I'm planning to do a quick study of "no no words" in patent applications and how their use has changed over time. Examples include "objects of the invention," the "present invention," "must," "prior art," "limitation," ...
Are there other phrases or words that I should include in the study?
Denis, did you ever conclude this study?
Dennis, What is the status of the “No No Words: Words and Terms to Avoid in a Patent Application” study?
Well, Max,as an “Actual Inventor” all I can say is thank God the USA Patent System is not like the EPO, and I pray it never gets that way.
thanks, max.
Leo, EPO-PSA manages to filter out the rubbish, even without recourse to hindsight, by tying the objective problem to just two docs, both written before the date of the claim, namely the app as filed and the prior art starting point D1.
Look at the claim, extract from it the list of technical features it contains. Examine the disclosure of D1. How many of those features are in there. If all, no novelty. If not all, you’re novel.
For obviousness, start again with D1 and establish what technical feature(s) of the claim characterize the claim relative to the disclosure content of D1. Now ask yourself, “What technical effect, alluded to in the app as filed, does one get (and which you don’t get from D1) when one plugs into D1 the extra characterizing feature?
To be fair to the public, you can’t let Applicant win on the basis of a technical effect plucked from the air during prosecution, of which there is no hint in the app as filed. That would be giving a monopoly from date X on the basis of an invention made only after date X.(So, include your “effects” in the app as filed).
To be fair to Applicant, one must allow him/her, confronted with hitherto unknown D1, the chance to bring forward further evidence of non-obviousness relative to D1.
Drafters take note. Today, you might well need to pray in aid of patentability an obscure statement of performance enhancement in your app as filed. Tomorrow, you might even need it inside the USA. After all, EPO-PSA is only closing the gap between what inventors think they have contributed to their technical field and what the law recognises as worthy of reward. It brings back respect for patent law.
“Obvious” or “obviously.”
Interestingly, I find that now I hesitate before even SPEAKING those two words.
“optimized” Many inventors in the biotech field will routinely use this word in their publications/posters/abstracts.
Avoid use to prevent routine optimization i.e. obviousness rejections.
You know, Actual Inventor, you’re absolutely correct. Anyone who finished most of an undergraduate engineering or science degree and then decided to switch to english, and any undergraduate english major who went on to get a graduate degree in engineering or science, can become a patent attorney. And you say you know several such people?
“With no ‘technical effect’ in your app as filed, the PHOSITA is deemed to have been merely ‘looking for an alternative’ to the existing art.”
Max, thanks for the post. But I remain confused. According to the PCT Guiedelines (I know that’s not the EPO), the identification of the objective technical problem is established in “an objective way,” based on the claimed invention, the closest prior art, and the differences between them. If this is truly an objective procedure, does it make any difference what the specification says the applicant wanted to do? In other words, is the examiner constrained to an explicitly stated objective technical problem?
Breadcrumbs,
Given that KSR, its progeny, and its USPTO interpretations seem to have elevated what Judge Rich would have nearly instantly labeled “hindsight” in a prior decade to a currently expected norm on the part of factfinders, what drafting suggestions might help minimize or prevent the use of such hindsight?
Well, I’m gobsmacked Poppa. Such a posting deserves a thoughtful response but I’m here trying to bill hours, so I’m not going to write much.
For Art 52 EPC, our 101, cling to the idea of “technical character”. Software for trading derivatives lacks it, but software that accesses data from memory faster and better does exhibit it.
For Art 56 our 103, think “technical effect”. That is synonymous with “solution to objective technical problem”. In European TSM, a hint or suggestion is needed, in the published prior art, to put together the features of the claim. The PHOSITA is deemed to have been wanting to obtain the “performance enhancement” or “technical effect” or “solve the objective technical problem. With no “technical effect” in your app as filed, the PHOSITA is deemed to have been merely “looking for an alternative” to the existing art. In that case, EPO Exrs behave like 6 and his siblings, and reject your appln. In fact, I think 6 and his siblings caught that nasty habit from the EPO. To defeat them you just have to draft smarter. Poppa, it helps to read the AGREVO Decision of the EPO, T_0939/92, which you can take as a pdf from the EPO website. Now, back to my file.
Poppa Bear,
Is there a concern that obviousness (as in “obvious to try”, or due to design or market considerations) will all too easily follow the path as outlined by the suggested descriptions in a US application?
It seems that the difficulty of eradicating hindsight is being overlooked. It is almost as if the use of hindsight doesn’t matter if the results of such use can find some (marginal ?) justification.
Thanks Max, for proposing one potential incompatibility between US and EPO practice, as follows: “It all seems different, in the USA, namely: Whatever you do, never say on filing day what technical effect is delivered by your claimed combination of technical features.”
A starting point in understanding this potential incompatibility might be in determining what is meant by “technical effect”.
According to the Case Law of the Boards of Appeal of the European Patent Office, Fifth Edition, December 2006, section I.A.1, “an invention may be an invention within the meaning of Art. 52(1) EPC if for example a technical effect is achieved by the invention or if technical considerations are required to carry out the invention”.
Potentially clarifying, in T 914/02, the board stated that having technical character was an implicit requirement of the EPC to be met by an invention within the meaning of Art. 52(1) EPC. The involvement of technical considerations, however, was not sufficient for a method which might exclusively be carried out mentally to have technical character. In fact, other noninventions listed in Art. 52(2) EPC, such as scientific theories, but also computer programs, typically involved technical considerations. Technical character could be provided through the technical implementation of the method, resulting in the method providing a tangible, technical effect, such as the provision of a physical entity as the resulting product, or a non-abstract activity, such as through the use of technical means.
In T 748/03, the board held that the criterion of the purposive exploitation of the effect of objectively identifiable and measurable natural forces as a condition for the technical character of an invention for the purposes of patent law could, in the light of Art. 83 EPC, be defined more clearly as follows: the technical character of an invention was closely linked with the requirement of reproducibility under Art. 83 EPC.
According to the Guidelines for Examination in the European Patent Office, December 2007 edition, Part C, Chapter IV (Patentability), section 2.3.1 (Discoveries):
“If a new property of a known material or article is found out, that is mere discovery and unpatentable because discovery as such has no technical effect and is therefore not an invention within the meaning of Art. 52(1). If, however, that property is put to practical use, then this constitutes an invention which may be patentable. For example, the discovery that a particular known material is able to withstand mechanical shock would not be patentable, but a railway sleeper made from that material could well be patentable. To find a previously unrecognised substance occurring in nature is also mere discovery and therefore unpatentable. However, if a substance found in nature can be shown to produce a technical effect, it may be patentable. An example of such a case is that of a substance occurring in nature which is found to have an antibiotic effect. In addition, if a microorganism is discovered to exist in nature and to produce an antibiotic, the microorganism itself may also be patentable as one aspect of the invention. Similarly, a gene which is discovered to exist in nature may be patentable if a technical effect is revealed, e.g. its use in making a certain polypeptide or in gene therapy.”
Consideration of the immediately following section 2.3.2 (Scientific theories) also seems relevant:
“These are a more generalised form of discoveries, and the same principle as set out in IV, 2.3.1 applies. For example, the physical theory of semiconductivity would not be patentable. However, new semiconductor devices and processes for manufacturing these may be patentable.”
From section 11.5:
“A set of technical features is regarded as a combination of features if the functional interaction between the features achieves a combined technical effect which is different from, e.g. greater than, the sum of the technical effects of the individual features. In other words, the interactions of the individual features must produce a synergistic effect. If no such synergistic effect exists, there is no more than a mere aggregation of features (see T 389/86, OJ 3/1988, 87). For example, the technical effect of an individual transistor is essentially that of an electronic switch. However, transistors interconnected to form a microprocessor synergically interact to achieve technical effects, such as data processing, which are over and above the sum of their respective individual technical effects (see also IV-Annex, 2).”
Slightly off the immediate topic, but related to one of Max’s earlier posting in this thread is this statement from section 11.7.2:
“In the context of the problem-and-solution approach, the technical problem means the aim and task of modifying or adapting the closest prior art to provide the technical effects that the invention provides over the closest prior art. The technical problem thus defined is often referred to as the “objective technical problem”. The objective technical problem derived in this way may not be what the applicant presented as “the problem” in his application. The latter may require reformulation, since the objective technical problem is based on objectively established facts, in particular appearing in the prior art revealed in the course of the proceedings, which may be different from the prior art of which the applicant was actually aware at the time the application was filed. In particular, the prior art cited in the search report may put the invention in an entirely different perspective from that apparent from reading the application only.”
Taking these passages into consideration, we might reasonably interpret “technical effect” to mean a “technical function”, where technical might be defined as a practical application of a scientific principal or theory.
If this understanding is correct (or even close), then it seems that the perceived incompatibility is that EPO best practices require that the specification describe a technical function for a claimed combination of features, and US best practices discourage it.
Yet there seems to be no substantial disadvantage, from a US legal perspective, in describing one or more technical functions that _can_ be achieved by a claimed combination of features. Rather, if any substantial disadvantages are suggested by US caselaw, they seem to flow from describing (and not claiming) a technical function that _must_ be achieved by a claimed combination of features (or even a single feature).
Max, Paul, or other EPO practitioners, in your view, would describing one or more technical functions that _can_ be achieved by a claimed combination of features fulfill the EPO requirements?
US practitioners, see any substantial disadvantages in describing, in a US application, one or more technical functions that _can_ (as opposed to _must_) be achieved by a claimed combination of features?
Well said Jonathan. Somebody above wanted me to give the European point of view. In a nutshell, it is this: In a First to File jurisdiction, you are going to be held to what you announced as your invention back on filing day. An invention is a new and non-obvious technical solution to an objective technical problem. How much of that can one directly and unambiguously derive from the app as filed? That much is what you have, as your reservoir, from which to craft a useful valid patent claim. It all seems different, in the USA, namely: Whatever you do, never say on filing day what technical effect is delivered by your claimed combination of technical features. As far as I am concerned, the two jurisdictions are flat incompatible. Unstoppable force meets immovable object. So, better write one thing for the USA, and a different app entirely for ROW, no? There is one snag though. Just six months after you file your wildly indiscreet PCT, it gets published, to the distress of your US litigators. But, I think the academics on the CAFC are alive to the incompatibility problem, and will chip away at it till it’s solved. Don’t you agree?
Scimed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343 (Fed. Cir. 2001) (“[T]he characterization of the coaxial configuration as part of the ‘present invention’ is strong evidence that the claims should not be read to encompass the opposite structure.”);
I think it was Scimed that started this sensationlistical overreactionaryismistic shenangins regarding “present invention”, so I will start there and we can move through the list.
I submit that Scimed is NOT a case about that turned on the word “present invention”. It was about how the invention was defined to have a particular structuaral feature in all the embodiments and this was a key to getting around prior art.
From the court case:
“The words “all embodiments of the present invention” are broad and unequivocal. It is difficult to imagine how the patents could have been clearer in making the point that the coaxial lumen configuration was a necessary element of every variant of the claimed invention. Moreover, there is no suggestion that the patentee made that statement unaware of the alternative dual lumen configuration, because earlier in the patent the patentee had distinguished the dual lumen configuration used in prior art devices as having disadvantages that the coaxial lumens used in the patented invention had overcome.”
And
“Second, in discussing the disadvantages of certain prior art structures, the written description of each of the patents explains that the prior art catheters with shortened guide wire lumens “suffer from several disadvantages.” The first cited disadvantage is that “such catheters have been one piece polyethylene catheters having dual lumen configurations adjacent their distal regions. Typically, such catheters have larger than necessary shaft sizes and are stiffer in their distal regions than would be desired . . . .” ‘594 patent, col. 3, ll. 3-8; ‘482 patent, col. 3, ll. 5-10; ‘334 patent, col. 3, ll. 10-15. Thus, the SciMed patents distinguish the prior art on the basis of the use of dual lumens and point out the advantages of the coaxial lumens used in the catheters that are the subjects of the SciMed patents.”
The patent was drafted to avoid the prior art. They got their claims allowed and then tried to backdoor in their competitors product into the claim.
It seeemed like a pretty simple to me case and not a reason to say “present invention” is a no-no word.
In fact there are many other cases with “present invention” language that do not suffer problems.
Actual Inventor:
First, no one said that it’s impossible for an English major to get a reg no. However, it was you that said “there are few jobs for English majors they usually go to law school and end up as patent writers, umm.. ‘Patent Professionals.'” Clearly you were making a blanket statement that English majors are “usually” the ones that go on to be “Patent Professionals.” However, the reverse is true, i.e., English majors do not usually go on to be patent professionals.
Second, if you were to name someone you know that’s a registered Patent Attorneys, so what? How is that “outing” them or invading their privacy? If they work for a firm, chances are they already have their bio posted on the firm’s website, which would probably include their B.A. in English (assuming they exist). The more likely truth is, you don’t know anyone that was an English major that is now a patent attorney.
Third, you still haven’t bothered to respond to the challenge of naming some of the patents that you’ve written and prosecuted. Conclusion: 1/2 of what you say is a lie, and the other 1/2 is BS.
Dear Mr./Ms. Actual Clueless:
As you can read from the following pasted text there is no absolute exclusion for someone possessing a English degree, only the requirement that the necessary
scientific and technical training be met. One could surely have that English degree and still find a variety of other ways to meet the technical requirements.
As for me naming someone I know. Thats non sense. I am not invading anyones privacy and outing them to a bunch of anonymous, neurotically charged entities on an internet blog.
And to all you “Actual Clones” if this exchange is any indication of your professional patent prosecuting prowess, you most surely are ripping off “Actual Inventors” because you just got owned.
Case Closed.
—-
From link to uspto.gov
ii. Graduate Degrees: An applicant who has a Master’s or higher level degree in one of the
subject areas listed above, but does not have a Bachelor’s degree in such subject, must
established to the satisfaction of the OED Director that he or she possesses the necessary
scientific and technical training. Possession of the necessary scientific and technical training may
be satisfactorily established in the manner set forth under either Category B or Category C below.
B. CATEGORY B: Bachelor’s Degree in Another Subject. An applicant with a Bachelor’s degree
in a subject other than one of those listed in Category A, must establish to the satisfaction of the
OED Director that he or she possesses scientific and technical training equivalent to that
received at an accredited U.S. college or university for a Bachelor’s degree in one of the
subjects listed in Category A. To establish such equivalence to the satisfaction of the OED
Director, an applicant can satisfy one of the following four options, other training, or other
education listed below. The applicant must submit the necessary documentation and objective
evidence showing satisfaction of one of the options or other means of qualifying.
Let me repost the above link:
link to uspto.gov
the link posted by “Actual…clueless” doesn’t work (maybe because of the trailing period)
Actual Inventor wrote:
“Those attorneys I know, that are English majors, are fully qualified registered Patent Attorneys. So you are still flat out wrong. And thats a fact.”
Prove it. Name one of them. While you’re at it, take a look at the Examination Registration Requirements at link to uspto.gov. Note the section titled “III. SCIENTIFIC AND TECHNICAL TRAINING REQUIREMENTS FOR ADMISSION TO THE EXAMINATION.”
Actual Genius Wrote:
Actual Inventor: You’re becoming tedious. Yes, english majors can become attorneys; no, english majors cannot become patent attorneys because they aren’t qualified to sit for the registration exam. No registration = not a patent attorney, not a patent attorney = can’t file or prosecute patent applications. Look it up, its in the “statues”.
Dear Mr. Actual Genius:
Those attorneys I know, that are English majors, are fully qualified registered Patent Attorneys. So you are still flat out wrong. And thats a fact.
“…why require a limited subset of “technical” degrees?”
Because it hopefully will exclude idi0ts like you Mooney from the profession.
Actual Inventor: You’re becoming tedious. Yes, english majors can become attorneys; no, english majors cannot become patent attorneys because they aren’t qualified to sit for the registration exam. No registration = not a patent attorney, not a patent attorney = can’t file or prosecute patent applications. Look it up, its in the “statues”.
Say, you weren’t an english major, were you?
“”Actual Inventor: English majors can’t become patent attorneys.”
Sure they can. They just can’t become registered as agents.”
Now I am beginning to see the source of Mooney’s delusions.
Hint: if you aren’t registered, you aren’t a “patent attorney” Mooney. No matter how much you wannabe one.
Mr./Ms ok wrote:
I’m not so sure that “English Lit Majors and/or grad students with poetry minors” “end up as patent writers.” And if you want them to proofread, they’d miss that one too- “statue” was spelled correctly, just wasn’t the right word.
Posted by: ok | Feb 10, 2009 at 02:17 PM
Dear Mr./Ms. ok:
Your first misconception has been cleared up. Please read the earlier post. Second, if they miss that word then I would fire them. You see Proof reading is more than mere spell checking. Why pay for spell checking when your word processor can do that? Any proof reader I hire better be able to catch words used out of context as well.
Hello A. Inventor,
Re: “You for got [sic] to write, ‘You are Doomed, Doomed!'”
Say what?
Mr. Actual Genius wrote:
Actual Inventor: English majors can’t become patent attorneys. I assumed a genius like yourself would know that.
Mr. Actual Genius:
In this case you are flat out wrong. I personally know English Majors that went to on to Law school and became successful attorneys. Working as top litigators, and high powered corporate lawyers.
And well, yes, those that couldn’t cut it became patent writers.
Dear Mr. Shaffer:
As an “Actual Inventor” I know there is absolutely nothing wrong with using “business method” in an application.
The Fed Cir. struck down the so called business method exception in State Street and again upheld that action in Bilski Enbanc.
And last I checked there was no exclusion to the words ” business method” in the actual statute.
“Actual Inventor: English majors can’t become patent attorneys.”
Sure they can. They just can’t become registered as agents. But why is that? If “everything under the sun made by man” is patentable (as some commenters are prone to remind us endlessly) then why require a limited subset of “technical” degrees?
It’s illogical, it’s contradictory, and far more discriminatory and confusing than the Bilski decision.
Actual Inventor: why don’t you put your money where your mouth is and tell us which patents you’ve drafted and prosecuted? I’d love to see examples of your work. My guess is that you haven’t any.
Actual Inventor: English majors can’t become patent attorneys. I assumed a genius like yourself would know that.
Perhaps one of the experienced EPO practitioners (Max?) can help answer this question?
What specific suggested best practices are both reasonably well-supported and apparently irreconcilable across practitioner types and/or jurisdictions (e.g., prosecution vs. litigation, US vs. Japan, EU vs. China, etc.)?
Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007) (“[w]hen a patent thus describes the features of the ‘present invention’ as a whole, this description limits the scope of the invention.”)
Honeywell Int’l, Inc. v. ITT Indus., 452 F.3d 1312, 1318-19 (Fed. Cir. 2006) ((“On at least four occasions, the written description refers to the fuel filter as “this invention” or “the present invention”…. The public is entitled to take the patentee at his word [with respect to what] the invention is . . . .”)
Scimed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343 (Fed. Cir. 2001) (“[T]he characterization of the coaxial configuration as part of the ‘present invention’ is strong evidence that the claims should not be read to encompass the opposite structure.”);
Superguide Corp. v. DirecTV Enterprises Inc., 358 F.3d 870, 69 USPQ2d 1865 (Fed. Cir. 2004)(67 PTCJ 348, 2/20/04) (holding that claims were narrowed because description of figures included phrase “according to the present invention.”).
Aguayo v. Universal Instruments Corp., 356 F. Supp.2d 699, 727 (S.D.Tex. 2005), citing Microsoft Corp. v. Multi-Tech Systems, 357 F.3d 1340, 1348, 69 USPQ2d 1815 (Fed. Cir. 2004) (67 PTCJ 321, 2/13/04)(“In light of those clear statements in the specification that the invention (‘the present system’) is directed to communications ‘over a standard telephone line,’ we cannot read the claims . . . to encompass data transmission over a packet-switched network such as the Internet.”)
Cultor Corp. v. A.E. Staley Manufacturing Co., 224 F.3d 1328, 1331, 56 USPQ2d 1208 (Fed. Cir. 2000)(60 PTCJ 591, 9/21/00) (“Whether a claim must, in any particular case, be limited to the specific embodiment presented in the specification, depends in each case on the specificity of the description of the invention and on the prosecution history. These sources are evaluated as they would be understood by persons in the field of the invention.”)
Alloc Inc. v. International Trade Commission, 342 F.3d 1361, 1370, 68 USPQ2d 1161(Fed. Cir. 2003):
This court recognizes that it must interpret the claims in light of the specification, Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed.Cir.1995) (en banc), aff’d 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), yet avoid impermissibly importing limitations from the specification. Comark Communications v. Harris Corp., 156 F.3d 1182, 1186 (Fed.Cir.1998). That balance turns on how the specification characterizes the claimed invention. Sunrace Roots Enter. Co. v. SRAM Corp., 336 F.3d 1298, 1305 (Fed.Cir.2003). In this respect, this court looks to whether the specification refers to a limitation only as a part of less than all possible embodiments or whether the specification read as a whole suggests that the very character of the invention requires the limitation be a part of every embodiment. For example, it is impermissible to read the one and only disclosed embodiment into a claim without other indicia that the patentee so intended to limit the invention. Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed.Cir.2002). On the other hand, where the specification makes clear at various points that the claimed invention is narrower than the claim language might imply, it is entirely permissible and proper to limit the claims. SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1345 (Fed.Cir.2001).
I don’t see what the problem is with “the present invention…”, … I mean if you want you can scrutinize every word in each application as potentially limiting the scope. I think unless you have specific case law providing some proof they rest is based on the patent attorney’s experience/feelings.
I’m not so sure that “English Lit Majors and/or grad students with poetry minors” “end up as patent writers.” And if you want them to proofread, they’d miss that one too- “statue” was spelled correctly, just wasn’t the right word.
Brutal wrote:
For the love of god Actual Inventor, it’s “Statute,” not “statue.”
Thank you. Thats why I hire proof readers for formal docs. Usually English Lit Majors and/or grad students with poetry minors. You can get them for dirt cheap and they do an adeqaute job. Problem is when they graduate, and find there are few jobs for English majors they usually go to law school and end up as patent writers, umm.. “Patent Professionals.”
You for got to write, “You are Doomed, Doomed!”
But then again, you are ” Just an ordinary inventor(TM)”
Can a description of an embodiment that is overly vague e.g. non-specific be non-enabling?
Can another description of a further embodiment that is overly broad accidentally anticipate or make obvious a presently unknown or unconsidered future application?
>>>”present invention”
Scimed v. Advanced Cardiovascular, 242 F.3d 337 (Fed. Cir. 2001)
Astrazeneca v. Mutual Pharmaceutical, ___ F.3d ___ (Fed. Cir. 2004)
In re Curtis, 354 F.3d 1347 (Fed. Cir. 2004)
Cross Medical v. Medtronic, __ F.3d __ (Fed. Cir. 2005)
Honeywell v. ITT, 452 F.3d 1312 (Fed. Cir. 2006)
Anderson Corp. v. Fiber Composites, 474 F.3d 1361 (Fed. Cir. 2007)
Verizon v. Vonage, __ F.3d __ (Fed. Cir. 2007)
Ormco v. Align, __ F.3d__ (Fed. Cir. 2007)
Decisioning.com v. Federated Dept. Stores, __F.3d__ (Fed. Cir. 2008)
Tivo v. Echostar, __F.3d__ (Fed. Cir. 2008)
Ncube Corp. v. Seachange Intl, __F.3d __ (Fed. Cir. 2008)
Netcraft v. Ebay, __F.3d __ (Fed. Cir. 2008)
>>>
What are you talking about? I am not quite sure how these cases speak to “present invention” being a no-no word. Can you please elaborate?
I have a feeling this list was compiled by simply doing a searchon a Fed Cir database with the term “present invention”.
Max, Mr. Hart’s point was to get readers to click on his website “Lauren L. Hart”.
Perhaps Mr. Hart was hoping to get the “Actual Inventor” to click on and wise up so he doesn’t shoot himself in his feet.
Well, I don’t know about “hole” but it’s all too easy Dennis to accumulate too many bores. Lauren, was the point not that you shouldn’t use a “hole” as one of the “islands” when you assemble your bridges and islands claim?
I’m not sure, but I was once told that ‘hole’ or ‘holes’ was a no-no. It was okay to talk about the absence or lack of something, but to state ‘a hole’ was too limiting. If someone disagrees, please explain.
For the love of god Actual Inventor, it’s “Statute,” not “statue.”
“No no words” don’t kill patents. Carelessly used words kill patents.
You are a real piece of work, but good luck anyway — you’re going to need it.
You get what you pay wrote:
“Keep telling that to yourself when you commit a dumb error that a first year associate would get admonished for, which narrowly limits your claims during licensing and your seven figure licensing deal devolves into a $50K “please go away” offer.”
Dear Mr./Ms. You get what you pay:
That type of paper tiger bravado may work at scaring some naive house wife, or first time inventor, but it won’t work with a seasoned inventor that knows how to read the MPEP, knows the statue, and is an expert in the particular case law directly related to his or her particular invention.
And ANY “Actual Inventor” can acquire that knowledge within a short amount of time without spending one penny on a patent attorney, and that’s a fact.
Furthermore, all I have seen from the so called “ professional patent attorneys” that started this sub topic is nothing but pure and utter conjecture and false posturing. Not a one of you has presented any stats, objective studies, or even personal track records to back up any of your baseless assertions that “Actual Inventors” are “doomed, doomed, doomed”(yes someone actually wrote that!) unless they hire patent attorneys to read and write for them.
With that said, I am finished with this topic. As an “Actual Inventor” I have “Actual” work to do and an “Actual Business” to run.
Mooney used to try to form an anti-patent cargo cult on our island. He would burn effigies of patent attorneys and houses in Aspen.
We were very disfond of him and asked him to leave. He kept drinking all of our white wine. Plus, we wanted our grass skirts back.
“present invention”
Scimed v. Advanced Cardiovascular, 242 F.3d 337 (Fed. Cir. 2001)
Astrazeneca v. Mutual Pharmaceutical, ___ F.3d ___ (Fed. Cir. 2004)
In re Curtis, 354 F.3d 1347 (Fed. Cir. 2004)
Cross Medical v. Medtronic, __ F.3d __ (Fed. Cir. 2005)
Honeywell v. ITT, 452 F.3d 1312 (Fed. Cir. 2006)
Anderson Corp. v. Fiber Composites, 474 F.3d 1361 (Fed. Cir. 2007)
Verizon v. Vonage, __ F.3d __ (Fed. Cir. 2007)
Ormco v. Align, __ F.3d__ (Fed. Cir. 2007)
Decisioning.com v. Federated Dept. Stores, __F.3d__ (Fed. Cir. 2008)
Tivo v. Echostar, __F.3d__ (Fed. Cir. 2008)
Ncube Corp. v. Seachange Intl, __F.3d __ (Fed. Cir. 2008)
Netcraft v. Ebay, __F.3d __ (Fed. Cir. 2008)
Actual Inventor:
I’m dying to see some examples of patents you’ve written and prosecuted. It’s clear that you’re very confident in your skills. And as an inventor, surely you agree with an objective peer review. Why don’t you share some of your masterpieces with the group?
“The actual ‘statue’ for patents is very short, clear and easy to understand, very little if any ‘expertise’ is needed, unlike say the tax code.”
Keep telling that to yourself when you commit a dumb error that a first year associate would get admonished for, which narrowly limits your claims during licensing and your seven figure licensing deal devolves into a $50K “please go away” offer.
BTW: If you are overly relying upon the MPEP for guidance on claim drafting, you are already sunk.
The problem with this business is that it takes a long time before lessons really sink in for an individual inventor. It may take 10-15 years before the fruit of really bad claim draftings sinks in. By that time, you’ve followed your first bad application with a slew of bad applications (if you happen to be a prolific inventor) that cannot be saved because you’ve committed the same mistake over and over again. Sure, you may get lucky and not screw up the first one or second one, but it will happen.
Regardless, go ahead and keep doing what you are doing. It is good marketing to provide an example of how much can be lost when a good invention gets marred by poor drafting/prosecution.
Mooney: Since you’re both so much smarter than the rest of us, why don’t you and Actual Inventor get together and start your own blog for geniuses? At least it would spare the rest of us from having to skip over your postings.
Malcom says,
“Grow up, people. Don’t embarass the profession.”
That’s rich!
mysterious, voodoo, one in a million, lucky, unlucky, no way in he ll, make sure she is at least 18 first, Malcolm and/or Mooney,
Based on what “Actual Inventor” wrote, the phrase “pro se” comes to mind quickly as a no-no for patents, at least for the attorney line.
What next? “The seven words you can’t say in a patent application” – this has all the makings of the old George Carlin bit. At least he had solid legal rationale for his list.
The inclusion of most of the no-no words above is more likely the product of over-reaction to hype about speculation over dicta. I submit that in the hands of a skilled drafter, a solid patent application can be prepared using most, if not all, of the so-called no-no words in proper context.
As others have stated – it would be useful to see a rationale for deeming a particular word a ‘no-no,’ preferably one citing a case that is binding authority. More than likely, it was not the mere use of a so-called ‘no-no’ word but an overall limiting context that led to any decision perceived to relegate the word into the book of “Words that Shall Not be Used.”
I further submit that any use of language in a patent application that is unnecessarily limiting, or overly-broad (e.g., in view of the art), or which makes any unnecessary characterizations of our clients’ work, or what has gone before, is the real no-no, and what we all generally work to avoid.
Paul Cotes: “The word “surprisingly” is interesting.
If you represent to the USPTO that you have carried out experiments, and that they have given surprising results, whereas you have not got further than a thought experiment, then you can expect your actions to be questioned, as cited case law shows.”
Yes – I think this is a good point overall for the no-no thread. In the proper context many words are fine. Looney Mooney was saying something about that too.
I think if the patentees in the surprising case (Almirall) produced “surprising” data, even during litigation, this might have effected the outcome. I think it should have.
Other issues:
After reading this thread not so carefully, I am going to switch to “in one ethereal manifestation” instead of “in one embodiment” language to be more precise. And in lieu of “in one aspect” I am using “in one plane of intellectual property multidimensional space”. I never get unity of invention problems with that language.
I rarely use “can” as I find it limiting. Instead I use “can’t” as it is less limiting.
Sometimes in my Markush groups I break them down temporally. For example:
On Mondays selected from the group not consisting of only X, Y, Z. On Tuesdays, selected from the group not consisting of only a, b, c. Somedays it could be novel, somedays not.
“aspect of the invention” — Verizon v. Vonage, ___ F.3d ___ (Fed. Cir. 2007)
“I’ve grown particularly disfond of the words ‘special’ and ‘magic’, especially when used in the claims.”
I’m particularly disfond of the non-word “disfond.” But hey, this is what happens when you tell patent attorneys that they can be lexicographers…
sarg “This is a silly, cargo-cult mentality.”
Indeed. But if dare to point this out, you are ignorant and classless.
4,684,354 Appendage operated toy
1. The method of simulating magical remote control over a device which comprises the steps of:
incorporating into the device a magnetic switch including a pair of longitudnally extending reeds which are held in a closed or open position by an associated auxiliary magnet opposite both of said reeds; and
including a magnet in the tip of a simulated finger which can be placed upon the finger of an operator so that movement of the hand of the operator towards or away from the object causes a change in state of the magnetic switch therein, which change of state is retained until a subsequent pass is made with the hand including the finger appendage with the magnet; thereby to create the effect of magical operation of the device by movement of the hand of the operator with the finger appendage to the vicinity of the device.
I remember when magnets were first discovered in 1981. It was a big deal. Before that, magicians had to use strings and stuff.
This is a silly, cargo-cult mentality.
A patent containing every single one of these “no-no” words could still be a strong patent.
Context is everything.
I’ve grown particularly disfond of the words “special” and “magic”, especially when used in the claims.
My personal pet dislike is over-use of “comprising” as in “The vehicle comprises a steering wheel” (or “A football team comprises a quarterback”). I see it as another example of dictating specification without first engaging the brain. Probably it does the client no harm, just the profession of patent attorney.
The word “surprisingly” is interesting.
If you represent to the USPTO that you have carried out experiments, and that they have given surprising results, whereas you have not got further than a thought experiment, then you can expect your actions to be questioned, as cited case law shows.
However, we spend our lives looking for surprising results. Just make sure we are telling the truth before so informing the USPTO.
Just heard from a 9.475 million dollar/year partner at a massive New York City firm. He never uses the phrase “In yet another” because while travelling to DC to prosecute an application containing that phrase, he lost his foot in a wood chipper.
Although I think this places me into an ever-shrinking minority, I have long been an advocate of the viewpoint that the English language provides an immense variety of choices for expressing ideas. The patent practitioner in drafting and prosecuting a patent application should consider the meaning of the sentences he/she is writing, and the meaning of each of the words. It is important to write what you mean, and to recognize that the USPTO and the courts will assume that you wrote what you meant. Words do not in fact mean whatever you want them to mean. They carry meanings and implications derived from common usage as well as the more specialized usage of patents. It is the responsibility of the practitioner to know what the words he/she is using actually mean.
There is nothing wrong with using limiting language if your intention is to limit. On the other hand, excessively broad language for a narrow invention can be just as fatal.
Rather than casting about thoughtless “slogans” about what words to use and what not, the profession should focus on the judicious and intelligent selection of the words that best describe the invention in hand. The first requirement for the job is, presumably, the ability to read, write, and think in English.
No, no words – never, always, must, required, absolute. I try to stay away from statements about lack of safety in prior devices/methods.
“invention” “business method” “having” “sequential steps of”
…like my previous post that included a generous list of Mooney words like “dog crap” that should be avoided in a patent specification. Of course when Mooney uses them its OK, heck, around here for some reason its sheer poetry.
I demand my post be stricken from the record!
With all due respect, the MPEP only sometimes accurately reflects the law.
When the MPEP quotes a statute, regulation, or case in support of its position, it is often accurate. Nevertheless, to understand such a quote in full context, it might be wise to read the caselaw interpreting any quoted statute or regulation, and any quoted case. Because interpretations of the law can change, it also might be prudent to Shepardize any supposedly supportive caselaw to see if the proposition in question is reasonably treated as “good law”.
When the MPEP makes statements without quoting statutes, regulations, or caselaw, it might be accurate. Yet given that the MPEP sometimes reflects policies of the USPTO that are grounded in desire and/or conjecture, rather than the law as interpreted by the courts, it sometimes is not an accurate reflection of US patent law, and can lead the unwary astray.
That is, in addition to providing accurate legal guidance, the MPEP reasonably can be viewed as a policy document that advocates (sometimes multiple and/or conflicting) legal perspectives that have not necessarily been accepted, or have been rejected, by the courts.
Regrettably, the MPEP rarely signals when its guidance stretches beyond the currently accepted law. Consequently, those who aim to preserve/enhance the value of patented inventions by mitigating legal risk are probably wise to look beyond the bounds of the patent statutes, implementing regulations, and the MPEP for legal counsel.
I’ve learned here to never include the words “Huge computer brain”.
Jaoi, thanks for expressing your concern about my welfare. Indeed, I must agree with you: I do need to get a life. All the same, for somebody like me, who earns his crust helping US patent attorneys to get worthwhile patents for their clients in 600 million citizen Europe, this thread is addictive, because it confirms to me why these same US attorneys react so negatively to European patent law, to EPO Examiners and to advice from their European counsel. And why, despite the duplicated blandishments of Mr Richardson above, the PCT specifications they write are so often disastrously incompetent for use anywhere in the world except within the USA. If readers follow the advice above, it will only get worse. And yet, I am thinking, for Americans to secure effective patent rights outside the USA is going to be ever more important for the US economy, no?
Dear Mr./Ms. Anonymous:
Can you or any patent attorney you know, guarantee the claims you write will get through the PTO without rejection or objection, and then be impossible to challenge in a court of law?
Yes, or No.
Oh, and last I checked patent court case decisions are written in English and easily retrieved on the internet.
So any “ Actual Inventor” can easily read any pertinent case law that relates to their particular invention. There is absolutely no reason an “Actual Inventor” needs to pay a patent attorney to read case law, in order to draft and prosecute their application.
And if you are just a patent attorney, please don’t give out marketing and sales advice to Actual Inventors. Unless you have actually invented something, started a small business, and built it into a success your advice in this area is well, worthless.
The use of word “comprises” should be avoided in specifications.
Also, instead of using “in an embodiment” repeatedly in the specifications, terms like “alternatively” etc can be used to improve the readability of the specifications.
Words like “may” and “can” should be avoided in claims, but they should be used in the specifications to highlight alternate embodiments.
Words/phrases that I like to see: “catastrophic failure,” “hurts like a motherf—er,” “could lead to severe injury or death,”
you get the idea…
Stop the presses, Mooney reports the existence of a “friend,” close acquaintances however deny this possibility and indicate it is merely an ugly rumor.
“”may” is better than “can”?
A friend of a friend told me that a $5.21 million dollar a year partner and a law firm that you definitely heard of never allows any of his associates to use the word “can” in an application after something went terribly wrong with a case in Japan.
Just sayin’.
Actual Inventor:
Perhaps it’s true the statutes and MPEP are easy enough to understand for you to be able to draft your own application. However, you’ll need to know more than just the MPEP and the statutes to draft good applications/claims.
For example, while there is some general discussion of claim construction in MPEP 2111, there are many things that are not covered there, such as the limiting effect of language such as discussed in this thread. A good drafter should be aware of the canons of claim construction. Otherwise, you run a high risk of having worthless claims.
Likewise, your claims can be limited based on arguments made during prosecution. Consequently, it’s extremely important to understand how your words during prosecution can be used against you. Unfortunately, the MPEP and the statutes will provide you no guidance in understanding prosecution history estoppel.
Moreover, as one poster alluded to, if your intention is to provide sales and marketing tools, you should use brochures and websites for things like that. That is, you should separate the functions of your business — use a patent to protect your exclusive legal right (i.e., your license to make money); use advertising tools to advertise your patented product.
Put another way, if you show up at a licensing meeting, and it appears that your patent/claims have been drafted in an amateurish way, I can guarantee you that you will have minimal leverage in negotiating favorable terms. Both validity and alleged infringement can be challenged in many ways, most of which are not covered in the MPEP or the statutes upon which you rely.
In short, don’t be fooled into thinking that you can draft good applications simply by knowing your product and being able to read the MPEP. If you’re intent on going it alone, you should add some case law to your knowledge base.
That said, also note that there’s a reason ALL major corporations use patent attorneys to help draft and prosecute applications. Otherwise, they’d just save their money and get the engineers to do it. A old proverb says “A man who is his own lawyer has a fool for his client.” Believe me, there’s truth in that.
CJ,
You have to disclose the best mode, but you don’t have to – and shouldn’t – identify it as such, i.e., as the “preferred embodiment”.
“obvious” or “obviousness”
Use of the words “preferred embodiment,” “preferably,”…intended to refer to the preferred embodiment should be avoided.
In a compound claim directd to a pharmacophore with multiple Markush groups, how does an applicant comply with the best mode requirement when disclosing compounds with greatest activity?
Actual Inventor,
“Well, no one said that inventors were incapable of doing a bad job.”
Being a know it all will get you nowhere.
I fear you are doomed, doomed. Good luck.
You get what you pay for wrote:
“You may be an expert in the invention, but being an expert in patent law is another thing altogether.”
Dear Mr./Ms. You get what you pay:
No one is an “expert” in patent law. As any cognitive scientist we tell you, “expertise” is domain specific. One can be an expert at litigation in patent law, case history of patent law, or even history of patents, but not the general subject of patent law. The actual “ statue” for patents is very short, clear and easy to understand, very little if any “expertise” is needed, unlike say the tax code.
“As this thread is ample evidence of, even the most innocent of words can trip up a seasoned practitioner. “
Actually, what this thread has brought to light is that no so called “ seasoned practitioner” whatever that means, can agree on any concrete rules for use of so called “No No Words” in patent applications that will guaranteed an outcome for the issuance of a patent or the enforcement of a patent by a court of law.
“I’ve seen some very intelligent inventors who wrote and prosecuted their own applications get lousy claims that were very difficult to license. Also, the specifications were so narrowly written that even when an experienced attorney got a hold of the application, it was difficult to save.”
Well, no one said that inventors were incapable of doing a bad job.
“may” is better than “can”?
Nads wrote:
Dear Actual Inventor,
The problem is that claim drafting is an art and, in litigation, claims are EVERYTHING. You, as an ‘actual inventor’ and not an actual patent attorney, don’t know jack about claim drafting.
If you really want to cut corners, hire a real patent attorney draft your claims, then write the rest of the application yourself.
Dear Mr./Ms. Nads:
So, essentially your argument is I should hire an attorney for writing the claims, because claims drafting is an “art.”
You may very well be an “artist” and maybe in your own minds eye, the greatest artist in the world. However, I am an artist as well. So that sales pitch won’t work on me either.
Besides, the PTO is under the impression that Claim Drafting is not this subjective poetry you wax of, and that claims are indeed bound by specific objective rules.
See..link to uspto.gov
Fortunately, as an “Actual Inventor” I am capable of the reading and comprehending the rules. And thus not vulnerable to the woo of patent attorneys not skillful enough to be top litigators nor smart enough to get on the payroll of large publicly traded corporations, where their fees and necessity will never be questioned.
Also see…
For numbering of claims, see MPEP § 608.01(j).
For form of claims, see MPEP § 608.01(m).
For dependent claims, see MPEP § 608.01(n).
For examination of claims, see MPEP § 706.
For claims in excess of fee, see MPEP § 714.10
Mooney: I suspected that your lack of class was the result of your ignorance. Now I know for certain.
Since the topic is so vast, I have focused on one, OK maybe two, themes. Use of the word “Preferred” or “preferable” with regard to embodiments and use of the word “may.”
Use of the words “preferred embodiment,” “preferably,” and related words intended to refer to the preferred embodiment should be avoided.
Also, Mr. Hodges says that use of “may” is a problem. I believe that such an idea is woefully out of touch.
Use of the word “may” is far preferable to use of the word “is” in many circumstances. Only the more underdeveloped reader (typically occupying an in-house position) has a problem with the word “may.” Often times, its not the in-house attorney that has a problem, but the barely literate engineer who must sign the declaration who then says, “wait a minute, you said my gizmo MAY have a biasing spring. That’s not really right, it HAS to have a biasing spring.”
Sheesh.
Craptacular!
“No no words”? What is this Patent Kindergarten?
“take your false misleading bullcrxp with you…”
And, believe me, I know all about false and misleading bullcrxp!
“I’m simply suggesting that if, under certain circumstances, you refer to variations as “implementations” of a single embodiment rather than separate “embodiments”, then you have at least left yourself an argument against issues like restriction and dedication.”
And I’m telling you that you are wrong and that your advice is worthless. The term “embodiment” does not imply a distinct invention any more than “implementation” does. Period. You don’t have a better argument using one of those terms versus the other.
“To a non-practitioner or novice like yourself”
LOL, Mrs. Implementation. Please crawl back under your rock and take your false misleading bullcrxp with you you.
“In fact it is a complete waste of money. Why would I, an expert, indeed the worlds foremost expert on my particular invention, tutor and teach a complete novice my invention, and then pay for the privilege? The tradition is the expert gets paid and the novice pays.”
You may be an expert in the invention, but being an expert in patent law is another thing altogether.
As this thread is ample evidence of, even the most innocent of words can trip up a seasoned practitioner. I’ve seen some very intelligent inventors who wrote and prosecuted their own applications get lousy claims that were very difficult to license. Also, the specifications were so narrowly written that even when an experienced attorney got a hold of the application, it was difficult to save.
Mooney: “Embodiment” is a term of art, just like “means”. To a non-practitioner or novice like yourself, there’s no substantive difference between “means for connecting A and B” and “fastener for connecting A and B”, but an experienced practitioner knows that the former raises a lot more issues than the latter. I’m simply suggesting that if, under certain circumstances, you refer to variations as “implementations” of a single embodiment rather than separate “embodiments”, then you have at least left yourself an argument against issues like restriction and dedication.
“One person I heard say that was a $3 million+ per year prosecution partner at a very well known firm. She had a bad experience in Europe where the use of “embodiment” caused an examiner to view each referenced embodiment as a separate invention.”
What a shock that a “$3 million per year” partner could turn out to be an irrational wanker.
The idea that using the word “implementation” in a patent specification is somehow “safer” than using the word “embodiment” is beyond retarded.
Grow up, people. Don’t embarass the profession.
fellow commenters — when there are a number of “embodiments” in the application, how do you refer to the “embodiments”? As “embodiments”? As another “feature”? Alternative?
Dear Mr. Actual Inventor:
You get what you pay for. You may get a nice patent document with the seal and the ribbon which looks very nice framed and on your wall, but isn’t worth much of anything when you try to license or enforce it.
don’t mention problems or deficiencies in prior art which invention solves?
Actual Inventor,
The problem is that claim drafting is an art and, in litigation, claims are EVERYTHING. You, as an ‘actual inventor’ and not an actual patent attorney, don’t know jack about claim drafting.
If you really want to cut corners, hire a real patent attorney draft your claims, then write the rest of the application yourself.
Just an ordinary inventor(TM) wrote:
Dear Actual Inventor,
Please take heed of some of the comments above.
Dear Just an ordinary inventor(TM)
I would ask you to do the same. And remember Judges are not God(s). If a judge screws you then appeal it!
Imagine if Deihr would have given up because of what happened in Flook?
Helful Hinter wrote:
Actual Inventor: You must be very new at this game. Please, get a good patent attorney.
Dear Mr./Ms. Helful Hinter.
As an “Actual Inventor” that can read and comprehend English there is never a reason to hire a patent attorney to write and prosecute patent applications.
In fact it is a complete waste of money. Why would I, an expert, indeed the worlds foremost expert on my particular invention, tutor and teach a complete novice my invention, and then pay for the privilege? The tradition is the expert gets paid and the novice pays.
Furthermore, the only reason “Actual Inventors” that can read and comprehend english should ever consider hiring a patent attorney is if there is a trial. And in that case I suggest hiring a skillful litigator with the oratorical skills of President Obama and a proven track record of arguing and winning cases in the court the trial is taking place, e.g. Fed Cir, SCOTUS, etc.
But of course the “Actual Inventor” should get a 50% discount on legal fees since said “Actual Inventor”, would have to spend time teaching said litigator the invention.
Mr. Poppa Bear wrote:
If fulfilling legal requirements and mitigating legal risks runs contrary to the desired use of a patent application as a marketing or training tool, or as a mechanism for documenting trade secrets, then perhaps the patent application is not the best vehicle for those non-patent purposes.
Dear Mr. Poppa Bear:
As an Actual Inventor I find all is needed to reduce if not eliminate the risk of viollating legal requirements is to simply read the statue, and refer to the MPEP for the rules.
And there is nothing at all contrary to following these easy to understand requirements by making sure the patent application is well documented and prepared for marketing, training, trade secret status, and most important licensing.
Indeed the above points are the primary motivation and “PURPOSE” for filing patent applications and without such reasons people that are patent attorneys, examiners and judges would not have jobs. Never forget that, please.
A computer readable medium [no]
A computer readable storage medium [yes?]
“More specifically” versus “in a particular embodiment” or “For example”
(When providing illustrative examples or to ensure literal support for dependent claim limitations)
Max,
With all due respect, I know I should be the one to talk, but, please, get a life (;-).
Mr Richardson, I don’t understand. You post yesterday, with your assertions about how to draft for Europe. Then I reply, suggesting that you are wrong and indicating why, and then you post again, just above, but your second posting is (at first sight) identical to yours from one day earlier. I’m not going to bother copying my reply, word for word, because I think readers want to see a discussion (rather than just people repeating what they wrote one day earlier). You?
Fascinating, relevant stuff!
Let’s dig a little deeper for the rationale behind the choice of language.
1. An issued US patent must describe the invention adequately (including the “best mode”); it must also provide basis for the claims. Preferably, it also provides basis for other claims that may be needed in interference, reissue or re-examination. The same is true for a US application, though with greater emphasis on possible future claims. Strictly speaking, anything else is unnecessary (since the specification is a legal document, not a scientific document, or an advertisement for the inventors’ skill or for the diligence of the draftsman).
2. It is never advisable to assume, at the time of filing or even at the time of issue, that you know and fully understand the relevant prior art (still less the most relevant prior art).
Where do these simple truths take us in terms of “no-no”s?
(A) The specification of a granted US patent must NOT
(i) state, explicitly or implicitly, that it is necessary (or “key”, “vital”, etc. etc., or even “important”) to make use of any feature which is not present in each claim;
(ii) state, explicitly or implicitly, that the invention will provide specific advantages, or solve specific problems, or fulfill specific “objects”, unless that is true of each claim;
(iii) discuss the prior art (discussion cannot change the prior art; all it can do is to commit to a present view of the prior art, which may not be the best view in, for example, litigation 5-20 years later);
(iv) discuss the reasons why the invention works — except in those rare cases in which those reasons are needed to provide basis for the claims.
(B) The specification as filed should also observe these rules. If it does not, it should be amended in prosecution so that it does.
What about “yes-yes”s?
The list is endless. But top of my personal list is for the initial specification to have a Summary of the Invention in the most general terms, and in as many different forms as I can think of (bearing in mind who might be sued for infringement), and then to add a list of features one or more of which can be present. The claims are more specific, balancing the economic and business aims of the applicant and my view of the Examiner’s likely reaction to the claims. This form of drafting leaves the door open for the future prosecution of a wide variety of claims.
I think that these comments are equally applicable to applications for PCT/ foreign filing, except that it is advisable to add a final claim which reflects the broadest possible view of the invention (to avoid any possible application of a “no-late-claiming” rule). In some jurisdictions, notably Europe, a brief discussion of the most relevant prior art (selected by the Examiner, not you), and/or of the problem solved by the invention, may need to be added during prosecution, but is not required at the time of filing.
Dear Actual Inventor,
Please take heed of some of the comments above.
Dear 123,
Re:
“Its unfortunate, but you never know whether or when a judge is going to use language in the spec to limit the claims in ways you never intended or even imagined.”
Worse yet, despite en banc Philips v AWH and other clearly established precedent, you never know whether or when a judge is going to use language in the FILE HISTORY to limit the claims in ways you never intended or even imagined.
Moreover, Judges can screw an independent inventor anytime s/he wants, and they are inclined to do so given the troll-trash talk propaganda spread for most of a decade by companies like Cisco, Intel, Microsoft, Oracle, and Symantec directly and through their Coalition for Patent Fairness, a cartel dedicated to dummying down the American patent system overtly and covertly by skewing the media, the public and our three branches of government against self-employed independent inventors.
Thanks to htp and Poppa Bear for the citations.
Language is an art, and words are the artist’s tools. There are certain tools, e.g., “essential”, that are not ordinarily useful, but I would never say “never”.
I knew an attorney who would refer to every feature beyond the absolutely essential as a separate embodiment, as in: “In one embodiment, the apparatus may further comprise…” There are two problems with this: (1) it begs for restriction, and (2) any disclosed “embodiment” which is not specifically claimed is dedicated to the public. I prefer to have one or two “embodiments”, and then refer to different “implementations” of each embodiment, or simply say that the embodiment “may” include additional features. I’ve only had one examiner assert that a feature described that way is not necessary to the invention and therefore not limiting in the claims, and he withdrew his assertion after my response.
In general, an application should discuss nothing more than is statutorily required or risk creating PHE unnecessarily (take heed, Actual Inventor). So my summaries generally just restate my claims.
Its unfortunate, but you never know whether or when a judge is going to use language in the spec to limit the claims in ways you never intended or even imagined.
There seems to be consensus that via the claims it initially presents, an application provides an initial statement of “what you think you have contributed to the art, already by filing day”. Whether from the perspective of a US litigator, an EPO prosecutor, or the applicant, those claims might be problematic, however, if cast, for example:
1. too broadly, such that there is a high chance of need to avoid prior art by narrowing amendment or cancellation, potentially leading to substantial loss of exclusive scope, prosecution history estoppel, and/or wasted prosecution;
2. too narrowly, such that their subject matter is unlikely to be infringed, is easily and economically designed around, and/or otherwise lacks sufficient commercial value to justify the patenting exercise; or
3. too sloppily, such that a competitor can not reasonably determine (upon referring to the specification) the scope of the claimed subject matter, how to implement that claimed subject matter, or whether their particular implementation infringes or not.
The postings regarding the No-No list (a.k.a., best practices for patent application drafting) includes suggestions relating to claim language, specification language, and even labels for application sections.
Although some of these suggestions seem to be driven only by a desire to prevail via US enforcement of the patent, many seem to be based on a motivation for expedient and/or effective preparation, examination, and/or licensing, in the US, EU, and/or elsewhere.
It is not currently apparent that those desires and suggested best practices can not be substantially reconciled such that a given application can substantially meet them all.
Rephrased, what specific suggested best practices are both reasonably well-supported and apparently irreconcilable across practitioners and/or jurisdictions (e.g., prosecution vs. litigation, US vs. Japan, EU vs. China, etc.)?
The word ” relevant” and whether it constitutes some form of admission, e.g., as to “documents being considered as prior art”.
Actual Inventor:
You must be very new at this game.
Please, get a good patent attorney.
In reply to Actual Inventor, we seem to agree that a patent application can be used for many purposes, some more reasonable than others. This thread seems to be directed toward the use of patent applications for obtaining patents, and the legal implications of the language employed by those applications. If fulfilling legal requirements and mitigating legal risks runs contrary to the desired use of a patent application as a marketing or training tool, or as a mechanism for documenting trade secrets, then perhaps the patent application is not the best vehicle for those non-patent purposes.
We also seem to agree that to fulfill the legal requirements of section 112, “the specification must be detailed enough to actually teach people [PHOSITA] how to make and/or do” the claimed subject matter. Yet the currently justifiable legal basis for the use of certain sections or section labels (e.g., “Background”, “Summary of the Invention”, etc.) that are not mandated by statute or regulation, but instead have emerged via custom and/or tradition, is apparently quite debatable.
Stated differently, under US law, a patent application must include some sections and some content. Notably, although it makes several functional requirements, US law makes very few requirements for specific labeling of those sections (e.g., “Abstract” or “Abstract of the Disclosure”), and very few (if any) requirements for specific language in the content. Thus, the choice of such wording is left to the discretion of the drafter.
Given the typically long lead-time between filing and examination, and the typically even longer wait for ultimate enforcement success or failure, gaining sufficient personal experiences to generate strongly supported rules of thumb can be rather challenging. Thus, as suggested by Dennis’ original question, our desire for best practices extends to anecdotes and the sometimes unusual fact patterns, dicta, and holdings posed by various cases.
In summary, many of the postings on this thread suggest that it can be prudent for the drafter to act with at least some care when selecting sections, labels, and content.
Jonathan, thanks. Care to comment on the contributers upthread who “had trouble in Europe” and who think US drafting works just as well for PCT prosecution outside the USA? In drafting, what’s good for the USA is bad for the rest of the world, and vice versa. The rest of the world fits better with the inventor’s instinct, set out above, as to what makes a good patent specification, namely:
1. To be patentable, an “invention” has to be a solution to a technical problem (so in the claim you define the invention in terms of technical features, and in the specification you disclose the quid pro quo, which is the technical effect those features deliver)
2. And you have to do all that no later than your filing date (otherwise the system isn’t really a “first to file” one)
3. And, because you don’t know what prior art is going to bite you during prosecution (and later), you need “fall back positions” of narrower scope, all supported by a corresponding technical effect, flagged up in the app as filed.
4. In other words, you have to step up to the plate, and say what you think you have contributed to the art, already by filing day.
5. Which of course is anathema to litigators, who run the US show.
6. And so the list of “No No” words above is one compiled by the litigators.
7. But the judges can do something to address this sad state of affairs, where inventors are disgusted by patent applications, and the general public, and the politicians start to despise the patent system.
8. It starts with judges like the one in Amirall and Boehringer.
BTW, the commentators writing about PCT/Europe/embodiment and invention seem to have no EPO experience. The EPO Examiner is just pointing out that, if you want a patent on invention X, you need to have announced it in the app as filed. Otherwise, your prosecution amendment fails the “written description” requirement of European law, which we call Art 123(2) EPC.
Maxi – The Almirall case was interesting especially when combined with the US Purduepharma case (thanks for the link). We should implement a transatlantic treaty banning “surprisingly”. The courts do not like surprises.
Both cases are pretty interesting and stand for similar propositions. Obviously the courts do not like the use of “surprisingly” when nothing has been done.
Boehringer used “surprisingly” in the context of no results and statements of unexpected properties. The court did not seem to like that.
Almirall used the word “surprisingly” in a similar context, but had data and results behind the statement. The court did not seem to mind this as much.
I think this statement from the Magistrate in Almirall captures the heart of the problem in Purdue and Almirall:
In reference to Boehringer:
“I would add that though one often sees the word used in patents, ‘surprisingly’ has no relevance to anything I have to consider. On the other hand, whether ‘an unexpectedly beneficial therapeutic effect can be observed’ is at the very heart of the case and moreover, has been the cause of both parties’ experiments.”
Very interesting case though…
Mr Poppa Bear:
As an Actual Inventor, my Patent Application is also a sales brochure and/or proposal to potential licensees. Or if I intend to use my invention to run my own business, and keep it a trade secret its a training manual for priveleged employees, partners and associates. Therefore the specification must be detailed enough to actually teach people how to make and/or do something. So if I left out all those sections you suggest my patent application would be of little value to anyone in the real world.
Now if you could guarantee me that such a minimalist approach with zero “No No Words” would sail through the PTO and be impossible for anyone to even think of challenging in court, then I can see your rationale. But until then I will stick with writing applications that actually work to produce income so I can have something editable to chew on.
To an “Actual Inventor” the notion of so called “No No Words” just seems silly. If there is a statue that specifically says certain words are illegal then of course those are words every inventor must leave out.
And if there is an MPEP section that specifically says certain words are not allowed then those words should not be used.
Other than that its just opinion and conjecture. Just because some argument was won or loss based on some word does not mean that now every inventor must , or must not use that word, Anyone can argue the semantics and lexical ambiguity of any word, in any court case, and the outcome can never be predicted.
And thats my opinion.
Patent profanity comprises:
the invention is, are, essential, preferred, all, every, critical, necessary, advantageous, significant, majority, peculiar, most, must, needed, desirable, usual, correct, requirement, specify, expected, never, must, should, surely, none, only, rarely, limited success with, typically, highly, absolutely, frequently, commonly, generally, uncommon, usually, few, partly, as much as, special, conveniently, difficult, time consuming, laborious, prior art, ….
“She had a bad experience in Europe where the use of “embodiment” caused an examiner to view each referenced embodiment as a separate invention. ”
Species lol, I’ll have to remember that when restriction time comes around.
One day the firing squad of the CAFC will take aim at and blow away all of your horrendously drafted apps. And I will be there, laughing.
Fascinating, relevant stuff!
Let’s dig a little deeper for the rationale behind the choice of language.
1. An issued US patent must describe the invention adequately (including the “best mode”); it must also provide basis for the claims. Preferably, it also provides basis for other claims that may be needed in interference, reissue or re-examination. The same is true for a US application, though with greater emphasis on possible future claims. Strictly speaking, anything else is unnecessary (since the specification is a legal document, not a scientific document, or an advertisement for the inventors’ skill or for the diligence of the draftsman).
2. It is never advisable to assume, at the time of filing or even at the time of issue, that you know and fully understand the relevant prior art (still less the most relevant prior art).
Where do these simple truths take us in terms of “no-no”s?
(A) The specification of a granted US patent must NOT
(i) state, explicitly or implicitly, that it is necessary (or “key”, “vital”, etc. etc., or even “important”) to make use of any feature which is not present in each claim;
(ii) state, explicitly or implicitly, that the invention will provide specific advantages, or solve specific problems, or fulfill specific “objects”, unless that is true of each claim;
(iii) discuss the prior art (discussion cannot change the prior art; all it can do is to commit to a present view of the prior art, which may not be the best view in, for example, litigation 5-20 years later);
(iv) discuss the reasons why the invention works — except in those rare cases in which those reasons are needed to provide basis for the claims.
(B) The specification as filed should also observe these rules. If it does not, it should be amended in prosecution so that it does.
What about “yes-yes”s?
The list is endless. But top of my personal list is for the initial specification to have a Summary of the Invention in the most general terms, and in as many different forms as I can think of (bearing in mind who might be sued for infringement), and then to add a list of features one or more of which can be present. The claims are more specific, balancing the economic and business aims of the applicant and my view of the Examiner’s likely reaction to the claims. This form of drafting leaves the door open for the future prosecution of a wide variety of claims.
I think that these comments are equally applicable to applications for PCT/ foreign filing, except that it is advisable to add a final claim which reflects the broadest possible view of the invention (to avoid any possible application of a “no-late-claiming” rule). In some jurisdictions, notably Europe, a brief discussion of the most relevant prior art (selected by the Examiner, not you), and/or of the problem solved by the invention, may need to be added during prosecution, but is not required at the time of filing.
“” I have heard experienced biotech practitioners say that one should never use the word “embodiment” in a patent application”
On what planet? That is the stoopitest thing I’ve heard in quite a while.
This is what happens when people whose only personality trait is anal retentiveness are allowed to practice law: thoughtless, reactionary bullcrap.”
One person I heard say that was a $3 million+ per year prosecution partner at a very well known firm. She had a bad experience in Europe where the use of “embodiment” caused an examiner to view each referenced embodiment as a separate invention.
Perhaps in line with what others have said, I have seen practitioners spend a lot of time trying to figure out whether a word is optimal or potentially damaging in litigation; they would have been better off spending the time on better describing the invention.
Somebody asked why “surprisingly” is a No No. What prompted me to offer it is the Boehringer v Almirall decision to be found in the link below.
link to bailii.org
I absolutely never use the word “fartabulous” in my applications.
Miles wrote, “If you have software claims, words in the specification like signal, carrier, network, wave, distributed, or anything that even remotely suggests that your program may be transmitted from one computer to another on anything other than a physical memory-type storage medium risk 101 rejections from particular examiners and art units, even if the claims are in proper Bauregard format.”
Given the thousands of patent applications that already define computer readable mediums to include signals, do you really think that you’re safe because your particular spec doesn’t include that language?
Maybe your safe at the USPTO, but in litigation, the defendants’ first exhibit for their Markman briefs should include hundreds of patents including signals and their briefs should argue that the ordinary meaning includes signals in the absence of an express disavowal in your specification.
“business method”
Although they are currently somewhat out of favor, I would not be surprised to someday witness a comeback of means plus function claims. The dominant case law requires, however, that an applicant who claims using means-plus-function language “must set forth in the specification an adequate disclosure showing what is meant by that language. If an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112.” In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc).
Regarding “objects”, see also, Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1313-14 (Fed. Cir. 2007) (limiting claims in part based on specification’s identification of the “primary objective” of the invention and its distinction of the invention from the prior art based on that objective).
Regarding negative implications arising out of use of the term “invention” in the specification, see, e.g., Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007) (“[w]hen a patent thus describes the features of the ‘present invention’ as a whole, this description limits the scope of the invention.”); Honeywell Int’l, Inc. v. ITT Indus., 452 F.3d 1312, 1318-19 (Fed. Cir. 2006); Scimed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343 (Fed. Cir. 2001) (“[T]he characterization of the coaxial configuration as part of the ‘present invention’ is strong evidence that the claims should not be read to encompass the opposite structure.”); see also Andersen Corp. v. Fiber Composites, LLC, 474 F3d 1361, 1368 (Fed. Cir. 2007) (specification’s description of a “critical element” found limiting).
But in partial support of Mr. Cole’s second posting, see Praxair, Inc. v. ATMI, INC., No. 2007-1483 (Fed. Cir. 9/29/2008) (Fed. Cir., 2008):
However, it is generally not appropriate “to limit claim language to exclude particular devices because they do not serve a perceived ‘purpose’ of the invention. . . . An invention may possess a number of advantages or purposes, and there is no requirement that every claim directed to that invention be limited to encompass all of them.” E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1370 (Fed. Cir. 2003) (citation and footnote omitted); see also Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., No. 2007-1363, 2008 WL 4072052, at *6 (Fed. Cir. Sept. 2, 2008) (quoting and applying E-Pass). The language here does not suggest that each embodiment of the invention must serve the uniformity objective.
But nearly all of the parts of the specification that discuss uniform capillaries cover only specific embodiments of the invention of the ’609 patent and not the invention as a whole. As such, these parts of the specification are not properly construed as limiting the meaning of the claim language. Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed. Cir. 2007).
The exception is statements such as the language in the Summary of the Invention section of the ’609 specification that “[t]he apparatus of this invention provides a flow restrictor in the storage container in the form of a tube having multiple uniformly shaped capillaries . . . .” ’609 patent col.3 ll.54-56. A somewhat similar statement appears in the Detailed Description of the Preferred Embodiments. See id. col.7 ll.27-29 (“A useful feature of this invention is the provision of the essentially round outer
cross section of the tube with the relatively uniform internal capillary passages.”); see also id. col.9 l.66-col.10 l.9 (“A number of other forming techniques and material properties can be important to obtaining a uniform multi-capillary structure. . . . Uniformity of the resulting capillaries also improves as the alignment of the conduits in the drawing stock becomes more parallel.”).
Although these statements appear to pertain to the invention overall, rather than a specific embodiment of the invention, they are contradicted by a number of express statements in the ’609 specification clearly indicating that uniformity of the capillary tubes is a feature only of certain embodiments, and not of all embodiments, of the invention. The Summary of the Invention states “in a limited apparatus embodiment this invention is an apparatus for controlling the discharge of pressurized fluids . . . . The apparatus comprises . . . [a] tube defining multiple and uniformly sized capillary passages . . . .” Id. col.4 l.66-col.5 l.17 (emphasis added). Another passage from the Summary of the Invention confirms this understanding, describing capillary uniformity as an aspect of “a broad embodiment [of] this invention”. Id. col.4 ll.22-34 (emphasis added). Likewise, the Detailed Description of the Preferred Embodiments section of the specification explains that “[t]he preferred structure of this invention is a uniform multi-capillary assembly that virtually eliminates the presence of irregular capillaries. . . . The most preferred form of this structure eliminates all irregular capillaries.” ’609 patent col.7 ll.29-61 (emphases added).
Finally, the structure of the claims confirms that uniformity was not intended to be a feature of the invention as a whole. The specification expressly defines the uniformity of different uniform capillary passages as a “variation in average diameter between
capillaries not exceeding 15%.” Id. col.7 ll.37-40. While no mention of uniformity appears in independent claim 1, the uniformity criterion defined in the specification —“variation in diameter of different capillary passages does not exceed 15%” — is set forth in dependent claim 4. Id. col.11 ll.25-28. It therefore appears that the uniformity requirement, as set forth in the specification, was intended to be added by dependent claim 4, and was not already present in independent claim 1 or the invention overall.
If you have software claims, words in the specification like signal, carrier, network, wave, distributed, or anything that even remotely suggests that your program may be transmitted from one computer to another on anything other than a physical memory-type storage medium risk 101 rejections from particular examiners and art units, even if the claims are in proper Bauregard format.
The only words I’m aware that you should absolutely never use are the seven words made famous by the late George Carlin.
Anything else can be used or misused depending on the context. Just be careful out there, and keep the peace.
MHO, YMMV, etc.
I assume we’re talking about the detailed description and not the claims. No-no words for the detailed description include ‘Means’ or ‘step’ since “means for” and “step for” are claim language having signigicant legal meaning and you don’t want to f’ with that by using those words in the detailed description. Any word ending in ly, obviously, essentially, necessarily. Instead of ’emboidment’, use ‘example’. Instead of “is” use “may be” since “is” ties the hands of patent litigator.
“”Aspect of the invention” in place of “object.””
Whaa??? Scratch “of the invention” entirely! Look up the definition of “aspect” and ask yourself if you want to say that something is “an aspect of the invention.”
Here is a long list which I have collected over time (which may include the NO NO words already submitted): “The invention …,” essential, must, needed, desirable, usual, correct, required requirement, laborious, expected, never, must, significant, majority, peculiar, most, should, surely, none, only, rarely, “limited success with,” “free of,” “substiantially free of,” typically, highly, absolutely, frequently, difficult, conveniently, “time consuming,” commonly, generally, uncommon, usually, few, “as much as,” “substantially XXX,” “majority of XXXX,” special, “fully”, “clearly”, “concisely” and “exactly.” Some of then are not really NO NO, but I would think that if you use them, you better have a definition somewhere.
With respect to “surprisingly discovered,” see Purdue Pharma L.P., et al. v. Endo Pharmaceuticals, Inc., et al.
With respect to “standard,” “conventional,”
“normal,” see PC Connector Solutions LLC v. Smartdisk. Claim terms such as “standard”, conventional”, and “Normal” limited the claim limitations “to technologies existing at the time of the invention.”
With respect to “at least one of A, B, C, D, and E” — not a NO NO, but proceed with caution with the rather screwy case, SuperGuide Corp. v. DirecTV Enters., Inc., 211 F. Supp. 2d 725
With respect to “contain” or “containing” not a NO NO, but why bother, why not just use “comprise” or “comprising” to avoid disputes down the road. See Mars, Inc. v. H.J.Heinz Co. 03-1617
” I have heard experienced biotech practitioners say that one should never use the word “embodiment” in a patent application”
On what planet? That is the stoopitest thing I’ve heard in quite a while.
This is what happens when people whose only personality trait is anal retentiveness are allowed to practice law: thoughtless, reactionary bullcrap.
I would appreciate it if every “no no” on the list that you are developing was supported by a citation to a case where the particular “no no” was instrumental in an adverse outcome. I still see recent decisions where the inclusion of “objects” in the SUMMARY, for example, did not play any role in patent claims that were held valid and infringed, so cases that turn on “objects” would be a good start. Would everyone who has contributed please go back and support the contribution with case law? You can exclude “means” where case law has been well developed and is fairly widely understood.
“Nothing wrong with ‘said’ …” other than its awkward legal pretentiousness and absence from ordinary English. The convention is to name an element the first time as “an element” and thereafter refer to it as “said element”. Why not simply subsitute “the” for “said”? (Although I’ve heard of hidebound Examiners who object to this “unconventional” usage even when “the” is used consistently after first naming the element.)
I agree with Paul Cole’s comments. Whether a word is a “no no” oftentimes depends on perspective: litigators want ultimate flexibility; prosecutors have to commit to get cases allowed. It also can depend on one’s area of practice. I have heard experienced biotech practitioners say that one should never use the word “embodiment” in a patent application, an idea that most mechanical practitioners might find ridiculous. Finally, one’s view of “forbidden words” may develop from one negative experience with an outlier examiner. It is unclear that an event with incredibly low probability should generally rule one’s actions.
Perhaps a few simple rules might suffice. For example, one rule might be that the language should be chosen based upon the concept that the typical application should be assumed to consist of a large number of alternative “potential” inventions; and prior to prosecution, the drafter will not know in advance which of these alternative inventions will end up surviving. This puts a first constraint on the language: “don’t be too specific.”
A second balancing concept, however, is that the fundamental “bargain” of patents, adequate disclosure for protection, (e.g. 35 USC 112) must continue to be respected. This puts a second and balancing constraint on the language: “don’t be too general.”
Ideally the drafter should, in conjunction with the client, know enough about the underlying technology to achieve a good balance between these two constraints. Too early a fixation on one of many possibilities hurts the client, while language that is too general hurts the client by running into 35 USC 112 issues, and also denies the public the benefit of the disclosure.
Also in my opinion, “informing the public” means that the invention should have well written “background” and “summary of the invention” sections. Omitting these has some negative implications, such as lack of candor, or lack of possession of the invention, that could reflect poorly on the profession, and may also hurt the client by annoying the examiners.
Put it another way, it is important to gain the examiner’s trust. A properly written background and summary of the invention can both educate the examiner, and help the client by streamlining prosecution (avoiding wasting valuable resources on side issues).
“The word “may” can be interpreted as expressing doubt, incompleteness or uncertainty.”
Only if you read into it more that what it says.
“what about ‘consisting of’ in a non-chemical application?”
There’s absolutely nothing wrong with it, like almost all of the suggested no-no’s here, IF THAT IS WHAT YOU MEAN. Use it, enjoy it, but just be aware of exactly what it means.
A few of the suggestions above are or have become terms of art, and thus carry all sorts of baggage with them. “Object of the invention” is one of those. I honestly don’t know what it means, so I don’t use it. (I’m not sure I know what an “aspect of the invention” is either.) “Prior art” is another. If you’re referring to something specific, say so. Otherwise, leave it out.
what about “consisting of” in a non-chemical application?
In response to Breadacrumbs and “posing as a vitrioloc banterer we do not seem to have heard from Malcolm Mooney yet.
“the invention is …” (and variants thereof)
“most preferred …”/”most preferably ….”
“obviously, …”
“in a first [second], [third] embodiment …”
This should be fun; I’m looking forward to the compilation. Get ready for the melee as prosecutors defend their most-favored monikers.
It is amazing how many useful things are thrown away for fear of what might happen in litigation.
By all means cut out the definition of field of the invention. Ignore the fact that you can write multiple alternative definitions at the time of filing and by amendment to the claims select one of them during prosecution as the best definition. Ignore the fact that the CAFC likes definitions and calls for them to be included e.g. as in Sage Products Inc. v. Devon Industries Inc. Throw away the opportunity to argue that a prior art reference, though superficially similar, is not within the field of the invention (it works well in Europe and can work in the US). Throw away the opportunity to argue, with support from statements made in the specification as filed, that a secondary reference is in a field too remote to be considered by the skilled person. If you file in Europe throw away the opportunity to argue that a particular item of prior art is not an appropriate primary reference, and cannot be used to define the technical problem, because it does not fall into the relevant field of endeavor.
Don’t carry out a prior art search, and if you do never make an assessment which reference is in the closest prior art and therefore should find its way into the background section. (I agree with GP that the Background section is not part of a PhD thesis – usually an objective discussion of a single prior art reference in the field of endeavour of the invention is all that is appropriate).
Deprive yourself of the opportunity of systematically identifying every difference from what is disclosed in your selected reference, and identifying a subset of differences with associated benefits that should be mentioned in the specification. Turn a blind eye to the theorem that if you have correctly identified all the differences and claimed them, then if there is inventive subject matter in the application you should have a claim to that subject matter and that this remains true even if more relevant prior art later turns up. When drafting your claims the “know nothing” and “seat of the pants” approaches are more dependable – use the Force!
Don’t mention the single prior art reference you have found in a Background section because (a) it might give the Examiner the impression that the inventor knows what he or she is talking about, and (b) some nasty litigator might question why you selected that reference and you won’t have explained it to the inventor(s) at the time, and you won’t have made a file note or other contemporaneous record of the reasons for your selection.
Write a background section not based on the actual disclosure of a particular reference but instead full of cloudy generality that may turn out to be wrong. Your “know nothing” approach will commend itself to any reasonable examiner and might even escape comment by your feared litigator.
Definitely omit to mention the advantage that flows from each new claimed combination of features. Case law going back to 1803 on both sides of the Atlantic supports the proposition that this is evidence of invention, and the proposition has even found its way into KSR v Teleflex, so it is definitely not anything you should be using to your advantage. In Europe you could use the advantage to reconstruct a credible technical problem. Definitely you would not want to be in position to do that.
Undue fear of litigators (parakeltophobia, derived from the Greek word parakeltos?) leads to featureless specifications that do not command respect. The bland lead the bland. If this comment is in somewhat outspoken terms then it reflects the seriousness of the topics under discussion.
“Thank you Dennis for a refreshing topic that (so far) leaves out the vitriolic and juvenile banter that seems to come with some of the more contentious subjects.”
Bite me.
Thank you Dennis for a refreshing topic that (so far) leaves out the vitriolic and juvenile banter that seems to come with some of the more contentious subjects.
I completely agree that the background section and the summary are just landmines you plant yourself.
Had to direct a client elsewhere once. Their lead inside had a PhD and was insisting on a 9 page background. I calmly explained that this wasn’t a paper for publication in PNAS, and that a 9 page background was a really bad idea. She said proper attribution had to be included. I said, “see yuh.”
On the other hand, when you get the objection from the Examiner for the spec, you’ve created problems in a different way.
This is a response to Mr. Cole’s statement that “During examination it is necessary to decide what the invention really is, arrive at a definition and commit to it.”
Stated more generally, upon paying the Issue Fee, the applicant has at least financially committed to substance of the allowed claims, which can define any number of inventions. For various reasons, other potentially allowable claims, defining other inventions, might have been deferred for pursuit in continuing applications (CON’s, divisionals, etc.).
Realistically, any overly firm commitment “to what the invention really is” too early in the process runs a meaningful risk of being thwarted by unknown and/or previously unknowable (hidden) prior art. Until a US applicant has a fair shot at knowing all relevant prior art before filing, competent drafters are probably wise to build much flexibility into their applications.
On the opposite side of the coin from the no-no words, keep in mind the opportunity to explicitly define any claim term (or specification term) in the application. Providing such explicit definitions can serve to limit the scope of the claimed subject matter, but can also serve to limit what prior art a PHOSITA would consider to be pertinent with respect to that claimed subject matter.
A hearty second to everything stated above by Mr. Hodges.
Some sense and much nonsense has been written on this topic.
Judges, whether in US or Europe, are very bright people and are more influenced by the overall merits of the case than the presence or absence of particular buzz-words, although such words can have binding effect if used incautiously and even if not may provide a pretext for the court summarily reaching a decision adverse to the patentee that it feels inclined to make but would otherwise find it harder to do. I thouroughly agree with the comments of “European practitioner”.
We should all agree with Isaac that to say that a feature is necessary, crucial or critical when it is not can have disastrous consequences.
And Max Drei is right about “surprisingly”. A patent specification should be a straightforward document free of gratuitous value judgements – so just say what the result is and leave it to subsequent evidence and argument whether it is surprising or not.
“Preferred” covers both rational and irrational preference. If a feature is preferred for a reason and is labelled clearly as preferred but not essential then there is no reason not to use that language, especially if the reason for the preference and the results that are obtained are stated. But if it is a mere description for an arbitrary group of embodiments (as often in chemical specifications) then it is misused and a potential source of trouble. Why not simply say that some embodiments incorporate this feature or have that structure?
Theree is a school of thought, especially amongst those in the US in the mechanical and electrical arts, that we should draft very bland patents. The specification as originally filed needs to be a flexible document since much can happen in the 3-6 years between initial filing and possible grant, and it is dangerous to be irreversibly committed to any formulation of the invention at the outset. But the inventive features have to be contained in the specification as filed, and there should be sufficient supporting information that their significance can be recognised. During examination it is necessary to decide what the invention really is, arrive at a definition and commit to it. “Hier steh Ich; Ich kann nicht anders” as Martin Luther said. We may subsequently be able to amend, but only with difficulty, and often we have to stand or fall with one of the issued claims. Abraham Lincoln, when he practiced law, knew the importance of identifying the key point in a case and fighting on that point. If there were ten points he might concede on nine of them knowing they were worthless but would fight and win on the tenth knowing that it was critical. Eventually we have to do the same job in our field of specification drafting, and to get it right.
As for rationales…
There is no legal requirement in the US to use the word “invention” within the application, and doing so, whether with respect to an “object”, “aspect”, “gist”, “heart”, “essential element”, or any other use of the term “invention”, often invites limiting the construed scope of the claims to whatever subject matter is described as the “invention”. That is, given that allegedly only the claims define the invention(s) of a US patent, and given that those claims can change after an application is filed, why leave other characterizations of the “invention” laying around in the spec to confuse judges, juries, experts, opponents, etc.?
Likewise, there is no US legal requirement to label any section of the specification as a “Field of the Invention” or “Summary” (“of the Invention” or otherwise”). Including a “field” or “summary” might limit interpretation of the claims to only subject matter that a PHOSITA would believe to reasonably fall within that field or summary.
Speaking of claim constructions, opponents have tended to have an easier time convincing district court judges (and sometimes Federal Circuit judges) of particular claim constructions when the applicant helps out by describing claimed subject matter using absolute and/or very limiting terms, such as terms pointed out in previous posts and certain other terms (e.g., necessary, require(s), crucial, critical, obviously, very important, essential, key, necessarily, must, always, never, only, maximize, minimize, eliminate, prevent, etc.).
There is no US legal requirement to include a section titled “Background” (“of the Invention” or otherwise), and doing so can prove troublesome. For example, the content of a “Background” is sometimes treated (and occasionally rightfully) by the examiner as an admission of prior art (“APA”). Why create that hassle? For that matter, why compare anything about the “invention” or its embodiments to anything done by others? Why not save those attempts to distinguish over the prior art for when the examiner or an opponent has actually put specific prior art in contention against a particular claim? Moreover, any inaccuracy in the characterization of prior art, whether presented in the spec or later, potentially can be grounds for a messy inequitable conduct allegation. So if any discussion is believed required of a prior art reference, why not stick strictly to quoting that reference?
Similarly, there is no US legal requirement to discuss what is “known”, and doing so often invites poorly-trained examiners to insist that such discussion is an admission of prior art, even when there is no attribution of what is “known” to those other than the inventor(s). Why not simply cite known non-cumulative material prior art via an Information Disclosure Statement?
As pointed out in a previously posting, there is a US legal requirement to disclose the preferred embodiment, if any, of the inventor(s) as of the effective filing date. But there is no legal requirement to label any particular embodiment as preferred, and doing so can provide a more detailed and/or efficient infringement roadmap to potential pirates, and/or invite certain judges to construe asserted claims to cover each such labeled preferred embodiment. See, e.g., the line of cases that includes MBO Labs, Inc. v. Becton Dickenson & Co., 474 F.3d 1323, 1333 (Fed. Cir. 2007) (quoting On-Line Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH, 386 F.3d 1133, 1138 (Fed. Cir. 2004) (“[a] claim interpretation that excludes a preferred embodiment from the scope of the claim is rarely, if ever, correct”))).
Especially clear today in light of Bilski and the Board’s various “creative” interpretations of it, is the fact that the law and/or interpretations of the law can change over the life of an application/patent. With that in mind, there is nothing necessarily wrong, and there ultimately could be advantages in, discussing “means”, “signals”, “software”, “business methods”, etc., in the specification. Nevertheless, care should be taken to avoid locking any particular subject matter to potentially contentious terms without being able to claim that subject matter in a manner that excludes or avoids those terms. For example, a particular process might be reasonably and/or advantageously described as capable of implementation “via software, firmware, and/or hardware, such as a processor and/or processor means, which can include one or more microprocessors, integrated circuits, FPGA’s, optical processor’s, etc.”.
As discussed in MPEP 2173.05(b) (referenced in a previous post), relative terms and/or terms of degree (big, small, tall, short, heavy, light, etc.) can be problematic, particularly in claims, when no standard for measuring that degree is provided in the spec and a PHOSITA would not be reasonably apprised of the scope of that term. That MPEP section explains why other terms, such as “about”, “essentially”, “relatively”, “substantially”, “similar”, “or the like”, “on the order of”, “type”, “comparable”, “aesthetically pleasing”, “superior”, etc., can raise concerns.
Although “incorporation by reference” can be a handy tool in the US, it can create enablement issues in foreign jurisdictions that do not give effect to the “incorporation” statement. If there is any possibility of filing outside the US, it is generally better to simply insert the otherwise “incorporated” material into the priority application.
Speaking of foreign jurisdictions, while many prefer to see a problem-solution approach, under KSR, discussions of a “problem” can create trouble for a US patent. As explained by Hal Wagner, “[w]hat creates a special and immediate challenge for patent application draftsmanship is the KSR linkage between a ‘problem’ that is be solved by the patentee and the common sense of a worker skilled in the art who is motivated by the problem to seek out an ‘obvious to try’ solution.” In support, Hal quotes KSR Intern. Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742 (2007) (“[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.”)
Lots of rationales to chew on.
How about some yes-yes words?
“for example” and “such as”
Several court decisions have declined to limit claims to limited embodiments and subgenera described in specifications because they were phrased as examples.
Another no-no word:
“May” The word “may” can be interpreted as expressing doubt, incompleteness or uncertainty. I saw an Interference lost because a key sentence using the word “may” was interpreted by the Board as expressing uncertainty about what was stated.
I agree with European Practitioner as far as needing to avoid confusing general, broad statements of the invention with specific embodiments. However, as far as “quick fix” rules, “rules” and “words to avoid” can be very helpful because some are very dangerous and avoiding those terms reduces risk. These are not absolute “fixes,” but they make writing a less risky application much easier.
Regarding cases that establish that a word is a no-no word, I do not have time to list them. However, the debate above about whether any case “prohibits” a word or renders its use “always” a no-no is misplaced because cases do not make such rules or pronouncements. However, there are cases that have interpreted a sentence such as “the invention is…” as limiting the claimed invention to what was stated in the remainder of the sentence, regardless of the words in the claims or other broad statements in the application. The problem in this example is two-fold. First, the “invention” should be whatever is described in the claims. Because claims are often amended during prosecution, a specification filled with sentences pronouncing what “the invention is” can and has been used by courts to limit otherwise broad claims. The second problem is the use of imperative forms of the verb to be. This indicates (and can be used by a court to indicate) that the subject of the sentence MUST be whatever is stated. Thus, every sentence in imperative form describing the invention in less than the broadest terms could be interpreted as stating that the invention be limited to the more limited statement.
The grammar pitfall also applies to other ways subgenera of inventions are described. For example, in the common situation where you are trying to describe a specific component that can be used in most, if not all, configurations of the invention, it is not uncommon to see “In one embodiment…” or “In some embodiments….” The problem is that this could be interpreted as limiting the component involved to a single embodiment or to less than all of the embodiments it could be used with.
The point is, not only words, but grammar can be used against you.
Also, in claims, the terms “conventional,” “normally,” “traditionally,” and “standard” limit the described feature to technology existing at the time of the invention.
“tax”
Nothing wrong with ‘said’.
Generally, it’s only partly case law that leads us to avoid certain words. Mostly it’s peculiar knee-jerk reactions from Examiners that respond to them like Pavlov’s dogs!
“Aspect of the invention” in place of “object.”
I’d also like to vote for “said.” “The” works just as well without the pretentious edge, and makes reading and understanding claims easier for inventors and other non-patent professionals. [My favorite pro se prosecuted patent has claims filled with “the said ____ ” and the examiner did nothing to help the applicant clean up the language. Check out 5,918,159.]
It falls outside of the scope of the assignment, but I consider any term in the claims not found elsewhere in the specification to be a no no word.
what are the various cases which urge us to avoid these words? Please list, fellow commenters
4Y Associate | Feb 06, 2009 at 08:24 PM — recommends against “intended use” terms — I think that there are appropriate times when they can be used
I do not believe in “quick fix” rules, such as avoiding a list of words. At least the case law I have studied, it is not the use of a particular word per se that has caused problems, but the context that is being conveyed by that word. (Maybe someone can provide me with such case law?)
Following Euroean practice, I am careful to establish the most general form of the invention and problems that it solves. Having done this, the expression “object of the present invention” is not a problem as long as it is used with reference to this most general form of the invention.
The problem with many specifications that I have seen have problems in litigation is that they confuse general statements of the invention with specific embodiments. If you do that, I do not believe any list of “no no” words will help you.
Regarding CJ question about best mode, it is my understanding that the best mode must be included but does NOT have to be labeled as the best mode. But it can’t be buried either.
MaxDrei, could you please explain your comment about “surprisingly,” or point to the case you’re referring to? Sorry, I missed this case, and I’m not sure why “surprisingly” would be considered a negative.
for biotech app.: prevent and prophylactic.
How do you avoid running afoul of the best mode requirement if you don’t least mention, for example, compounds that are generally/especially preferred over others?
necessary, requires, must, always, never, only, to name a few…
my new two no no words: signal, software ;)
4Y Associate:
Maybe “preferred” as in “preferred embodiment”? I think there is a debate as to whether the embodiment identified as the “preferred” embodiment would limit claim construction.
All you need to do is use “preferred embodiment” for every embodiment described in the application.
What I would like to see is the rational for a word being a so called “No No Word”. Simply saying, “don’t use it”, does not help anything.
“novel”, “new and improved”, etc.
@David
I think “intended use” terms is a good suggestion. “such that…,” “whereby…,” “can…,” etc. There’s a whole section on intended use terms in the MPEP.
present “invention” is a no no
“embodiment” is OK
“preferred” embodiment doesn’t help
(many) embodiment(s) r OK
“preferred” embodiment doesn’t help
“r. u. a. f’k. i.” is a no no in a response.
“Summary of the Invention”
“Field of the Invention”
whereby (in claims)
“signal”
“means”
eliminate, maximize, minimize, motherf—er
never, always, obviously, very important, essential, key, necessarily
Some of these were taken from link to michbar.org and link to krajec.com
The MPEP flags the following: at least about, -type (as in ‘ZSM-5-type aluminosilicate zeolites’), on the order of, substantial portion, or like material, comparable or superior, aesthetically pleasing, or similar
link to uspto.gov
important?
I once had a client insert “hypotehtical” before “embodiment”. I think that won the no-no-hell-no prize for me. Kudos!
Maybe “preferred” as in “preferred embodiment”? I think there is a debate as to whether the embodiment identified as the “preferred” embodiment would limit claim construction.
But, perhaps I’m wrong.
How about “surprisingly” as in “Surprisingly, it has been found that…” given recent events in Europe, in pharmaceutical patent litigation?
require(s)
necessary
crucial
critical
…( synomyms)
Of course one might use them in describing PA in the background section.