What are the potential consequences of including “use” claims in a U.S. patent application?

Including “use” claims in a U.S. patent application can have several potential consequences:

• Rejection under 35 U.S.C. 112(b): “Use” claims are often considered indefinite and may be rejected.
• Delays in prosecution: Addressing rejections can prolong the patent examination process.
• Increased costs: Revising claims and responding to office actions can lead to additional attorney fees.
• Narrower patent protection: If not properly revised, “use” claims may provide limited or no protection.

The MPEP 2173.05(q) states: “Use” claims that do not purport to claim a process, machine, manufacture, or composition of matter fail to comply with 35 U.S.C. 101. In re Moreton, 288 F.2d 708, 709, 129 USPQ 227, 228 (CCPA 1961).”

To avoid these issues, it’s crucial to draft claims as proper method or product claims that comply with U.S. patent law requirements.

To learn more:

• use claims
• patent application consequences
• 35 U.S.C. 112(b)
• patent prosecution
• claim rejection