How does MPEP 2172 address the concept of “regarded as invention” in patent claims?

Question

Accepted Answer

Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 10 Rules 5 Related FAQs 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. MPEP 2172 addresses the concept of “regarded as invention” in patent claims by emphasizing the importance of the claims reflecting what the inventor considers to be their invention. The section states: “The subject matter which the inventor or a joint inventor regards as the invention is set forth in the claims of the application.” This means that: The claims must accurately represent what the inventor believes to be their invention Examiners should focus on the claimed subject matter when determining patentability The specification should support and be consistent with the claimed invention It’s important to note that while the claims define the invention, they must still meet all statutory requirements for patentability. The MPEP 2172 guidance helps ensure that the claims properly reflect the inventor’s intended invention while adhering to patent law requirements. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Claims Must Reflect Inventor’s View of Invention MPEP 2172 Required Claims Must Reflect Inventor's View of Invention MPEP 2172 Claims Must Correspond to Inventor’s View of Invention MPEP 2172 Permitted Claims Must Correspond to Inventor’s Invention MPEP 2172 Specification Content Is Not Used as Evidence of Claim Scope Mismatch MPEP 2172 Inventor Can Modify View of Invention During Pendency MPEP 2172 Continuation Application Can Receive Parent Filing Date MPEP 2172 Requirement for Claims to Correspond with Specification MPEP 2172 Inventor or Assignee Must Sign Reissue Declaration MPEP 1410.01 Permitted Inventor's Oath for Reissue Application MPEP 1414.01 Required Other Related FAQs 5 FAQs Collapse What role does 35 U.S.C. 112(b) play in determining the s...