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Author Topic: Preambule  (Read 457 times)

Patentstudent

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Preambule
« on: 11-11-10 at 11:22 am »

Suppose I have a patent no. xyz for a machine. The patent has one independent claim and 4 dependent claims. Now I have invented an add-on unit for this machine. In order not to read on prior art I want to use the narrow previous invention as covered by the whole set of 1 independent and 4 dependent claims of my existing patent xyz as the preambule for the independent claim of a patent application for the new invention. Do I have to write out the complete preambule or can I refer to 'An apparatus in accordance with the claims 1 to 5 of patent xyz, comprising ............my new invention..... 
I.e.: Is it allowed to refer to the claims of an existing patent in the preambule of a new patent application?

Thank you for your advice.
« Last Edit: 11-12-10 at 01:09 am by Patentstudent »
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patentsusa

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Re: Preambule
« Reply #1 on: 11-12-10 at 12:23 pm »

I would not bother repeating the prior art in the preamble.  The preamble should be short.  Instead, the claim should specify what combination of elements is novel.
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Deepak Malhotra, JD, BSEE, Patent Attorney
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khazzah

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Re: Preambule
« Reply #2 on: 11-12-10 at 02:04 pm »

can I refer to 'An apparatus in accordance with the claims 1 to 5 of patent xyz, comprising ............my new invention..... 
I.e.: Is it allowed to refer to the claims of an existing patent in the preambule of a new patent application?

I've never seen anyone try this, but my gut feel is no. MPEP 2173.05(s) says "where possible, claims are to be complete in themselves". Now, that section is specifically about claims incorporating by reference to a figure or table. But if a claim is prohibited to incorporate by reference something in it's own spec, surely incorporating something in another patent should also be prohibited.

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Information provided in this post is not legal advice and does not create any attorney-client relationship.

patentsusa

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Re: Preambule
« Reply #3 on: 11-12-10 at 04:53 pm »

can I refer to 'An apparatus in accordance with the claims 1 to 5 of patent xyz, comprising ............my new invention..... 
I.e.: Is it allowed to refer to the claims of an existing patent in the preambule of a new patent application?

I've never seen anyone try this, but my gut feel is no. MPEP 2173.05(s) says "where possible, claims are to be complete in themselves". Now, that section is specifically about claims incorporating by reference to a figure or table. But if a claim is prohibited to incorporate by reference something in it's own spec, surely incorporating something in another patent should also be prohibited.



I agree. 

I didn't fully answer the question.  I would not try incorporating by reference but would start with a new claim that focuses on the combination of elements that is new.  If you need to use some prior art elements, put them in the body of the claim, not the preamble.  There is no requirement to point out in the claim what pieces are new and what are old.  You only need to recite a novel combination.
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Deepak Malhotra, JD, BSEE, Patent Attorney
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Patentstudent

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Re: Preambule
« Reply #4 on: 11-13-10 at 03:49 am »

Thank you both for your helpful repies.

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