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 51 
 on: 07-20-17 at 06:17 am 
Started by Patentstudent - Last post by bartmans
Quote
(c) In the EPO, can the claims for the component and the device be filed in a single app.  For example, EPO allows a dependent claim format that can be problematic in the US:
1.  A control board comprising:  ...
8.  A light assembly comprising the control board of claim 1 and ....
9.  A car comprising the light assembly of claim 8 and ....
Or would you need separate apps?

How broad could you go with this?  The light assembly can be used in a boat, train, house, practically anything.  Can you simply claim
10.  An apparatus comprising the light assembly of claim 8.

In the EPO you could go as broad as you wish but the element that links the claim should be the new and inventive feature/element (otherwise there would be lack of invention). In my field of technology you could claim:
1. A new DNA sequence
2. A protein derived from this new DNA sequence
3. A vector comprising the new DNA vector
4. A cell transformed with the DNA of claim 1 or the vector of claim 3.
5. A plant comprising a cell according to claim 4
6. A method for expressing the protein of claim 2 by transforming a cell with the vector of claim 3...

and so on and so on.
There is a Rule in the EPC that says that you may have only one independent claim in a claim category, but this does not apply to the situation where you have a plurality of interrelated products. Thus, claims 1-5 of my above example, though they would be regarded as independent claims in the same (product) category, would be acceptable.

[And fortunately, European examiners do not think that DSNA and the protein encoded by the DNA are two different inventions where restriction is required. ]

 52 
 on: 07-20-17 at 06:07 am 
Started by samar - Last post by bartmans
Quote
We generally frown upon incorporation by reference.  If it should be in the Application, include it in the Application instead of incorporating it by reference.

This is certainly true from a non_USA perspective: in many other countries incorporation by reference is not possible and you can only rely on the content of the application as filed if you need to amend your claims or if you need to interpret the (embodiments of the) specification.

 53 
 on: 07-20-17 at 05:58 am 
Started by yqonline - Last post by bartmans
Quote
Aró(R1)m,
Quote
each R1 is independently selected from the group consisting of F, Cl and Br, m is selected from 1,2 or 3

If this would be the text of the claim, I would interpret it that if m=3 then R1 would be identical for each individual occurence.

 54 
 on: 07-20-17 at 05:18 am 
Started by yqonline - Last post by yqonline
I would claim this as 'An aryl ring wherein 1, 2 or 3 atoms of the ring may be independently substituted with R1, wherein R1 is chosen from the group of Cl, Br, F, I, etc.

thanks for replying bartmans, but the questions still needs to be answered: if m=2 or 3, is  it necessary for each R1 to be exactly the same ?

 55 
 on: 07-20-17 at 04:43 am 
Started by samar - Last post by MYK
We generally frown upon incorporation by reference.  If it should be in the Application, include it in the Application instead of incorporating it by reference.  (Which is not to say that I always avoid the phrase just to cover my butt).
It's very useful when the scanner double-feeds two pages through itself at the same time, causing one page not to be scanned, and the resulting file that you send to the USPTO is thus missing that page.

Happened to one of the agents I know here.  Unfortunately for his firm, they didn't do incorporation-by-reference, so they had to re-file the application at their own expense. Fortunately, they still had time to do that and it only cost them a large-entity filing fee to make things right for the client.

 56 
 on: 07-20-17 at 04:25 am 
Started by yqonline - Last post by bartmans
I would claim this as 'An aryl ring wherein 1, 2 or 3 atoms of the ring may be independently substituted with R1, wherein R1 is chosen from the group of Cl, Br, F, I, etc.

 57 
 on: 07-20-17 at 02:26 am 
Started by Patentstudent - Last post by Lopp
Claim the "feature" by itself if it is novel alone.  This will ensure you have coverage for more potential devices beyond a specific device that includes the feature.  List a few possible alternate devices in the specification to make sure you are not limited to the one device.

Also claim the device, either in a dependent claim or on its own.  This can give you more royalties upon infringement.  I.e., if you only claim the feature and the feature is only a few dollars, you would only royalties on the feature regardless of the device that uses it.  Whereas if you claim the device and the infringing device is a hundred dollars you can get royalties on the whole device.

 58 
 on: 07-20-17 at 02:18 am 
Started by samar - Last post by Lopp
We generally frown upon incorporation by reference.  If it should be in the Application, include it in the Application instead of incorporating it by reference.  (Which is not to say that I always avoid the phrase just to cover my butt).

In your case, just eliminate the second part of the sentence so it reads:
"This application relates to U.S. Provisional Application No. 61/555,990, filed January 1, 2017."
And make sure everything you want from the provisional is included in the NP.

 59 
 on: 07-20-17 at 02:13 am 
Started by dbmax - Last post by Lopp
Also consider:

1. A widget comprising:
  at least two whatsits; and
  at least one gadget including at least one of the at least two whatsits.

2. The widget according to claim 1, wherein the at least one gadget comprises two of the at least two whatsits.

3. The widget according to claim 1, wherein the at least one gadget comprises:
 a first gadget comprising a first whatsit of the at least two whatsits; and
 a second gadget comprising a second whatsit of the at least two whatsits.

Even though "or" is now more acceptable that in the past, I am not a fan of it at least because an examiner only has to find one of the alternates to reject the claim.  Granted, in the above scenario, the examiner still only has to find one of the alternates.

Also, as you can see above, I am very anal about antecedent basis.

 60 
 on: 07-20-17 at 12:27 am 
Started by Weng Tianxiang - Last post by Weng Tianxiang
Hi smgsmc,

I will follow your step without any hesitation!

verbally I have no ability to say sentence a), because it is very difficult for me to put neither and nor properly and b) is the natural choice.

In claim drafting I selected a) because of my misunderstanding that sentence b) cannot be used.

Here is another puzzle for me:

either of A and B = both of A and B?

one of A and B = any of A and B?

Text in red is my favorite.

Thank you.

Weng

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