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?
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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:
- How many legs does the device articulated in the first description have?
- How many legs does the device articulated in the second description have?
- Would a device having fewer than three legs be covered by the first description?
- Would a device having fewer than three legs be covered by the second description?
- Would a device having more than three legs be covered by the first description?
- Would a device having more than three legs be covered by the second description?
The answers to these questions are:
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.
For more information on patent application drafting please see: