What is a Markush group in a patent claim?
A Markush group is a way of claiming a list of alternatively useable members in a patent claim. According to MPEP 2173.05(h): “A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group ‘consisting of’ (rather than ‘comprising’ or ‘including’) the alternative members.” Markush groups are typically used to…
Read MoreCan a Markush claim include both compounds and processes?
Can a Markush claim include both compounds and processes? Yes, a Markush claim can include both compounds and processes, as long as they share a common use or property. The MPEP 2117 provides guidance on this: “A Markush claim may encompass a plurality of independent and distinct inventions where two or more members are so…
Read MoreWhen is a preamble considered limiting in patent claims?
A preamble is considered limiting when it gives life, meaning, and vitality to the claim or if it recites essential structure or steps. According to MPEP 2111.02: “If the claim preamble, when read in the context of the entire claim, recites limitations of the claim, or, if the claim preamble is ‘necessary to give life,…
Read MoreWhat is the legal basis for the requirement of definite claim language in patents?
The legal basis for the requirement of definite claim language in patents is found in 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. The MPEP states: “35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph requires that a patent application specification shall conclude with one or more claims particularly pointing out and…
Read MoreWhat is “lack of antecedent basis” in patent claims?
“Lack of antecedent basis” refers to a situation in patent claims where a term is used without proper introduction or reference to a previously mentioned element. As stated in MPEP 2173.05(e): “The lack of clarity could arise where a claim refers to ‘said lever’ or ‘the lever,’ where the claim contains no earlier recitation or…
Read MoreWhat are the key considerations for “lists of alternatives” in patent claims?
When dealing with lists of alternatives in patent claims, there are several key considerations outlined in MPEP 2173.05(h): Proper Markush format: The MPEP states, “A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group ‘consisting of’ (rather than ‘comprising’ or ‘including’) the alternative members.” Indefiniteness: The MPEP warns,…
Read MoreHow does Pre-AIA 35 U.S.C. 102(f) affect joint inventorship situations?
How does Pre-AIA 35 U.S.C. 102(f) affect joint inventorship situations? Pre-AIA 35 U.S.C. 102(f) has significant implications for joint inventorship situations. The MPEP states: “If the invention was derived from another, 35 U.S.C. 102(f) precludes issuance of a patent. […] Where there are joint inventors, each inventor need not contribute to every claim of the…
Read MoreDo joint inventors need to contribute to every claim in a patent?
No, joint inventors do not need to contribute to every claim in a patent. The MPEP clearly states: “A joint inventor or coinventor need not make a contribution to every claim of a patent; a contribution to one claim is enough.” Furthermore, the MPEP explains that “there is no requirement that all the inventors be…
Read MoreWhat are the potential issues with functional limitations in patent claims?
While functional limitations are allowed in patent claims, they can potentially raise issues of indefiniteness. The MPEP notes that “the use of functional language in a claim may fail ‘to provide a clear-cut indication of the scope of the subject matter embraced by the claim’ and thus be indefinite.” Some potential issues include: Claims that…
Read MoreHow is the phrase “an effective amount” interpreted in patent claims?
The interpretation of the phrase “an effective amount” in patent claims can vary depending on the context and disclosure. The MPEP provides the following guidance: The phrase may or may not be indefinite, depending on whether one skilled in the art could determine specific values based on the disclosure. It may be considered definite if…
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