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52-427: Patent publications are each assigned at least one classification term indicating the subject to which the invention relates and may also be assigned further classification and indexing terms to give further details of the contents. The CPC system has over 250,000 categories. Each classification term consists of a symbol such as "A01B33/00" (which represents "tilling implements with rotary driven tools"). The first letter

104-435: A claim could read: In most jurisdictions, a patent is a right to exclude others from making, using, importing, selling or offering for sale the subject matter defined by the claims when the claim is for a thing (apparatus, composition of matter, system, etc.). If a claim is for a method, the right to exclude would be to exclude any single party from carrying out all the steps of the claim. In order to exclude someone from using

156-447: A dependent claim does refer to an earlier claim, assumes all of the limitations of that claim and then adds restrictions (e.g. "The handle of claim 2, wherein it is hinged.") Each dependent claim is, by law, narrower than the independent claim upon which it depends. Although this results in coverage narrower than provided by the independent claim upon which the second claim depends, it is additional coverage, and there are many advantages to

208-407: A limited amount of time. Some patent applications are easy for an examiner to assess, but others require considerably more time. This has given rise to controversy: On April 13, 2007, a "Coalition of Patent Examiner Representatives" expressed concern that in many patent offices , the pressures on examiners to produce and methods of allocating work have reduced the capacity of examiners to provide

260-571: A method of doing business does not qualify as a process under § 101." However, the SCOTUS refused to accept this position so far, and some business method patent claims are possible in the US, although the case law in the area is still evolving (see Software patents under United States patent law ). In addition to aforementioned four statutory categories of claims, there are also many other "flavours" of claims, which are used in different circumstances. Sometimes

312-512: A particular claim form is required by law if a patent is to be granted for a particular invention, such as for a second medical use of a known substance where the " Swiss-type " claim might be required. Another reason to use a particular claim might be to catch a particular class of infringer. The claims often use precise language. Certain words commonly used in claims have specific legal meanings determined by one or more court decisions. These meanings may be different from common usage. For instance,

364-405: A patented invention, the patent owner, or patentee, needs to demonstrate in a court proceeding that what the other person is using falls within the scope of a claim of the patent; therefore, it is more valuable to obtain claims that include the minimal set of limitations that differentiate an invention over what came before ( i.e., the so-called prior art ). But the fewer the limitations in a claim,

416-835: A specific technology. A part of the CPC Definition related to the scheme A01B is shown in the second figure. In the above example "A01B33/00" Both the EPO and USPTO have been using the CPC since 1 January 2013. It replaced the ECLA system and will replace by 2015 the United States Patent Classification system (USPC) as the official patent classification scheme of both the EPO and the USPTO. The patent offices of several EPO member states also use CPC, for example those of Austria, Finland, Greece,

468-424: Is a matter of convention, governed by rules, which can be found in dictionaries and grammars. What the author would have been understood to mean by using those words is not simply a matter of rules. It is highly sensitive to the context of and background to the particular utterance. It depends not only upon the words the author has chosen but also upon the identity of the audience he is taken to have been addressing and

520-669: Is incorrect); etc. While still acceptable, this claim style is seldom used in the U.S. because it is counted for filing fee purposes according to the number of claims that it references. Thus, if the claim depends from three former claims, it is counted for fee purposes as three dependent claims. In light of the "excess claim" fees currently imposed by the USPTO , this tactic can quickly become expensive. Multiple dependent claims are, however, very commonly used in other jurisdictions, including Europe. Claims can also be classified in categories, i.e. in terms of what they claim . A claim can refer to In

572-493: Is the "section symbol" consisting of a letter from "A" ("Human Necessities") to "H" ("Electricity") or "Y" for emerging cross-sectional technologies. This is followed by a two-digit number to give a "class symbol" ("A01" represents "Agriculture; forestry; animal husbandry; trapping; fishing"). The final letter makes up the "subclass" (A01B represents "Soil working in agriculture or forestry, parts, details, or accessories of agricultural machines or implements, in general"). The subclass

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624-481: Is then followed by a 1- to 4-digit "group" number, an oblique stroke and a number of at least two digits representing a "main group" ("00") or "subgroup". A patent examiner assigns a classification to the patent application or other document at the most detailed level which is applicable to its contents. This classification closely follows the International Patent Classification. An example of

676-515: The European Patent Convention (EPC), a claim must define the matter for which the protection is sought in terms of technical features. The convention itself pertains to a procedure to secure a European patent. These technical features can be either structural (e.g. a nail , a rivet ) or functional (e.g. fastening means). Regarding the structure of a claim, under the EPC, what is called

728-558: The European Patent Office (EPO) carry out examination and opposition procedures for patent applications originating anywhere in the world and seeking protection in any of the member states of the European Patent Organisation . The process involves a search for existing documentation in the technical area of the application (prior art) and communication with the applicant in order to bring the application in line with

780-591: The European Patent Office (EPO). The "process" claims have been the most controversial, particularly in cases, when processes involve transformations of non-statutory (and/or non-physical) entities, such as data into data, or electronic money exchange. Three US Supreme Court justices ( Sonia Sotomayor , Ruth Bader Ginsburg , and Stephen Breyer ) in their concurring opinion in Alice Corp. v. CLS Bank International suggested, that all business methods should be excluded from patentability: "[A]ny claim that merely describes

832-594: The Federal Circuit . The decisions of the latter can be appealed to the U.S. Supreme Court , but only at the court's discretion via a petition for a writ of certiorari . Responsibilities for a patent examiner at the USPTO include: Examiners are hired at the GS-5, GS-7, GS-9 or GS-11 grade levels. Patent examiners in the U.S. have responsibilities that are commensurate with their GS level. Promotions from GS-7 to GS-14 are non-competitive. At GS-13 they are eligible to start

884-580: The United States Patent and Trademark Office (USPTO) examine patent applications for claims of new inventions. Examiners make determinations of patentability based on policies and guidance from this agency, in compliance with federal laws ( Title 35 of the United States Code ), rules, judicial precedents, and guidance from agency administrators. These determinations are appealable as a matter of right to United States district courts and then to

936-569: The doctrine of equivalents to expand claim scope unpredictably, until the US Supreme Court reversed that trend in the Warner-Jenkinson case in 1997. In most modern patent laws, patent applications must have at least one claim, which are critical defining elements of the patent and the primary subject of examination. In some patent laws however, a date of filing may be obtained for an application which does not contain any claim. Under

988-475: The invention (s) claimed in each of them should be granted a patent or whether the application should instead be refused. One of the most important tasks of a patent examiner is to review the disclosure in the application and to compare it to the prior art . This involves reading and understanding a patent application, searching the prior art (including prior patent applications and patents, scientific literature databases , etc.) to determine what contribution

1040-408: The "Full Signatory Authority program", an examiner is advanced from GS-13 to GS-14 and is referred to as a "primary examiner". Supervisors at the USPTO are GS-15 employees who are necessarily primary examiners now called Supervisory Patent Examiners (formerly Supervisory Primary Examiners) (SPE, colloquially called "spee"). They apply for positions competitively and receive management training inside

1092-452: The "Full Signatory Authority" (FSA) program. When a patent examiner has passed the FSA program, they are given "Full Signatory Authority" and can sign all of their own "office actions" (e.g. allowances, rejections) without review and approval by a supervisor. Such examiners are also able to review and sign actions of "junior examiners" (patent examiners without signatory authority). Upon completion of

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1144-447: The "Partial Signatory Authority" program, a testing phase to see if an examiner can apply patent concepts (e.g. obviousness and novelty ) and laws ( 35 USC ). Upon passing the "Partial Signatory Program", a patent examiner is given signatory authority to sign all of their own non-final rejections and other non-final communications to applicants. After a waiting period a patent examiner may take part in an additional testing phase known as

1196-502: The "preamble" is different from the meaning the "preamble" has under U.S. patent law. In an independent claim in Europe, the preamble is everything which precedes the expression "characterized in that" or "characterized by" in a claim written according to the so-called "two-part form", and therefore everything which is regarded as known in combination within one prior art document, namely the closest prior art document. For this reason, in Europe,

1248-417: The CPC classification scheme in the area of agriculture is shown in the figure. The text in curly brackets {..} refers to text provided by the CPC classification scheme. The rest of the text refers to text originating from the International Patent Classification. The CPC scheme is accompanied by a set of CPC Definitions, which are documents which explain how to use the CPC scheme for classifying and searching

1300-478: The CPC in all technical areas. The classification data is expected to be shared with the EPO. On 5 June 2013, the USPTO and the Korean Intellectual Property Office (KIPO) announced the launch of a pilot project in which KIPO will classify some of its patent documents using the CPC system. The project has been said to mark a major step towards KIPO classifying all of its patent collection using

1352-427: The CPC, and begin to publish patent applications (A) and granted patent (B) and utility model documents in 2017. The data will be shared with the EPO. Patent examiner A patent examiner (or, historically, a patent clerk ) is an employee , usually a civil servant with a scientific or engineering background, working at a patent office . Patent examiners review patent applications to determine whether

1404-641: The CPC. On 26 September 2013, the EPO and the Russian Federal Service for Intellectual Property ( Rospatent ) agreed that as of January 2016, Rospatent will classify patent documents currently being processed into the CPC, and begin to classify previously published patent documents in 2017. The data will be shared with the EPO. On 16 July 2015, the EPO and the Mexican Institute of Industrial Property (IMPI) agreed that as of January 2017, IMPI will classify patent documents currently being processed into

1456-533: The SPE's boss (a "technology center" director paid at SES-1), can be asked to resign by the president, at his pleasure . According to the USPTO, an examiner is measured entirely by his own performance, without regard to the performance of others. The two most important performance statistics are referred to as "production" (the number of applications processed in the allotted time) and "docket management" (compliance with goals for responding to applicant communications within

1508-534: The Third Patent Act (1836) and finally became mandatory in the Fourth Patent Act (1870). However, even among patent legal systems in which the claims are used as the reference to decide the scope of protection conferred by a patent, the way the claims are used may vary substantially. Traditionally, two types of claiming systems exist: No patent system today is a purely either central or peripheral , but

1560-439: The USPTO employs people with training in biotechnology, business methods, geology, mathematics, and many other disciplines. Experienced examiners have an option of working primarily from home through a hoteling program implemented in 2006 by the USPTO. A 2023 study looked into how political preferences of USPTO examiners affect their propensity to allow patent claims. They found no statistically significant difference except for

1612-678: The United Kingdom, Spain ( OEPM ), and Sweden ( PRV ) and some other offices are negotiating a Memorandum of Understanding (MoU) like Chile (INAPI), Canada (CIPO), Australia and Israel. On 4 June 2013, the Chinese State Intellectual Property Office (SIPO) agreed with the EPO that as of January 2014, SIPO would classify newly published patent applications in certain technical fields into the CPC. First SIPO staff will be trained by EPO. Starting in 2016, SIPO will strive to classify its new patent applications according to

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1664-577: The United States, these categories are referred to as the four statutory categories of invention, and they are: processes , machines , manufactures , and compositions of matter . Notably, printed matter (including data stored on a computer drive ) and signals (such as transient electromagnetic waves, (see in Re Nujten ). ) do not belong to any of the four statutory categories and are not patentable in US. However, such signals are considered patentable by

1716-571: The allotted time). Legal , technical and automation training is provided to examiners at the USPTO. To work as an examiner at the USPTO, a person must be a U.S. citizen and pass a background investigation. Examiners also must have a college degree in engineering or science. The Technology Centers at the USPTO are divided into chemistry, chemical engineering, electrical engineering, and mechanical engineering, so college degrees in these areas are typically preferred. In recent years, however, new technologies have been important areas of innovation, so

1768-445: The author of any other document. Construction is objective in the sense that it is concerned with what a reasonable person to whom the utterance was addressed would have understood the author to be using the words to mean. Notice, however, that it is not, as is sometimes said, "the meaning of the words the author used", but rather what the notional addressee would have understood the author to mean by using those words. The meaning of words

1820-463: The case when the most politically active examiners (i.e. those who donate to political campaigns) examine software patents (i.e. in the Art Units where the examiners have the most discretion). In this case Republican-leaning examiners are more likely to issue patents than Democratically-leaning examiners. Claim (patent) In a patent or patent application , the claims define in technical terms

1872-400: The class change. The rules of claim drafting also permit "multiple dependent claims" that reference more than one other claim, e.g.: "3. Method of claim 1 or 2, further comprising..." The rules for this are quite specific: specific claims must be referenced ("the method of any of these other claims" is incorrect); the claims must be referenced in the alternative ("the method of claims 1 and 2"

1924-520: The extent, i.e. the scope, of the protection conferred by a patent, or the protection sought in a patent application. In other words, the purpose of the claims is to define which subject-matter is protected by the patent (or sought to be protected by the patent application). This is termed as the "notice function" of a patent claim—to warn others of what they must not do if they are to avoid infringement liability. The claims are of paramount importance in both prosecution and litigation . For instance,

1976-655: The invention makes over the prior art, and issuing office actions to explain to the applicants and their representatives (i.e., patent attorneys or agents ) any objections that may exist against the grant of a patent. In other words, an examiner reviews a patent application substantively to determine whether it complies with the legal requirements for granting of a patent. A claimed invention must meet patentability requirements of novelty , inventive step or non-obviousness , industrial application (or utility) and sufficiency of disclosure . Examiners are expected to be efficient in their work and to determine patentability within

2028-432: The invention. These various embodiments may or may not each be claimed with specificity. They might serve as multiple examples of a more general "genus" that is claimed. In some cases the examiner might declare that what the applicant presented as variations of one invention are actually separate inventions that need to be examined individually. An independent ("stand alone") claim does not refer to an earlier claim, whereas

2080-409: The knowledge and assumptions which one attributes to that audience. In U.S. patent practice at least, inventors may "act as their own lexicographer " in a patent application. That means that an inventor may give a common word or phrase a meaning that is very specific and different from the normal definition of said word or phrase. Thus a claim must be interpreted in light of the definitions provided in

2132-428: The legal requirements of the European Patent Convention . For every patent application, a division formed by three examiners must decide whether the application is granted or not, and in which scope. EPO examiners are organized in a branched structured by their technical field of expertise and examine patent applications in three official languages, English , French , and German . They are recruited among nationals of

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2184-466: The member states and work in one of the EPO offices in Munich, The Hague and Berlin. Candidates for examiner positions must meet certain minimum requirements: Some examiners have work experience in industry, but such experience is not required. EPO examiners are also reportedly required to speak three languages fluently. Most EPO examiners are represented by SUEPO, a trade union . Patent examiners at

2236-408: The more likely it is that the claim will cover, or "read on", what came before and be rejected during examination or found to be invalid at a later time for obviousness or lack of novelty . Patents have not always contained claims. In many European countries, patents did not contain claims until the 1970s. Before that time, it was often difficult to decide whether a product infringed a patent, since

2288-529: The office, patent applicants and their attorneys). They are the lowest rung of the USPTO's management chain of command, and the only part of management that is paid as part of the general schedule (GS). Higher paid managers are part of the Senior Executive Service and are technically political appointees. For example, a primary examiner (GS-14) and her SPE (GS-15) are part of the general schedule and cannot be fired as part of an administration change, but

2340-435: The office. They are responsible for an Art Unit of patent examiners, typically 8-15 examiners who examine cases in the same area of technology (e.g. GPS devices and aircraft are handled by different art units). Responsibilities include training new examiners, reviewing and signing office actions of junior examiners and acting as an advocate of the examiners they are responsible for to a variety of parties (e.g. other managers in

2392-412: The patent applicant in submitting and obtaining a full suite of dependent claims: Under the European Patent Convention , when a claim in one particular category (see below), e.g. a process claim, depends on a claim from a different category, e.g. a product claim, it is not considered to be a dependent claim but an independent claim. Under U.S. law, this is still counted as a dependent claim, regardless of

2444-446: The preamble of a claim is sometimes also called "pre-characterizing portion". A claim may include the following parts: There are two basic types of claims: The expressions " in one embodiment ", " in a preferred embodiment ", " in a particular embodiment ", " in an advantageous embodiment " or the like often appear in the description of patent applications and are used to introduce a particular implementation or method of carrying out

2496-426: The quality of examination the peoples of the world deserve [and that] the combined pressures of higher productivity demands, increasingly complex patent applications and an ever-expanding body of relevant patent and non-patent literature have reached such a level that, unless serious measures are taken, meaningful protection of intellectual property throughout the world may, itself, become history. Patent examiners at

2548-467: The sole basis to know the extent of protection was the description, in view of the prior art. Interestingly, American inventors started using claims in their patent applications decades before the authorities (either judicial or legislative) started to require claims in patents. The first person who used in a US patent application the term "claim" in its current meaning is believed to be Isaiah Jennings in 1807. Claims were recommended in published patents in

2600-415: The specification of a patent. The specification of a patent is a written description of how to make and use the invention (see also: sufficiency of disclosure ). Traditionally the USPTO used for claims interpretation during patent examination a "broadest reasonable interpretation consistent with specification" standard, while the US courts in suits for patent infringement , during a Markman hearing ,

2652-592: The system used in Germany and most of the other countries of continental Europe is considered more central than the system currently used in the United Kingdom , the United States , and especially Japan , which are more peripheral. In recent years, Japan's system has become more peripheral, while the system used in the United States was becoming more central because of the increasing resort in US patent litigation to

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2704-400: The word "comprises", when used in the claims of a United States patent, means "consists at least of". By contrast, the word "consists" means "consists only of", which will lead to a very different scope of protection. Construction, whether of a patent or any other document, is of course not directly concerned with what the author meant to say. There is no window into the mind of the patentee or

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