How can I convert a “use” claim to a proper method claim?

To convert a “use” claim to a proper method claim, follow these steps:

1. Identify the underlying process or method implied by the “use” claim.
2. Draft a clear set of steps that describe how to perform the process.
3. Use active verbs to start each step (e.g., “applying,” “mixing,” “heating”).
4. Ensure all necessary elements and conditions are included.

For example, instead of claiming “The use of compound X for treating disease Y,” rewrite it as:

“A method for treating disease Y, comprising:
administering an effective amount of compound X to a patient in need thereof.”

The MPEP 2173.05(q) advises: “Although a claim should be interpreted in light of the specification disclosure, it is generally considered improper to read limitations contained in the specification into the claims.” Therefore, ensure that all essential elements are explicitly stated in the claim itself.

To learn more:

• use claims
• method claims
• claim drafting
• patent application
• claim conversion