How does the MPEP address the omission of a limitation in a patent claim?
How does the MPEP address the omission of a limitation in a patent claim?
The MPEP addresses the omission of a limitation in a patent claim in section 2163.05. According to this section, “[a]n amendment to a claim that omits an element that applicant describes as an essential or critical feature of the invention originally disclosed does not comply with the written description requirement.”
The MPEP provides guidance on this issue:
- The omission of an element may raise an issue of new matter, especially if the original disclosure establishes the importance of that element.
- However, if the element is not described as essential in the original disclosure, its omission may be acceptable.
- The key is whether the amended claim is supported by the original disclosure.
For example, in In re Robertson, the court held that a limitation could be omitted from a claim even though it was described as “critical” in the specification. The court reasoned that the specification did not require the limitation to be included in all of the claims.
When considering the omission of a limitation, patent examiners and applicants should carefully review the original disclosure to determine whether the omission introduces new matter or changes the scope of the invention in a way that is not supported by the original disclosure.
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