, an examiner can convert a dependent claim to an independent claim in reexamination under certain circumstances. This typically occurs when a dependent claim is found allowable, but its parent claim is rejected. The MPEP provides an example of this situation: Example 2: All claims are rejected in the examiner’s answer. If the Board affirms…
Read MoreHow does the principle of claim differentiation affect claim interpretation?
The principle of claim differentiation is an important tool in claim interpretation. According to the MPEP: “The presence of a dependent claim that adds a particular limitation raises a presumption that the limitation in question is not found in the independent claim.” This principle is based on the assumption that each claim in a patent…
Read MoreCan dependent claims be rewritten as independent claims after filing an appeal brief?
Yes, rewriting dependent claims into independent form is one of the few types of amendments that may be admitted after filing an appeal brief. According to MPEP 1206: “Amendments filed on or after the date of filing a brief pursuant to 37 CFR 41.37 and within the time period set forth in 37 CFR 90.3…
Read MoreHow 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 MoreWhat are the thresholds for excess claims fees in patent applications?
The thresholds for excess claims fees in patent applications are set by the USPTO. 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). This means that: You can have up to…
Read MoreWhat 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 MoreWhat 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,…
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