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The cult of the claim | 282 comments | Create New Account
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The cult of the claim
Authored by: macliam on Friday, March 15 2013 @ 01:39 PM EDT

Following up on the subject of multiple inventions, and on the relationship between the invention and the claims.

According to the Manual of Patent Examining Procedure on the PTO Website:

If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 of this title it shall be entitled to the benefit of the filing date of the original application.

The above seems to suggest administrative discretion. Claiming two or more independent and distinct inventions on a single issued patent would not seem to invalidate the patent.

Many if not most patents contain sequences of related claims, where some claims may be process or method claims, others may be machine claims, and others may be manufacture of composition of matter claims. Deeming patents invalid if they contain claims from more than one statutory category would certainly cut a very broad swathe through patents in all fields of invention!

The paper Rescuing the Invention from the Cult of the Claim (Oskar Liivak, Seton Hall Law Review) is devoted to a discussion of the relationship between inventions, claims and embodiments. The following paragraph is to be found on page 8 of this interesting and informative paper:

In this view, claims are "the sole measure of the invention" and they form the "cornerstone" of the modern patent system. In this system, as argued by Judge Giles Rich, "the sole function of [a] patent claim[]" is "to determine the scope of the right to exclude." The claims in a patent application are the subject matter over which the applicant is requesting exclusive rights in exchange for their disclosure. The invention, the claims, and the patentís exclusive rights are conceptually seen as synonymous.

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