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Does the term “Invention” in the Specification Limit the Claims?


Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: February 13, 2013 @ 10:00 am
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There are some that will tell you that the use of the term “invention” or “present invention” in the specification will limit the claims. This misguided belief suggests that merely using the word “invention” or the phrase “present invention” in the specification creates a problem for the claims. I have heard this numerous times over the years. Every time I hear this it is like fingers on a chalkboard.

The way the objection to the term “invention” or phrase “present invention” manifests itself is in a matter-of-fact manner. I am told: “You cannot use the term ‘invention’ in the specification because it is limiting.” As if not using the term “invention” or phrase “present invention” saves the drafter from the problem of to narrowly describing the invention in the specification. If only inadequacy of disclosure were so simple to solve!

The reality is that there is nothing wrong with using the term “invention” or the phrase “present invention.”  Moreover, the belief that avoiding those terms inoculates a disclosure from insufficiency issues is an extraordinarily simplistic view of what the law really says.  Those that believe this are missing for the trees, and may be unwittingly making the very mistake that they are so desperately trying to ovoid through the excising of specific terms from their vocabulary.

What provokes this discussion here and now is an article I wrote and published on Saturday, February 9, 2013. The article is titled Working with Patent Drawings to Create a Complete Disclosure, and in the article I discuss the importance of fully describing an invention, including any and all variations and options. In the comments to that article a couple of individuals took issue with something that I wrote. Does the use of the term “invention” in the specification limit the claims?

Before proceeding, allow me to point what I wrote that lead to criticism. When explaining to inventors and others how to rely on drawings to describe an invention, both what is shown and what is not shown, I referred to drawings of a hamburger sandwich that my friend Autrige Dennis of ASCADEX Patent Illustration Services provided for this illustrative purpose. I wrote in one small part of the illustrative description the following:

In one particular version of the invention the first and second condiments are different (i.e., ketchup and mayo). In another particular version of the invention the first and second condiments are the same (i.e., double ketchup).

It was the use of the word “invention” that caused an alarm, as if the word in and of itself is problematic.

There is nothing wrong with using the word “invention” in the specification. If there were a prohibition against using the term “invention” in the specification that would be quite a ridiculous thing, would it not? At the end of the day a patent is seeking to protect an invention, so ignoring that a patent applicant wants to protect an invention and playing a semantic game that obfuscates that reality seems hardly useful if you ask me. Of course, any invention has many different manifestations. It is the failure to disclose those various manifestations, alternatives and options that is the problem, not the use of the word “invention” or the phrase “present invention.”

It is true that the Federal Circuit has unfortunately contributed to the mistaken belief by many that there is something inherently evil about the word “invention” or term “present invention.” The Court has said: “[w]hen a patent thus describes the features of the ‘present invention’ as a whole, this description limits the scope of the invention.” Verizon Service Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007). This, however, is a far cry from saying the use of the word “invention” or phrase “present invention” will import limitations into the claim or otherwise limit the scope of claims. The absolutist view that these terms are wrong or dangerous misses the point entirely.  The reality is that if you inartfully describe the invention to narrowly then you are stuck with that limited articulation. That is hardly newsworthy, and the use of the term “invention” or phrase “present invention” is wholly immaterial.

Consider the following first description:

“The stool has three legs of roughly equal length, which are attached to the bottom side of a relatively flat, smooth, circular piece of wood.”

Now consider this second description:

“The present invention is a stool that has three legs of roughly equal length, which are attached to the bottom side of a relatively flat, smooth, circular piece of wood.”

Now ask yourself these questions:

  1. How many legs does the device articulated in the first description have?
  2. How many legs does the device articulated in the second description have?
  3. Would a device having fewer than three legs be covered by the first description?
  4. Would a device having fewer than three legs be covered by the second description?
  5. Would a device having more than three legs be covered by the first description?
  6. Would a device having more than three legs be covered by the second description?

The answers to these questions are:

  1. 3
  2. 3
  3. No
  4. No
  5. No
  6. No

So what did the use of the phrase “present invention” in second description do? The answer is absolutely nothing. This is because the description, with or without the phrase “present invention” is only and specifically articulated as having three legs. The problem isn’t the use of some magic term or phrase, it is the fact that the description is specific and narrow. Thus, focus on some magic term or phrase misses the entire point of the Federal Circuit’s cases. If you articulate narrowly in the specification then your claims cannot cover broad, undisclosed articulations of the invention.

Not convinced? Take a look at this excerpt from Absolute Software, Inv. v. Stealth Signal, Inc., 659 F. 3d 1121, 1136-1137 (Fed. Cir. 2011). The Court per Judge O’Malley (with Chief Judge Rader and Judge Prost) explained:

It is true that, in some circumstances, a patentee’s consistent reference to a certain limitation or a preferred embodiment as “this invention” or the “present invention” can serve to limit the scope of the entire invention, particularly where no other intrinsic evidence suggests otherwise. See Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007) (“When 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., Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006) (noting that, “[o]n at least four occasions, the written description refers to [only one particular component] as ‘this invention’ or the ‘present invention'” and finding that the prosecution history does not support a broader scope).

On the other hand, we have found that use of the phrase “present invention” or “this invention” is not always so limiting, such as where the references to a certain limitation as being the “invention” are not uniform, or where other portions of the intrinsic evidence do not support applying the limitation to the entire patent. See Voda v. Cordis Corp., 536 F.3d 1311, 1320-22 (Fed. Cir. 2008) (although parts of the specification referred to a certain embodiment as the “present invention,” the specification did not uniformly refer to the invention as being so limited, and the prosecution history did not reveal such a limitation); Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1326 (Fed. Cir. 2008) (references to a specific embodiment as “the apparatus of this invention” and “a useful feature of this invention” in the specification “are contradicted by a number of express statements in the ‘609 specification clearly indicating that [the feature at issue] is a feature only of certain embodiments”); Rambus, Inc. v. Infineon Techs. AG, 318 F.3d 1081, 1094-95 (Fed. Cir. 2003) (although portions of the written description referred to the term at issue as limiting the claimed invention to a preferred embodiment, “the remainder of the specification and the prosecution history shows that Rambus did not clearly disclaim or disavow such claim scope in this case”).

What the CAFC is saying is if you describe your invention as having A, B and C and there is no support for the invention being anything other than A, B and C, then your invention is limited to A, B and C. That doesn’t import anything into the claims. It means you have disclosed your invention to narrowly. It also has absolutely nothing to do with the use of the term “invention” or phrase “present invention.”  Thus, those who focus on the use of the term “invention” or phrase “present invention” are completely missing the whole point.

What you want to do is describe the subject matter as requiring only the bare essentials, with as many other optional and variable features and characteristics as possible. The failure to do so will prove limiting and perhaps ultimately fatal regardless of whether you use the term “invention” or phrase “present invention” in the specification.

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Posted in: Gene Quinn, Inventors Information, IP News, IPWatchdog.com Articles, Patent Drafting, Patent Drafting Basics, Patent Drawings, Patent Prosecution, Patents

About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

20 comments
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  1. Claim 1. A stool having a plurality of legs of roughly equal length, which are attached to the bottom side of a relatively flat, smooth, circular piece of wood.

    In order to promote a discussion of this topic, I raise the following questions:
    Q1. Is Claim 1 supported by the first description? By the second description?
    Q2. Would a stool with 4 legs infringe Claim 1?
    Q3. Based on the first description, would the CAFC limit the scope of Claim 1 to 3 legs?
    Q4. Based on the second description, would the CAFC limit the scope of Claim 1 to 3 legs?

    I suspect you and I would have different answers to some of these questions. Thank you for your article.

  2. This is a comment from Steve Weinrieb, who posted it on LinkedIn and gave me permission to republish here.

    ++++++++++

    OMG! Finally some common sense on an overly debated issue! Bravo!

    One note however – IMHO – in the examples that you provided, with the three legged stool, I believe that the answers to questions 5 and 6 should be yes – a stool having, for example, four legs would by definition have three legs and would therefore come within the recitation of the claimed three-legged stool. The claim does not state that the three-legged stool has ONLY three legs. This is somewhat similar to the old joke “How many months have 28 days?” Normally, one might quickly say one, that being February, but the real answer is that all months have 28 days.

  3. John-

    1. In the first description it says the stool has 3 legs. That would one provide support for “plurality.” There are cases from the Federal Circuit that say that plural also implies singular. So there is authority that says “plurality” would mean one or more. At the very least “plurality” would mean two or more.

    2. I think the answer is yes.

    3. Depends on the panel I suppose, as is always the case at the CAFC any more. I think there is a likelihood they would limit the scope of Claim 1. Perhaps more likely is to simply find that Claim 1 doesn’t find support in the specification and, therefore, is invalid.

    4. My analysis is the same.

    The best way to do this is to simply explain that the invention is a stool, but can have any number of legs. That was the point of my article about working with drawings. If you show a stool with 3 legs in a drawing it is easy to say: “Shown in this embodiment is a stool with three legs, but in other versions the stool may have 4 or more legs. Likewise, the stool may be constructed to have fewer than three legs as well. For example, the stool may have a single leg provided that the leg is of sufficient diameter to provide…”

    -Gene

  4. I remember reading one Fed. Cir. opinion within the past 12 months where one of the judges, maybe Dyk, but I can’t remember exactly who, said (and yes I’m paraphrasing), “I don’t care what the claims say, I’m going to look to the specification to see what the patentee actually invented.” If that’s the type of “de novo review” of claim construction that’s going to be used, I don’t think it matters whether the term “invention” or “present invention” is in the spec. Judges are going to arrive at the result they want no matter what you say or write.

    Personally, I don’t use the term “invention” in the application. To me, the invention is whatever is described, enabled, novel, non-obvious, and particularly pointed out and distinctly claimed. YMMV

  5. Newer inventors and many experienced inventors, do not fully understand the meaning of “invention” in patent law.

    I my experience, using spec phrases that naturally direct/aid both the inventor’s and application drafters minds (& sub-conscious) toward fully exploring/generating/documenting more alternatives, can help generate better Specifications.

    “in one embodiment”
    “in another embodiment”
    “in an alternative embodiment”
    “in another alternative embodiment”

  6. Gene,

    The conversation here misses “the” mark.
    It is not use of the one word “invention” that is problematic but rather the notion that there is disclosed one singular “the invention”. Once you fall down that rabbit hole, it’s hard to climb back out.

  7. Gene,

    I’m with you that there’s nothing verboten about using the phrase “invention” in a patent application specification. What I usually do is to generally use this phrase in the context of there being many different “embodiments” or “aspects” (some broader, some narrower). Leaving the phrase “invention” out of the patent application specification is like saying a human shouldn’t have a heart because it will eventually stop beating. Also, the phrase “invention” is use through out the patent statutes, and is now a critical phrase in the new sections of the AIA that will come into play in about a month, so leaving out the phrase “invention” from a palent application specification is a Chickent Little “the sky is falling” approach that is utter nonsense.

  8. SB,

    Your correct about “the invention” not necessarily being one entity in a patent application. My late father proved that when, for some of the inventions he came up with, he used a variant of the “stack and roll” provisional but as non-provisional application that contained multiple inventive concepts, some related concepts but others not related concepts using also a variant of the old Markush group to link them into a “generic” independent claim. Indeed, the application spec, with perhaps the exception of the Background and Summary looked like several application specs spliced together (i.e., a “stack and roll” application). Dad didn’t care and even expected to get a restriction requirement; all he wanted to do was make sure all those inventions were at least in one application (and for the price of one basic filing fee, plus whatever excess claim fees were necessary).

  9. First, please turn off the Digiprove (C) protection. I wonder if you open yourself up to potential problems, as it makes you appear to assert copyright protection over things in which you have no rights (e.g., quotes from cases, quotes from other people, the words of your own commenters, etc.). Plus, it makes quoting a pain.

    Second, many follow the general rule that when no real good can come from a practice, and yet harm may flow from such a practice, exclude such practice. The quote from Verizon makes it clear definite harm may flow from calling something “the invention.” Until I see case law showing a positive result traceable to calling something “the invention,” it’s a risk not worth taking.

    Third, I don’t know if I’ve seen addressed one major reason I understand not to use “invention.” If one says “my invention” or “the invention” and describes a device including elements A-Z, there is the argument that a claim totally lacking element “T” is outside the scope of the claim. Restated, if I end up describing the pipe cutter I invention as “my invention [that] includes . . . a knurled surface,” and the claim is amended to remove the knurling on the outside surface, or never claimed a knurled surface, what now? Yes, yes, careful drafting. Yet, there are technologies more complex than pipe cutters, and every element to be omitted may not be 100% apparent (no one here ever wrote a spec or drafted a claim, and that found out it could be broadeded?), and careful drafting in my mind includes omitting techniques giving potentially marginal advantage (if any advantage at all) but which may result in disasterous disadvantages.

  10. Right on, Gene.

    What creeps me out is when I see someone who is tempted to say “The invention is the combination of A, B and C” think they have saved themselves by saying “The disclosure is the combination of A, B, and C.”

    Someone told them NEVER to use the word “invention” in the spec, and their workaround is simply to use another word, but retaining the same limiting disclosure and sentence syntax. Such Tomfoolery!

  11. I concur with you, Gene. I think people resort to such inflexible rules to protect themselves — oh, don’t sue me for malpractice, I was following the rules — when they are not comfortabel with a concept. If you are careful to distinguish between embodiments or examples of “the invention” and “the invention”, and if you are careful to avoid making sweeping statements along the lines of “the invention is” or “the invention requires” and refer instead, where appropriate, to “the claimed invention” or “the invention recited in the claims,” I think you will be fine. Use of “the disclosure” is, I agree, unnatural.

    Hi John Darling; I hope you’re doing well!

    Ken

  12. Dr. Moctor-

    Obviously you didn’t read the article. I provide a citation to an opinion authored by Judge O’Malley that showed that there are numerous instances where the term “invention” was not found to limit claims. Perhaps you should read the full article and maybe even that case and the others cited.

    If you and your client are happy with your drafting good for you. As I prove in the article there is nothing wrong with using the term “invention” or phrase “present invention.” The term or phrase are really irrelevant. What matters is whether the invention is too narrowly described. So you and others who want to pretend that the words are magic are missing the entire point of these cases.

    As far as your comment, if you think not using the term “invention” or phrase “present invention” allows you to broaden your specification to capture things not included in the description I really don’t know what I can say to help you.

    -Gene

  13. Ken,

    I’m great. Hope you are well.

    Like I said, I don’t use the term “the invention” in my apps, but that’s mostly because I’m not careful. :-)

    John

  14. Interesting discussion-

    Just focusing on the semantics perhaps misses the bigger picture of what you do with them, which Step Back hints at. Instead of calling it *the* invention, you could call it the *instant* or the *contemplated* invention, which would seem to leave the door wide open for further explanations of other possibilities within the same document. In this case the *instant* invention might represent the best mode as the inventor sees it, who would then be free to propose any number of other possible options.

    A Rose by any other name, IS still a Rose.

    The presented 3-legged stool puzzle is a classic example of what Not to do, as it is painfully limiting. Beyond the issue of how many legs, why in the world would any sane practitioner want to describe the shape of the seat portion as being a “relatively flat, smooth, circular piece of wood.”?!

    Why does it need to be circular and made out of wood? Why couldn’t it be made of any suitable material that might not be relatively flat or smooth?

    Stan~

  15. Stan,

    That is why you should leave it to the definition dissecting lawyers.
    No.
    A rose is not just a rose …

    1. A member of the rose family;
    2. A dark pink to moderate red.
    3. An ornament, such as a decorative knot, resembling a rose in form; a rosette.
    4. A perforated nozzle for spraying water from a hose or sprinkling can.
    5. A compass card or its representation, as on a map.
    6. …
    7. Past tense of verb, to rise

    source: http://education.yahoo.com/reference/dictionary/entry/rose

    The similar applies to use of the word “invention”.
    Be very careful when you play with that snake. :-)

  16. Touche’ Step Back-

    But then again an *invention* can also be either a noun or an adverb. The creative impulse might be called an invention or the proverbial inventive step, which suggests action, while a perfectly good time machine as proposed by H.G. Wells would be more properly described as a noun I would tend to think.

    I hope you understand that I am just teasing you a bit, as I very much respect your opinions. I suddenly realize that Gene has fixed the text box, which is greatly appreciated here.

    Ciao bella-
    Stan~

  17. One of the things that contributes to the prohibition against the use of the word “invention” in the specification is the general public is David Pressman’s book “Patent It Yourself: Your Step-by-Step Guide to Filing at the U.S. Patent Office”. If they walk away with one thing from that book; it is probably the prohibition against the use of the word “invention”.

    If someone is going to try and patent something themselves then I think it is very sage advice for them not to include the word “invention” because they will not have most likely artfully described their invention in the first place.

    If you know what you are doing and understand the law then you probably shouldn’t feel restricted by the use of any word, except possibly expletives, :)

  18. Stan,

    You state “proverbial inventive step, which suggests action” – but this is not necessarily so, as the definition of inventive step (I could be worn on this), includes the noticing and defining of what “the problem” is, without “action” in the traditional sense.

    You lost me on the H.G. Wells comment, as I think you may be conflating enablement into the discussion and it is not clear how that fits.

  19. Sorry: replace “worn” with “wrong”

  20. Anon-

    I just meant that an invention might be considered as a physical object, like a light bulb, which would render the term invention into a noun I am supposing. The Time Machine was perhaps a bad example, since one does not exist yet that I am aware of. Wouldn’t the inventive step require suggesting a solution to the identified problem? The action can be just mental of course, with no requirement for an actual object to be produced if the application enables the *invention*