“Intended use” refers to language in a patent claim that arguably describes a purpose or function of the thing being claimed. It is, therefore, not given any patentable weight by a patent examiner who has deemed a claim limitation to constitute intended use. By regarding certain claim language as intended use, the examiner can generally disregard the claimed features and thus apply a prior art reference lacking those features – i.e., a statement of intended use fails to distinguish over prior art.

The situation happens more frequently in apparatus claims that recite structural features, especially using terms such as “adapted to” configured to” or “for . . .”  The general principle is that apparatus claims should cover what a device is, and not what it does. But, you sometimes can’t disregard what a device “does” if what it does makes the device what it is.

One potential solution is to claim the feature more positively by replacing “adapted” or “configured” with language that gets to the heart of the matter. For example, replace a “widget adapted to be connected to a device” to “widget connected to a device.” Another possible solution is to use method claims with verbs that actively describe the action, motion, connection, relationship, etc.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
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Vic Lin

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