What do you call it? For almost two-thirds of you, it’s the “specification”

By Jason Rantanen

First of all, I’m overwhelmed by the survey responses on § 112(a) – thanks to everyone who responded to this short survey.  You’re terrific.

As of this afternoon, over 800 readers had responded to the question about how you refer to the part of the patent application that is required by 35 U.S.C. § 112(a).  The graph below shows the distribution of responses. (n=720)

When asked “What term do you use most often to refer to the part of the patent or patent application that is required by 35 U.S.C. § 112(a)?,” sixty-three percent of respondents answered “specification,” while another twenty-four percent answered “written description.”  A notable minority (9%) said “detailed description.”  There were also some write-ins, although most of them were either “Spec” or “Disclosure”

Results were consistent for patent attorneys and agents, but none of the litigators who responded used anything other than “specification” or “written description,” while 50% of the examiners who responded used “specification.” (with the caveat that examiners and litigators are a smaller n).

In addition, after results started coming in I had some concern that the initial question was ambiguous, so modified the survey to give a random set of respondents the following question instead.  Responses were similar to the first question, with a bit lower rate for “specification” (58%) and a bit higher rate for “technical description” (11%) for this version of the question.

(n=115)  (I probably should have asked this question at the outset; hindsight looms large.)

Here’s the overall distribution of respondents:

  • Patent attorney: 68%
  • Patent agent: 11%
  • Litigator: 10%
  • Examiner: 5%
  • Other categories: 6%

Finally, here’s the “patent law” definition of  “specification” from Webster’s New International Dictionary of the English Language, Unabridged, Second Edition, published in 1957:

Specification

5. Patent Law. A written description of the invention or discovery and of the manner and process of making, constructing, compounding, and using the same, concluding with a specific and distinct claim or claims of the part, improvement, or combination which the applicant regards as his discovery or invention, this latter part being often called the claim.  When the term specification is used alone it includes the claim.

Thanks to the University of Iowa College of Law law library for pulling the definition from the 1957 edition of Webster’s for me. Also, note that response choices other than “Other” were presented in a random order to avoid any order bias.

26 thoughts on “What do you call it? For almost two-thirds of you, it’s the “specification”

  1. 6

    Prof. Rantanen, there are at least two theories expressed in the thread up to now, about why “the world” would love to know what word to use, when referring to the bit of the specification that precedes the claims.

    Do us all a favour will you. To settle the argument about what the MPEP calls the “Specification and Claims”, tell us do, why “the world” wants to know.

    1. 6.1

      Is there not enough intentional NOT understanding from MaxDrie already?

      Why then more of MaxDrei being an arse and pretending that there may be some issue with who wants to know (‘the world,’ really?) and WHAT it is that may be wanted to be known (the US Sovereign’s particular choice)?

      MaxDrie,

      MPEP 601 Contents of Provisional and Nonprovisional Applications spells this out.

      Why not see 35 USC 111 which describes the parts of the application?

      (a)(2) spells out contents
      A hint for you in (b)(2) deals with claims – not necessary for a provisional, but dictated by 112, and just above in (a)(2)(A), that same 112 controls the specification.

      Then, below in 37 CFR 1.51, at (b)(1), the single element of an application that is listed as the specification clearly states that such includes the claims.

      See mpep.uspto.gov/RDMS/MPEP/current#/current/d0e34301.html

      You are welcome.

      1. 6.1.1

        Take up with Prof Rantanen, anon, rather than with me, if you don’t mind, your thoughts about who “wants to know”. For he it was, in his post inviting us all to participate in his survey, who told us that “the world” wants to know.

        And of course I’m as well aware as anybody that the statute fixes the claims as being part of the specification. Given that reality, I’m just curious why not only a great many patent attorneys but also the MPEP happily discuss correspondence between the specification and the claims.

        I guess Prof Rantanen is curious too. But not you.

        1. 6.1.1.1

          Way to double down on the misdirection there, MaxDrie.

          Again, it is not about the “who” or the ‘where’ of that ‘who,’ as it is about the WHAT and the plain fact of how a particular Sovereign has chosen that WHAT.

          At the same time that you crow, “ And of course I’m as well aware as anybody that the statute fixes the claims as being part of the specification.” you continue to try to kick up dust and obscure the direct point provided to you.

          Why would you do that?

          As I noted – it is your very own actions that give credence to what Night Writer suggested.

        2. 6.1.1.2

          MPEP happily discuss correspondence between the specification and the claims.

          There is this thing, a notion, called context.

          I invite you to do more than merely word search and find a word that you think supports this view of yours and recognize the actual context of that particular sub-section of 35 USC 112.

          When you realize that context, you may recognize how silly your assertions have been on this thread.

      2. 6.1.2

        OT, anon but here is something the two of us have said often.

        >>Today it’s more and more difficult — and I think it’s a good development — to distinguish pure mathematics and applied mathematics,” says Lovász, who is at Eötvös Loránd University in Budapest.

        Lovász just won the Abel prize.

        link to nature.com

        1. 6.1.2.1

          Excellent link (as well as the other embedded link therein).

          Thank you.

          This very much aligns with my long provided shorthand of:

          math
          applied math
          Math(S)

  2. 5

    Did anyone else check the statute? It literally states the official name. Is the survey suggesting we should use the term consistent with the statute?
    “35 U.S.C. 112 Specification.”
    “(a) IN GENERAL.—The specification shall contain …”
    “(b) CONCLUSION.—The specification shall conclude with one or more claims …”

    1. 5.1

      Yes, me. I knew that the “specification” is the thing that “concludes” with the claims. End of debate, no?

      But stop. Wait a minute. Does that statutory definition perhaps, at a stretch, contain a trace of ambiguity? I mean, is it that the claims, as it were, draw a line under the specification, in the sense that, when you find yourself reading the word “CLAIMS” you know that you have finished reading the “specification”?

      That would explain why one encounters, so very often, the word string “specification and claims”. Take for example just one sub-title out of the MPEP:

      “2173.03 Correspondence Between Specification and Claims”

      How about that then?

      1. 5.1.1

        So my comment was justified.

        1. 5.1.1.1

          Yes. MaxDrei’s own dust-kicking points out a desire to muck up something that is well understood.

          As is often the case, he opens his mouth and proves opposite of what he asserts.

      2. 5.1.2

        No. The only “trace” is coming from one with a mind unwilling to understand.

        It is beyond clear that concluding with means that the claims are included.

  3. 4

    Wow, am the only old-timer who calls it “the teachings”?

  4. 3

    So what is the prescriptive name? What does Sheldon say?

    I hope this isn’t some attempt at removing the claims from 112(a) as another anti-patent judicial activism measure to weaken patents.

    1. 3.1

      Judging by the timing of your contribution just now, you are indeed a bit of a “Night” writer. Here in Europe it is nearly mid-dsay though.

      That lying behind this questionnaire is another dastardly plan to “weaken patents” strikes me as a stretch. I just took it at face value. But perhaps that’s the consequence of 40 years of communicating with clients in the USA, with attendant uncertainty the whole time, as to what exactly is the “specification” and what exactly is the “description”. Is this two names for the same thing. Or is it different names for different things? I can well imagine that a lot of people would like to see the confusion cleared up.

      1. 3.1.1

        Max >>>That lying behind this questionnaire is another dastardly plan to “weaken patents” strikes me as a stretch.

        Sh ut u p. You don’t know the American system or the anti-patent lobbyist and academics that are trying to burn down our IP system.

        And then the irony that you then post above that maybe the claims aren’t part of the specification. I am betting this “little” survey is about just that to accompany a paper.

        This is how professors are paid now. They get 100’s of K to write stuff like this. K street is on top of just about everything.

        1. 3.1.1.1

          The thing is, Night Writer, it is impossible for MaxDrie to NOT know the ongoing battle in the US innovation protection law domain.

          He has now well over a decade of direct attempts to have him be intellectua11y honest, and the level of effort that he must expend to maintain his views and (impolitely) disregard those that have tried to set him straight extinguishes ANY sense of him not having culpability.

  5. 2

    Dennis, thanks for all this. Here in Europe, the EPC decrees that the part of the specification that comes before the claims is “the description”. Everybody calls it that: attorneys, Examiners, judges, litigators. So when I refer to it in letters to clients in the USA, I am always in doubt what to call it. Often, I choose the word “specification” because i) it is my impression that this word will always be understood to be what we in Europe call “the description” and ii) if instead I use the word “description” some readers might suppose it to be confined to that part of the specification which comes after the sub-title Brief Description of the Drawings and ends just ahead of the Claims section of the specification.

    Readers: any advice?

    1. 2.1

      Is there a reason why you demarcate the section “before the claims” in a different manner?

      This may have generated the comment above by Night Writer.

      1. 2.1.1

        Yes, anon. The reason is that the part of the specification that is found sandwiched between the “Brief Description of the Drawings” and the “Claims” is often dubbed the “Detailed Description”. To abbreviate that to “Description” strikes me as a distinct possibility. You not?

        1. 2.1.1.1

          No.

          The reason is that ‘descripti0n’ is not the key portion of the title.

          Description – as that being a portion of the title – could easily CAUSE confusion since the claims and the figures ALSO describe the innovation.

          I of course am presuming that you are not sacrificing clarity for convenience – in that driver for ‘distinct possibility.’

          Of course, it IS a distinct possibility that some MAY be ultra lazy or ultra f00lish and choose convenience even when such choice causes confusion and LATER inconvenience.

          1. 2.1.1.1.1

            So, anon, when the standard paragraph of most every Office Action the EPO ever issues includes a standard paragraph imposing on Applicant a mandatory requirement to conform the “description” strictly with the claims, would you know instantly what that means?

            I’m not sure all US attorneys know. So, just to make sure, I explain that there is no prospect of allowance at the EPO until the invention described in the specification is exactly the same as the invention defined by the claim.

            Confusion can arise in that, traditionally, in the English language (in the UK as much as in the Webster) the entity going by the name “specification” includes the claims.

            So, for maximum clarity and minimum ambiguity, what should one call the bit in writing that comes before the claims, that the EPO requires to be in strict conformity with the claims?

            1. 2.1.1.1.1.1

              Your question is mixing Sovereigns.

              Here, we are talking about 35 US 112.

              1. 2.1.1.1.1.1.1

                Yes. Indeed. 35 USC 112. When patent people , in the routine course of their daily practice, in the context of 35 USC 112, of course, casually use the word “specification”, what do they mean? Do they mean the thing that includes the claims. Or do they mean the thing in writing that ends where the claims begin?

                As far as I can make out, there is some uncertainty here. As far as I can see, this entire thread is supposed to explore this uncertainty, to help Prof. Rantanen in his teaching activities. Nothing more than that. Nothing less than that.

                Not sure about you but at least as far as I’m concerned, that’s what I’m trying to do. The invocation of age-old and conventional terminology in the EPC or in pre-EPC UK Patents Act 1949, is no more than a device, a tool, simply to flush out the confusion that inevitably arises from the unfortunate wording of 35 USC 112.

                1. You are trying to help understand US…

                  By using the other-spectacles of the EP…

                  Do you get why this is an issue?

                  Do you understand how rude it is to yet again pretend that different Sovereigns may — and do — choose differently, and that your ‘here, wear my eyeglasses, they work for me” approach is NOT helpful?

  6. 1

    Besides the specification, drawings and original claims all being available for 35 U.S.C. § 112(a) support, in many cases one such part can be later amended if clearly supported by the disclosure in one of the other parts. [Even though the patent drawings are not mentioned anywhere in 112 [versus 113] and often not considered covered by the word specification.]

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