Can an applicant amend claims to overcome a finding of equivalence?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

Yes, applicants have the opportunity to amend claims to overcome a finding of equivalence in means-plus-function claims. MPEP 2184 provides two main approaches:

1. Limiting the function: “An applicant may choose to amend the claim by further limiting the function so that there is no longer identity of function with that taught by the prior art element.”
2. Replacing the means-plus-function limitation: The applicant may “choose to replace the claimed means- (or step-) plus-function limitation with specific structure, material or acts that are not described in the prior art.”

These amendments allow applicants to differentiate their invention from the prior art and potentially overcome rejections based on equivalence.