The Intellectual Property Law Server

Welcome, Guest. Please Login or Register.
Nov 20th, 2019, 7:56pm

Forums Forums Help Help Search Search Members Members Calendar Calendar Login Login Register Register
   Intellectual Property Forums
  
  
European Patents
(Moderators: Forum Admin, JimIvey, JSonnabend)
   euro patent claims.
« No topic | Next topic »
Pages: 1  Reply Reply Send Topic Send Topic Print Print
   Author  Topic: euro patent claims.  (Read 1523 times)
ron
Newbie
*




   
Email

Posts: 11
euro patent claims.
« on: Mar 21st, 2007, 1:25pm »
Quote Quote Modify Modify

I am reading the claims of a European patent grant. The claim ends with: “characterised in that: ...” the clause includes further "limitations".
 
Is what follows “characterised in that” construed as being a limitation?
 
Is this equivalent to the “whereby...” in US claims.
 
 
Thanks,  
 
Ron.
IP Logged
Isaac
Senior Member
****




   


Posts: 3472
Re: euro patent claims.
« Reply #1 on: Mar 22nd, 2007, 4:44am »
Quote Quote Modify Modify

I believe the material provided after "characterized by" is supposed to be the invention while the portion prior to that is supposed to be old.    In other words, the claim is in Jepson form.   Jepson claims are typically avoided in US practice.
IP Logged

Isaac
EPOexaminer
Newbie
*




   


Posts: 1
Re: euro patent claims.
« Reply #2 on: Jul 17th, 2007, 3:48pm »
Quote Quote Modify Modify

Hi Ron,
 
both the characterizing portion and the preamble contain real limitations of the scope. The characterizing portion should contain those features that are new and inventive, while the preamble (the part before "characterized in that") shows the combintation of features known from the prior art.
 
The main reason the EPO wants the two-part form is to have the inventive contribution more readily visible for others reading the claims.
 
Don't worry too much about phrasing the claims in the two-part form initially. If all else is well with the claimed subject-matter, it is often not be objected to, and otherwise the examiner will insert the "characterized in that" part himself.
 
However, as far as I know (and people can correct me) US examiners treat the features in the preamble as tacitly assumed to be known or obvious. This is in any case not so in Europe, where the claims can also be amended to move features from the preamble to the characterizing portion if the prior art so allows.
IP Logged
Isaac
Senior Member
****




   


Posts: 3472
Re: euro patent claims.
« Reply #3 on: Jul 18th, 2007, 8:28am »
Quote Quote Modify Modify

on Jul 17th, 2007, 3:48pm, EPOexaminer wrote:
However, as far as I know (and people can correct me) US examiners treat the features in the preamble as tacitly assumed to be known or obvious.

 
USPTO Examiners would make that assumption if a claim form using "characterizing" is used.   In fact a USPTO Examiner would take the position that the applicant is admitting that the preamble features were known in the prior art.    In theory such "admissions" can be overcome, but in actual practice overcoming an admission can be extremely difficult.
 
« Last Edit: Jul 18th, 2007, 8:28am by Isaac » IP Logged

Isaac
medicherla.ravi
Newbie
*




   


Posts: 1
Re: euro patent claims.
« Reply #4 on: Jan 4th, 2008, 6:06am »
Quote Quote Modify Modify

in the light of the above can i say the granted claim's precharcterized   claim is giving the freedom to operate... Smiley
IP Logged
Pages: 1  Reply Reply Send Topic Send Topic Print Print

« No topic | Next topic »
Powered by YaBB 1 Gold - SP 1.3.2!
Forum software copyright © 2000-2004 Yet another Bulletin Board