Legal Definitions - undue-breadth rejection

An undue-breadth rejection occurs when an application for intellectual property, most commonly a patent, is denied because the scope of what the applicant is trying to claim as their invention is too broad.

This means the claims made in the application cover more than what the applicant has actually invented, described, or enabled, or they encompass existing prior art. Essentially, the applicant is attempting to claim a monopoly over a wider range of concepts or products than their actual contribution warrants, leading the examiner to reject the application on the grounds that the claims are "unduly broad."

Here are some examples illustrating an undue-breadth rejection:

• Example 1: Software Innovation

  A software engineer develops a unique algorithm that significantly reduces the processing time for large datasets in cloud computing. In their patent application, they claim "any method for improving data processing efficiency in a cloud environment." A patent examiner might issue an undue-breadth rejection because this claim is far too expansive. It would cover countless other existing and future methods for improving data processing, not just the engineer's specific algorithm, which is the actual invention.

• Example 2: Medical Device

  An inventor creates a novel surgical instrument designed with a specific ergonomic grip and a unique tip for minimally invasive procedures. However, their patent application includes a claim for "any surgical tool with an improved grip." This claim would likely face an undue-breadth rejection. The specific ergonomic grip and unique tip are the actual innovations, but claiming "any surgical tool with an improved grip" attempts to cover a vast array of existing and future tools that might have different types of improved grips, extending beyond the scope of the inventor's actual contribution.

• Example 3: Chemical Compound

  A pharmaceutical company discovers a new chemical compound that shows promise in treating a particular type of autoimmune disease. When drafting their patent application, they include a claim for "any compound effective in treating autoimmune diseases." This claim would almost certainly receive an undue-breadth rejection. While their specific compound is novel, the claim attempts to cover all possible compounds that could treat autoimmune diseases, including those already known or yet to be discovered, which is far broader than their specific invention.