What is the significance of ‘clear reliance on the preamble’ in patent claims?
What is the significance of ‘clear reliance on the preamble’ in patent claims?
‘Clear reliance on the preamble’ is a crucial concept in patent claim interpretation. According to MPEP 2111.02, when there is clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art, the preamble may be considered a limitation of the claim.
The MPEP states: “Clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention.“
Significance of clear reliance:
- It can make the preamble a limiting part of the claim, even if it wouldn’t be limiting otherwise.
- It can narrow the scope of the claim, potentially affecting patentability and infringement analyses.
- It creates a prosecution history that future interpreters of the patent must consider.
For example, if an applicant argues during prosecution that their invention is novel because of a feature mentioned only in the preamble, they are clearly relying on the preamble to define the invention. This reliance would likely make the preamble limiting in future interpretations of the claim.
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