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shannu
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Posts: 13
process claim
« on: Oct 1st, 2007, 6:27am »
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there are five steps in a process and one of them is novel. how to claim the claims for better protection of the invention?
 
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patent_type
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Posts: 81
Re: process claim
« Reply #1 on: Oct 1st, 2007, 10:13am »
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Are any of the other steps *required* in order to practice the invention?  Can the one novel step be conducted/performed without the others?
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shannu_1
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Re: process claim
« Reply #2 on: Oct 2nd, 2007, 10:53pm »
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Yes. The other steps are also required to perform the invention.
 
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patent_type
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Posts: 81
Re: process claim
« Reply #3 on: Oct 3rd, 2007, 8:24am »
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Then claim:
 
A method comprising
 
first step,
second step,
third step,
fourth (novel) step--but don't say it is novel; and  
fifth step.
 
If all steps are required, then anybody who would infringe, must complete all five steps.
 
An alternate structure to consider is:
 
A method for [doing whatever], comprising
 
fourth step.
 
Generally, one step method claims are frowned upon, so pick some other step to throw in there that is the least limiting of the other steps.  Then you could capture infringing methods that don't necessarily include all five steps.  
 
Also consider a step-plus-function claim:
 
A method for [doing whatever], comprising
 
step for [whatever the function is of the novel step 4].
 
Again, single step step-plus-function claims are frowned upon, so pick another step or step-plus-function to put in the claims that is essentially non-limiting.
 
Don't try this step-plus-function claiming at home.  It is tricky and the CAFC doesn't have any good guidelines (have they ever decided a case that *is* step-plus-function?) for how these are interpreted, but it is an alternate claiming method.
 
You ask about "better protection."  Better protection likely is obtained by having a variety of different independent claim structures with a variety of dependent claim strucutures so that you have the broadest possible selection of coverage to assert against an infringing competitor.  Don't neglect dependent claims--these are very important, e.g., for claim differentiation purposes.
 
Just my dos centavos.
« Last Edit: Oct 3rd, 2007, 8:25am by patent_type » IP Logged
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