Title: PATENT PRACTICE AND PROCEDURE
1PATENT PRACTICE AND PROCEDURE
- FRANKLIN PIERCE
- LAW CENTER
- IPSE 99
- Kevin J. Carroll
- Robert Deleault
- Michael J. Persson
- William Ritchie
2 Kevins Office Hours E-mail
- Office Hours
- Following class 1030-11
- E-mail
- kcarroll_at_fplc.edu or kevin_at_carroll.mv.com
3Teaching Assistant
4Patent Practice Overview
- Draft claims Classes 1- 4
- Prepare and file application Class 5
- Receive and respond to Office Action Classes
6-9 - Allowance and post-issuance Class 10
- Understanding and Interacting with Patent
Examiners Class 11
5Course Requirements
- Class
- Lecture 8-925
- Small Section 930-1030
- Assignments
- Claim Drafting
- Reading
- Statutes (35 U.S.C.) and Rules (37 CFR)
- Cases
- Manual of Patent Examining Procedure (MPEP)
- Grade
- Final Claim Drafting - 50
- Final Exam - 50
6Why Is There A Patent System?
- What is the purpose of a patent?
7THE CONSTITUTIONAL PROVISION
- The Congress shall have power To promote the
progress of science and useful arts, by securing
for limited times to authors and inventors the
exclusive right to their respective writings and
discoveries. Art. 1, Sec. 8, Cl. 8. (Emphasis
Added)
8(No Transcript)
9Cheeseburger
Bun
Cheese
Beef Patty
Bun
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11Improved Cheeseburger
Bun
Special Sauce
Beef Patty
Tomato
Bun
Cheese
Beef Patty
Lettuce
Bun
12How is the scope of the exclusive right defined?
13Basic Functions and Parts of a Patent
USEFUL ARTS
PUBLIC
DISCLOSURE
EXCLUSIVE RIGHT
INVENTOR
CLAIMS
PATENT
14Ex parte Fressola
- The Function of Patent Claims
15What is the claimed invention?
- A system for the display of stereographic
three-dimensional images of celestial objects as
disclosed in the specification and drawings
herein. - Commonly referred to as an Omnibus Claim
16What are the grounds for the rejection?
- 35 U.S.C. 112, 2nd paragraph
- The specification shall conclude with one or more
claims particularly pointing out and distinctly
claiming the subject matter which the applicant
regards as his invention.
17A Shift in Method of Claiming
- CENTRAL DEFINITION
- PERIPHERAL DEFINITION
18Claim Functions
- DEFINITIONAL FUNCTION
- NOTICE FUNCTION
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20Statutory Types of Claims35 U.S.C. 101
- Machine (or apparatus) claims
- Manufacture (or article) claims
- Process (or method) claims
- Method of making
- Method of using
- Composition claims
21Claim Structure and Format
- 35 U.S.C. 112
- 37 CFR 1.75
- MPEP 608.01(m)
22Independent or Dependent Form35 U.S.C. 112, 3
- Independent Claim
- Does not refer to another claim
- Stands alone
- Dependent Claim - 35 U.S.C. 112, 3-5, 37 CFR
1.75(c) - Refers to previous claim(s)
- Incorporates subject matter of previous claims
referred to
23- Claims section begins with
- The invention claimed is
- What is claim is
- I (or we) claim
- Single Sentence - begins with a capital letter
and ends with a period - Periods may not be used elsewhere in a claim
except for abbreviations. See Fressola v.
Manbeck, 36 USPQ2d 1211 (D.D.C. 1995) - Each element recited in claim should be indented
37 CFR 1.75(i) - Multiple claims are consecutively numbered - 37
CFR 1.75(f), 1.126
24Basic Parts of Independent Claim
- Preamble
- names the invention
- Transition
- Introduces the elements and limitations that make
up the invention - Body
- Recites the elements and limitations
- Positively reciting elements v. inferential
claiming - Provide antecedent basis
- Provide interrelationships between elements
25The invention claimed is
Preamble
- 1. A cheeseburger for consumption comprising
- first and second buns
- a patty positioned between said first and
second buns and - a slice of cheese melted on said patty.
Transition
Body
26Further Defining an Element
Refers to previous claim
Consecutive Numbering
Consistent Preamble
- 2. The cheeseburger of claim 1 wherein said patty
is made of ground beef. - Claim 2 is equivalent to an independent claim
- A cheeseburger for consumption comprising
- first and second buns
- a beef patty positioned between said first and
second buns and - a slice of cheese melted on said patty.
27Adding an Element
- 3. The cheeseburger of claim 1 further including
a piece of lettuce disposed between said patty
and said first bun. - Claim 3 is equivalent to an independent claim
- A cheeseburger for consumption comprising
- first and second buns
- a beef patty positioned between said first and
second buns - a slice of cheese melted on said patty and
- a piece of lettuce disposed between said patty
and said first bun.
28Method Claims
- 1. A method of making a cheeseburger, said
method comprising - forming at least one patty
- cooking said patty
- melting a piece of cheese on said patty
- placing said patty with said cheese between
first and second buns. - 2. The method of claim 1 further including
placing a piece of lettuce between said patty and
one of said buns. - 3. The method of claim 1 wherein said patty is
made of ground beef.
29Multiple Dependent Claims
- Any dependent claim which refers to more than one
other claim shall refer to such other claims in
the alternative only - 35 U.S.C. 112, 5 37 CFR
1.75(c) - A multiple dependent claim cannot depend from
another multiple dependent claim - 35 U.S.C. 112,
5 37 CFR 1.75(c) - Advantage saves space
- Disadvantage expensive, confusing
30Acceptable Multiple Dependent Claim Wording
- A gadget according to claims 3 or 4 . . .
- A gadget as in any one of the preceding claims .
. . - A gadget as in either claim 1 or claim 2 . . .
- A gadget as in one of claims 1-7
31Unacceptable Multiple Dependent Claim Language
- A gadget according to claim 3 and 4 . . .
- A gadget according to claims 1-3 . . .
- A gadget as in the preceding claims . . .
- A gadget in any of the following claims . . .
- A gadget as in claim 1 or 4 made by the process
of claims 5, 6, 7 or 8 . . .
32Improper Multiple Dependency
- 5. A gadget as in claims 3 or 4 . . .
- 6. A gadget as in claims 4 or 5 . . .