What Are MPEP Intended Uses?

MPEP stands for the Manual of Patent Examining Procedure, which is a manual published by the United States Patent and Trademark Office (USPTO) to help patent attorneys, agents, and patent examiners better understand patent law. The concept of "intended use" is the description of an invention by what it does (its function) rather than what it is (its structure), an important distinction in patent law.

Why Are MPEP Intended Uses Important?

MPEP explains all of the laws and regulations that need to be followed when examining U.S. patent applications. It explains the application along with a large variety of situations so that each of the people using it can interpret how they should proceed with the patent application, especially as it concerns function versus structure.

MPEP Intended Use (Functional) Limitations

There is nothing wrong with defining some part of an invention in functional terms in your patent application. Functional language does not necessarily render a claim invalid. However, you should carefully evaluate your claim to avoid an "intended use" finding by an Examiner. The claim should describe a state of configuration or structure.

A functional limitation needs to be evaluated just like any other limitation of a claim. A functional limitation is usually used in association with an element, ingredient, or step of a process to define a particular capability or purpose that is served by the recited element, ingredient or step. It helps to make the information clear to the Examiner who may not have previous experience with an invention such as yours.

Be cautious about describing both a system and a method for using that system, as such a claim could be considered indefinite. Claims about an apparatus must show a difference from prior art in terms of structure rather than function.

When a claim limitation uses functional language, the examiner's decision about whether the limitation is definite enough will be dependent on the context.

Examiners should consider the following factors when they examine claims that contain functional language:

  • Whether the scope of the subject matter covered by the claim is clearly defined.
  • Whether the functional language explained well-defined boundaries of the invention or only stated a problem solved or a result gained.
  • Whether someone of ordinary skill in the same field as the inventor would know from the claim language what steps are explained by the claim.

Asserting the Patentable Weight Of a Claim

During the examination of a patent application, an Examiner tries to find the novelty and non-obviousness of an invention by identifying teachings or suggestions of each feature of that claim.

Some claim features are ignored during this analysis. These features are said not to have any "patentable weight."

One of the areas of a claim that is often disputed is a claim's preamble. Examiners often decline to think about the novelty and non-obviousness of a claim's preamble because preambles usually only provide a context or a purpose for the invention.

A claim preamble is said to be as important as the claim, yet it is only entitled to patentable weight when it is used to give life, meaning, or vitality to a claim.

In order to assert the patentable weight of your claim, pay attention to each part of your application. Put as much importance into the preamble as you do into the transitional phrase and the body. MPEP 2111.02 says that "preambles that limit structure must be given patentable weight," and that preambles that describe an intended use which "results in a structural difference . . . between the claimed invention and the cited art" must be also.

Sometimes Examiners reject the patentable weight of words following the phrase "configured to" because they allegedly only describe intended use. Be cautious about use of this language, and make sure that your claim describes the actual state of configuration.

Experimental Use and Reduction to Practice

A patent can be invalidated if the invention has previously been patented, described, or sold more than one year before the filing of the patent application. This means that the "experimental use" of an invention (the determination of being used for its intended purpose) must end (be "reduced to practice") one year or less before the application is filed. This includes any offer for sale of the invention. An inventor must therefore be cautious about disclosing or selling an invention for more than a year prior to applying for a patent.

MPEP 1502

MPEP 1502 explains design patents and their connection to utility patents.

A design that is embodied in or applied to an article of manufacture is protected by a design patent. The design protected by a design patent is inseparable from the article that it is applied to. The design can't exist alone.

Both design and utility patents can be obtained on a new invention if the uniqueness resides both in the utility and ornamental appearance.

Utility Patent

  • The term is 20 years from the U.S. filing date
  • You must pay maintenance fees for utility patents
  • Utility patents can have more than one claim
  • Restrictions on a utility patent are at the discretion of the Examiner
  • You are allowed one year to claim foreign priority
  • You can claim the benefit of a provisional application
  • You cannot obtain a Continued Prosecution Application (CPA)
  • All utility patent applications are published unless you request otherwise

Design Patent

  • The term is 14 years from the date the patent is granted
  • There are no maintenance fees for design patents
  • Only one claim is allowed
  • Restrictions are mandatory in design patents
  • You have six months to claim foreign priority
  • You cannot claim benefit to a provisional patent application
  • You cannot have a Request for Continued Examination (RCE)
  • You can obtain a Continued Prosecution Application
  • Design patents are not subject to application publication

MPEP 1503

MPEP 1503 looks at the elements of a design patent application.

For the specification, you need:

  • Preamble or Title: It should include the name of the applicant, the title of the design, and a brief description of the nature and intended use of the article.
  • Description: A brief description of the design as shown in the drawing.
  • Claim: Usually, design patent claims are written as "the ornamental design for the article which embodies the design or to which it is applied as shown."
  • Drawing: The application must include either a drawing or a photograph of the claimed design. It cannot contain both.

MPEP 1504

MPEP 1504 explains the examination of design patents. It states that in order to successfully receive a design patent you must show:

  • Novelty: The design needs to be original.
  • Non-obviousness: The design needs to be non-obvious to someone in your field.

You cannot patent a stand-alone picture, any offensive subject matter, or an article that will be hidden from view.

MPEP 1504.04

At Design Day 2013, USPTO Design Practice Specialist Joel Sincavage delivered a presentation that stated that the USPTO would no longer be using the outdated standard of MPEP 1504.04 to decide whether converting solid lines to broken lines was new matter.

The USPTO will now use the new standard of MPEP 1504.04 to determine whether converting solid lines to broken lines is new matter.

The USPTO asserts that "the scope of a design claim is defined by what is shown in full lines in the application drawings," and that any conversion between broken lines and solid lines would be rejected as new matter unless you could support it in your application.

MPEP 1504.05

If more than one distinct invention resides in a design patent, a restriction will be designated by the Examiner. Design inventions are independent of one another just as a football and scissors or grass and a cell phone are distinct from one another.

To overcome a restriction requirement, the invention must have overall appearances with basically the same design characteristics as the other design on the application. The differences between the embodiments need to be enough that one can easily distinguish one design from the other.

MPEP 1504.06

This section determines if a double patenting rejection is correct. The following must be true:

  • The same design is being claimed twice. This is known as non-statutory double patenting.
  • The designs are directed to patently indistinct variations of the same inventive concept. This is called statutory double patenting.

For non-statutory double patenting, a rejection is appropriate if:

  • The difference in scope is small and indistinct between the claims that are being compared.
  • Patent protection for the design would be extended in the later filed application.
  • No terminal disclaimer was filed.

If there is a non-statutory rejection, you might be able to overcome it. You cannot overcome a statutory double patenting rejection.

MPEP 1504.10

  • The right of priority provided for design patents is six months.
  • A design patent cannot claim the benefit of another application.
  • If there is no statement in the design application when it is first filed that incorporates the disclosure of an earlier filed application, the disclosure cannot be amended to conform to that of the earlier filed application.

MPEP 1505

MPEP 1505 defines the allowance and term of design patents. The term of a design patent is 14 years from the date of issuance, not from the date of filing.

MPEP 1509

The patent term of a design patent cannot be extended. If you would like to have a design patent reissued, a reissue application must include a copy of all of the drawing views.

MPEP 1510

As with rules for utility patents in MPEP 2200, the same re-examination rules apply to design patents.

MPEP 1511

The same protest rules discussed in MPEP 1900 also apply for design patents.

MPEP 1512

This rule protects design patents and states that if there is an ornamental design, it may also be protected by copyrights and trademarks.

MPEP 2106

This MPEP rule states that you must "determine whether the claimed invention falls within an enumerated statutory category." Rule 2106 fails to give any guidance on how to decide a mixed-type claim, so it often used in combination with other rules.

For example, an invention can claim to be a combination of devices that are directed to a machine. One or more steps of the invention's function may then be performed by the machine. In this case, there are mixed attributes which can be confusing when trying to determine the category that the patent should belong in, but because of rule 2106, it does not affect the analysis performed by the USPTO examiner. This would simply be considered an apparatus claim which includes functional limitations.

MPEP 2114

If you are claiming some kind of computerized system in a patent application and it relates to software or business methods, make sure you look at it in terms of how the USPTO will examine it. Your system will likely be looked at as an apparatus and will need to have hardware and tangible elements built into the claims that support it.

Section 2114 of the MPEP should be consulted when you are looking into any type of system claims. This section offers important information about how to claim an apparatus and why a novel use of a prior device, such as a server, is not sufficient for an apparatus claim.

The section explains that:

  • Apparatus claims need to be distinguishable from prior art.
  • The way that you operate the device doesn't differentiate the apparatus from the prior art.
  • Any prior art device can perform all of the functions of the apparatus claim and still not anticipate the claim if there is a structural difference.

MPEP 2143.01

Section 2143.01 of the MPEP tells you how to overcome a an alleged case of obviousness that has been set out by the Examiner.

MPEP 2143.01 states that a proposed modification of a prior art invention cannot make that invention "unsatisfactory for its intended purpose."

This is a good way to address an obviousness rejection because Examiners may pick out claim elements in the prior art without thinking about how those elements might work together for an intended purpose.

MPEP 2143.01 also cautions Examiners that if a proposed modification or combination of the prior art changes the principle of operation of the prior art, then the teachings of the references are not enough to render the claims obvious.

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