A few words of experience on the pre-claims of the United States patent application practice.

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Author: Emma Han.

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Release time:2022-09-07

In the United States patent application (patent prosecution) In practice, the work of a foreign patent engineer or agent usually includes Chinese adjustment, Chinese-English translation,OAReply, telephone meeting with examiner, etc. Among them, the preamble of the claim (preamble) It is often overlooked because it does not receive enough attention to its meaning or importance.

The preamble is a claim.Introduction, usually followed by such“comprising”,“consisting essentially of”,“consisting of”The conjunctions (transition phrases), followed by the subject of the claim (body of the claim). The preamble of the claims may relate to the type of invention, structure, intended purpose, use, etc. In patent infringement litigation, the scope of claims is explained (claim construction) is a necessary step, and the preamble should be considered so that the invention can be viewed as a whole. The limiting effect of the preorder on the scope of protection of the claims should be analyzed on a case-by-case basis, that is to say, all or some of the contents of the preorder may be judged as having a limiting effect on the claims, or it may be judged as not having a limiting effect, and this may have different judgment results in patent examination and patent infringement litigation.

The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case; there is no litmus test defining when a preamble limits the scope of a claim. Catalina Mktg. Int'l v. Coolsavings.com, Inc., 289 F.3d 801, 808, 62 USPQ2d 1781, 1785 (Fed. Cir. 2002).

(SeeMPEP 2111.02)

The United States Federal Court has had a number of precedents in determining whether the preamble has a limiting effect on the scope of protection of the claims. For example, referenceShoes By Firebug LLC v. Stride Rite Children’s Group, LLCIn this case,FirebugThe company's two patent claims.1Respectively presented as follows:

Patent 1--An internally illuminated textile footwear comprises:

a footwear;

the footwear comprises a sole and an upper; an illumination system; …

Patent II--An internally illuminated textile footwear comprises:

a sole and an upper;

an illumination system; …

the illumination system being housed within the footwear; …

It can be seen that the claims of the two patents1The preamble is the same. Before the lawsuit, the U.S. patent trialandAppeal Board (PTAB) is the claim of two patents.1The preamble does not limit the scope of protection of the right. On patent one, the court andPTABThe conclusion is the same, judging the claim.1The preamble to the scope of protection.No.has a qualifying effect, and explains:“internally illuminated textile footwear”It is only the intended use, because the main part of the claim is independently defined.“a footwear”, The preamble does not provide the necessary structure or the necessary meaning. On Patent II, andPTABIn a different opinion, the court ruled that the claim1The preamble has a limiting effect on the scope of protection and explains that the preamble records.“internally illuminated textile footwear,The body of the claim defines“the illumination system being housed within the footwear", so the preamble is important for understanding“illumination system”The structural definition is necessary.

The above cases do not represent all the pre-order qualification judgment situations, but we can still make some summaries and references from them. Although there is no clear rule, it can be seen that the qualifying effect of the preorder depends on the interpretation of the patent as a whole. Whether the main part of the claim completely defines the invention will affect the limitation of the scope of the claim by the judgment preamble. The contents contained in the preamble are usually not single. Some necessary contents are used to clarify the invention that the inventor wants to protect, while some unnecessary contents are considered to be deleted or limited in the dependent claims, so as to avoid potential unnecessary restrictions on the scope of the broadest claims.

Do it inside and out.PatentApplication (this article refers especially to the U. S.PatentDuring the application), the preamble of the claims of the Chinese priority document presents many different situations. For some preorderSituation,in translationConvert to Englishin the processI can't help but struggle; orInOAthe stage of defense,OADefects related to the preamble may be pointed out in the, or whether the preamble has a limiting effect on the scope of protection of the claims may cause disagreement with the examiner, in which case amendments and amendments to this point are required./Or argue. In the light of some experience in practice, some common claims are listed here, and actionable suggestions are given within the scope of experience (the listed situations are not mutually exclusive, and there may be multiple situations in a preamble).

Scenario 1: The preamble of the claim is complex and difficult to read.

For example, the claims1: A feature fusion conversion method for the diagnosis and prediction of large equipment operating conditions,. When translating the preface, it is necessary to judge which preface includes.Ingredients, such “feature fusion transformation,Large equipment working condition,Diagnosis,ForecastAnd according to the application documents to clarify the logical correlation between the various components, so as to give the translation closest to the inventor's meaning. Also for examplePreparation method of fullerene-like carbon layer graphene-like boron nitride multilayer composite super-lubricating film,Building floor drain with floor drainage without descending boardThe translator should exclude the contents of the application documents.literal translationwords and words that leadSimple and crudeThe stack.

In short, the claims should be avoided as much as possible.Complex and not easy to readThe pre-order, and will be clear, specific restrictions (specific limitations) placed in the subject of the claim (of course, the reality is that some applicants are concerned that by removing some of the preface, the whole invention will becomemediocre). Can't help but think: the beginning of all things, the road to simple, derived to complex. In addition, such preorders often leadOAAt this time, if this part of the unclear preamble has no effect on the complete meaning of the claims, the unclear defect can be overcome by deleting this part of the content. Although it does not necessarily affect understanding in the Chinese context, it is not easy to find the corresponding accurate English of some Chinese expressions. Under the condition that the translation ability is not required to be perfect, the risk factors of introducing unclear and unnecessary restrictions can be excluded first.

Scenario 2: Inconsistency between the subject matter of the claim and the subject matter reflected in the preamble

For example, the claims1: a kindCar driving control method,. The subject of the claims defines a series of steps for collecting data, processing data, and feeding back data, but does not define an "executor" such as a controller, nor does it describe an element that is controlled to perform a corresponding function. The examiner puts forward the qualification of the lack of complete meaning of the right, that is, the subject of the claim does not reflect the pre-order reflected.Meaning of "Control. For another example, "a method for preparing titanium dioxide quantum dots", the main body of the claim not only defines the step of preparing the quantum dots, but also defines the "post-treatment" step of the prepared quantum dots, that is, the further reaction with other materials. The examiner may point out that there are unclear problems in this situation, or that the "post-processing" step does not limit the subject matter of the invention. After confirming the technical solution of the application, such defects can be avoided or overcome by modifying the preamble or the main body. For the consideration of not introducing new content (new matter), it is recommended to adjust the Chinese and translation in advance before applying.

Case 3: The subject of the claim does not explicitly refer to some of the contents contained in the preamble.

For example, the claims1: A control method for the differential cooperative active steering system of an electric wheel front axle independently driven automobile,. The body of the claim contains terms and expressions related to the car, such.Vehicle driving state,Drive Wheelbut notElectric wheel front axle independent drive cardirect reference. This part may be interpreted as intended purpose or use. Although not explicitly or directly cited, this part of the content may still be considered to have a limiting effect if it does limit the structure of the inventive subject matter based on the overall consideration of the invention. At this time, it is recommended to judge whether this part is the content that the inventor intends to protect according to the specific circumstances of the application documents and the communication with the applicant., orWhether it helps to establish the non-obviousness of the patent and thus determines what modifications to make. The following is a case mentioned in the US patent examination guide:

See also In re Stencel, 828 F.2d 751, 4 USPQ2d 1071 (Fed. Cir. 1987) (The claim at issue was directed to a driver for setting a joint of a threaded collar; however, the body of the claim did not directly include the structure of the collar as part of the claimed article. The examiner did not consider the preamble, which did set forth the structure of the collar, as limiting the claim. The court found that the collar structure could not be ignored. While the claim was not directly limited to the collar, the collar structure recited in the preamble did limit the structure of the driver. "[T]he framework - the teachings of the prior art - against which patentability is measured is not all drivers broadly, but drivers suitable for use in combination with this collar, for the claims are so limited." Id. at 1073, 828 F.2d at 754.).

(SeeMPEP 2111.02)

At the examination stage of a patent application, there has also been experience in arguing that the intended use in the preamble can serve as a basis for distinguishing between prior art,Thuscontribution to patentability, the combined argument isDiscovering source/cause of a problem is part of "as a whole" inquiryAs a result of the defense, the patent for the application was granted. Similarly, depending on the case itself, it may also be argued whether the preamble constitutes patentability.clear reliance.

Scenario 4: Necessary preamble content is considered to have no qualifying effect

For example, the claims1: A mucosal immune preparation for anti-infection and anti-tumor,. The preambles of the product claims includemucosaThe content of the immune preparation, according to the main part of the claim, defines the composition of the preparation, but does not record and.mucosaThe associated description. But the invention that the applicant wants to protect is aAdministration via mucosal routeThis is an important distinguishing feature between the present invention and the prior art, which has a great impact on the scope of protection of the invention. However, the United States Patent and Trademark Office (USPTO) is considered preorder at the time of reviewmucosashould be construed as intended use only, and the subject of the claim does not qualify in relation thereto, thereforemucosaIt is considered that there is no limit to the scope of patent protection. At this time, it is necessary to clearly define and in the main part of the claim.mucosaRelevant necessary content, but be careful to use appropriate writing language to avoid being considered important.Product ThemeIt does not have a limiting effect.

In practice, based on Chinese priority documents, usually through the Paris Convention or.PCTwayUSPTOTo file a patent application.among them,based on aPCTInternational Application Documents,AlsoYou can choose based on the United States.35 U.S.C. 111 (a)terms to file a continuation application or partial continuation application (I. e., a bypass application) in the U. When preparing a new application in the United States, you can make appropriate modifications and adjustments to the writing problems shown in the specification and claims as needed, of course,Modifications and adjustments to the preamble of the claims are included. In this way, it is hoped that some pre-optimization work can be done for the grant of patent rights at the application stage, and even for potential invalidity and infringement litigation in the future.

 

Author: Han Huili (EmmaHe)  Wayne International intellectual property partner, head of the international department, has a wealth of international patent application practice and management work, including Chinese and English translation, Chinese and English writing,OAReply, European and American Patent Objection, FTOWait for work.