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ARTICLE · 15 DECEMBER 2015

Patent Claim Preambles Post-Alice

Womble Bond Dickinson
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What is in the preamble of a patent claim? And, can the contents of the preamble influence the claim examination process?

United StatesIntellectual Property
Christopher M. Hall
Christopher M. Hall
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What is in the preamble of a patent claim?  And, can the contents of the preamble influence the claim examination process?  Ever since the US Supreme Court ruling in Alice Corporation Pty. Ltd. v. CLS Bank International, et al., patent claims have faced an elevated possibility of being rejected under 35 USC §101 as being directed to an abstract idea, or being not significantly more than an instruction to implement an abstract idea on a generic computer.  The preamble introduces the limitations of the patent claim, and in so doing, sets the stage for interpretation of the claim and examination of the claim.  Often, the preamble acts as a sort of title for the claim, and suggests a focus or primary subject matter for the claim.

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