Source: FAQ (MPEP-Based)BlueIron Update: 2024-09-30
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.
According to MPEP 2171, there are two separate requirements set forth in 35 U.S.C. 112(b) and pre-AIA 35 U.S.C. 112, second paragraph:
- Subjective Requirement: The claims must set forth the subject matter that the inventor or a joint inventor regards as the invention.
- Objective Requirement: The claims must particularly point out and distinctly define the metes and bounds of the subject matter to be protected by the patent grant.
The MPEP states: Two separate requirements are set forth in 35 U.S.C. 112(b) and pre-AIA 35 U.S.C. 112, second paragraph, namely that: (A) the claims must set forth the subject matter that the inventor or a joint inventor regards as the invention; and (B) the claims must particularly point out and distinctly define the metes and bounds of the subject matter to be protected by the patent grant.
Topics:
MPEP 2100 – Patentability
MPEP 2171 – Two Separate Requirements For Claims Under 35 U.S.C. 112 (B) Or Pre – Aia 35 U.S.C. 112
Patent Law
Patent Procedure
Second Paragraph