Patent Claims
What are the requirements of 35 USC §112 Second Paragraph?
Patent Claims. And you thought we were through with 35 USC §112. We have only covered the first paragraph. There are five more.
Second paragraph - the Requirements
This can get horribly tedious so I will try to convert it to English as well as possible. First the legalese:
- The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Short and sweet.
There are actually two requirements here:
- (A) the claims must set forth the subject matter that applicants regard as their invention; and
(B) the claims must particularly point out and distinctly define the metes and bounds of the subject matter that will be protected by the patent grant.
While one important purpose of examining a patent application is to determine if it is novel and non-obvious (35 USC 102 and 35 USC 103), a second purpose is to determine if the patent claims are clear and understandable. By whom? The person having ordinary skill in the art - the famous and imaginary PHOSITA.
You need to consider the two requirements separately. The first requirement (A) appears to be terribly subjective because how can an examiner know what the applicant regards as the invention. In fact it is subjective. And in the absence of any other evidence the examiner has to assume that the invention is what the applicant put in the claims. The rub comes when there is evidence outside of the patent application that indicates contrary evidence. This may be from briefs or amendments filed by the applicant. So be careful what you put into writing to the examiner.
Metes and Bounds
The phrase "particularly pointing out and distinctly claiming" have led to the notion of pointing out the metes and bounds of the invention defined in part (B). I have always like the "metes and bounds" language. It is basically surveying language - you define the metes and bounds of a piece of property in order to claim what you exactly own:
And the concept is the same - the public needs to be clearly informed of the boundaries of what constitutes infringement of the patent. In addition there must be a clear understanding of what the applicant regards as the invention so that the requirements of 35 USC §102, 35 USC §103, and 35 USC §112 first paragraph are met.
The Applicant as Lexicographer
Another fundamental aspect of the second paragraph that you should understand is that applicants are their own lexicographers. They can define in the patent claims what they regard as their invention essentially in whatever terms they choose so long as any special meaning assigned to a term is clearly defined in the specification. For ordinary usage of terms you do not have to define them in the specification but in cases where you use terms contrary to their ordinary meaning you should be very concise in defining the meaning of the terms as you intend.
There are innumerable subtle issues involved in recognizing what is particularly pointed out and distinctly claimed in second paragraph issues. For those who want to study these they can be found in MPEP 2171.
As I mentioned in the beginning you do not have to be an expert in these but it is important to develop a mindset that you want your claims to be clear and precise.
We will move on in future articles into the remaining paragraphs of 35 USC §112 - all related to claim requirements.
Links
Patent Claims - 35 USC 112 Second Paragraph
Return to the Top of This Page
The Business of Patents Home Page
Return to Home Page
Patent Law
Return to the Patent Law Page.
Mike Ervin
Mike Ervin - Cost Effective Small Business Patent Protection.
Contact Me
If you have any questions on on this site - please feel free to contact me.