IP Essentials: Q&A Series

Q What kind of inventions can patent claims cover? A There are three types of patents with fundamentally different types of claims. 1. Utility patents : one may claim “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 2. Design patents : claims cover ornamental designs of an object, for example, a design of a fabric pattern or a user interface of a computing device. 3. Plant patents : new and distinct varieties of plants. Q At what point in the application process does one need to determine what is included in their claims? A A patent application may be filed with only a single claim. One may amend the claims of a patent application or add new claims throughout prosecution of the patent application. Any new claims added must be directed to the same general invention as the existing claims after a Patent Examiner first issues an opinion on the patentability of the claims. Prior to the Patent Examiner issuing their first opinion, with few restrictions, one is generally free to amend or replace the claims of an application. As discussed below, many jurisdictions limit the number of claims that can be included in a patent application without having to pay a surcharge. Q Can I add new claims to my patent after it issues? A Yes. After a patent issues one may request a reissue in which one may add or amend the claims of the issued patent. The added claims may, under certain circumstances and within two years of the issuance of the patent, be broader than the originally issued claims. There is a risk to this procedure as one must surrender the existing patent and the amended or new claims will be examined by the Patent Examiner and may possibly be objected to and/or rejected.

An issued patent must conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. The claims of an issued patent define the invention the patent owner has the right to exclude others from making, selling, using, or importing. PATENT CLAIMS

Q&A SERIES

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