What is a new use patent or intended use claim language?

Can you patent a new use of an old product?

Yes, it is possible to patent a new use of an old product. That’s the short answer. The long answer is more complicated.

While it’s technically possible to patent a new way of using an existing product, the claims must specify a novel and nonobvious method of using such an old product. The biggest hurdle in attempting to patent a new use will most likely be the nonobvious rejections by the examiner. An applicant for a new use patent must be prepared to show and argue why their method is unique.

What are intended use claims?

“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.

Basically, an examiner can argue that certain language in a claim relates to intended use. By taking this position, the examiner can then disregard the claimed features and thus apply a prior art reference lacking those features. You may see an Office Action stating that “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. Sometimes, however, you can’t ignore what a device “does” if its operation or purpose will help define what the device is.

What are solutions to intended use claim rejections?

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.

Are you considering a new use patent application or fighting an intended use claim rejection?

Reach out to US patent attorney Vic Lin by email or call (949) 223-9623 to see how we can help you file or review a new use patent. If you’re dealing with a difficult examiner in your utility patent application, request a flat rate estimate for conducting an Examiner Interview and responding to your Office Action.

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Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
Shiwei Liu
Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
Mats Johansson
Mats Johansson
2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
Hanson Chang
Hanson Chang
2023-02-16
Glad to write a review for Innovation Capital Law Group. We previously worked with a big law firm (2200 employees) on our patents, and decided to shift over to Innovation Capital. It was a great decision, this team got our patents done faster, more effectively, at a lower cost, and with broader claims. Win all around
Genevieve Springer
Genevieve Springer
2022-09-09
Clear, discernible tools and strategies couched within a business conceived from a genuine interest in doing right by founders.
InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
Meg Crowley
Meg Crowley
2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
Andy Dong
Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

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