What is the difference between functional limitations and means-plus-function claim language?
While both functional limitations and means-plus-function claim language describe elements by their function, there are important differences: Means-plus-function claims are a specific form of functional claiming authorized by 35 U.S.C. 112(f). Means-plus-function claims are interpreted more narrowly, limited to the structure disclosed in the specification and its equivalents. General functional limitations can be broader and…
Read MoreAre functional limitations allowed in patent claims?
Yes, functional limitations are generally allowed in patent claims. The MPEP states, “There is nothing inherently wrong with defining some part of an invention in functional terms. Functional language does not, in and of itself, render a claim improper.” In fact, functional language can be used to limit claims without using the means-plus-function format. However,…
Read MoreWhat is a functional limitation in a patent claim?
A functional limitation in a patent claim is a term that recites a feature “by what it does rather than by what it is”. As stated in the MPEP, “A claim term is functional when it recites a feature ‘by what it does rather than by what it is’ (e.g., as evidenced by its specific…
Read MoreWhat is the significance of functional language in patent claims?
Functional language in patent claims describes an element in terms of what it does rather than what it is. The MPEP provides guidance on interpreting such language: “Functional claim language may be given patentable weight if it is determined that the prior art structure does not inherently possess the functionally defined limitations of the claim.”…
Read MoreWhat is the impact of fraud, inequitable conduct, or violation of duty of disclosure on patent claims?
According to MPEP 2016, a finding of fraud, inequitable conduct, or violation of duty of disclosure affects all claims in a patent application or patent, rendering them unpatentable or invalid. The MPEP states: “A finding of ‘fraud,’ ‘inequitable conduct,’ or violation of duty of disclosure with respect to any claim in an application or patent,…
Read MoreWhat is Form Paragraph 23.04 and when is it used in patent examination?
Form Paragraph 23.04 is a standardized text used by patent examiners to require an applicant to add a claim to provoke an interference. According to MPEP 2304.04(b), this form paragraph is used when the examiner determines that a claim from another application or patent needs to be added to the current application for the purpose…
Read MoreWhat is the purpose of the first Office action in a patent reexamination?
The first Office action in a patent reexamination serves to establish the examiner’s position and should be comprehensive. According to MPEP 2262, “The examiner’s first Office action will be a statement of the examiner’s position and should be so complete that the second Office action can properly be made a final action.” This means the…
Read MoreHow does a final federal court decision affect a supplemental examination proceeding?
The effect of a final federal court decision on a supplemental examination proceeding depends on the nature of the decision. According to MPEP 2816: Upholding validity: “A final federal court decision, i.e., after all appeals, which upholds the validity of one or more of the patent claims also has no binding effect on the supplemental…
Read MoreWhat is the impact of federal court decisions on reexamination proceedings?
Federal court decisions can significantly impact reexamination proceedings. According to MPEP § 2259: Claims held invalid: “Claims finally held invalid by a federal court, after all appeals, will be withdrawn from consideration and not reexamined during a reexamination proceeding.” Claims held not invalid: “Claims finally held as ‘not invalid’ by a federal court, after all…
Read MoreHow does failing to present claims for interference affect a patent application?
Failing to present claims for interference can have serious consequences for a patent application. According to MPEP 2304.04(c): “Failure to present claims and/or take necessary steps for interference purposes after notification that interfering subject matter is claimed constitutes a disclaimer of the subject matter. This amounts to a concession that, as a matter of law,…
Read More