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(Message started by: shannu on Oct 1st, 2007, 6:27am)

Title: process claim
Post by shannu on Oct 1st, 2007, 6:27am
there are five steps in a process and one of them is novel. how to claim the claims for better protection of the invention?

Regards

Title: Re: process claim
Post by patent_type on Oct 1st, 2007, 10:13am
Are any of the other steps *required* in order to practice the invention?  Can the one novel step be conducted/performed without the others?

Title: Re: process claim
Post by shannu_1 on Oct 2nd, 2007, 10:53pm
Yes. The other steps are also required to perform the invention.

Regards

Title: Re: process claim
Post by patent_type on Oct 3rd, 2007, 8:24am
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.



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