05/04/20

Preambles: Form over Substance


Preambles: Form over Substance

Roy Y. Yi

Patent claim preambles perplex and confound even the most seasoned patent practitioners. Ranging from inventors to Federal judges, understanding the purpose and meaning of a patent claim preamble is elusive; primarily in determining whether the preamble limits the scope of the patent claim. The Federal Circuit developed a framework to facilitate in determining a limiting preamble in Catalina Marketing International v. Coolsavings.com. The framework, however, does not recite any clear rules or tests for practitioners to performmaking preamble determination subjective in nature. This framework may leave a patent drafter feeling insecure that the preamble he writes will not be understood properly. Likewise, the USPTO also has difficulty in assessing the limiting or non-limiting nature of a claim preamble. Examiners use a non-legal authority manual during examination which is called the Manual of Patent Examining Procedure (MPEP). With the MPEP, the USPTO tries to describe and reduce legal principles into manageable and digestible pieces of legal information for the examiner. But like the Catalina framework, there are no clear rules or tests for the examiner to use; therefore, each examiner must determine the nature of preamble subjectively. 

Because of the subjective nature in determining the limiting or nonlimiting nature of a preamble, I assert that preambles should have a status of per se non-limiting during patent prosecution. Drafting costs would not substantially increase as well as improve the clarity of the patent application. Patent drafters will know that every limitation within the body of the claim which guarantees that a Federal court or an USPTO examiner will give the proper patentable weight to the limitation leaving no question as to the scope of the claim; ultimately, increasing the likeliness of a valid and enforceable patent.

101 J. Pat. & Trademark Off. Soc’y 313 (2019) 

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