Best Practices for Ensuring Thorough Specification

June 16, 2017 Daryn Teague

For veteran patent lawyers, the 2006 Federal District Court decision in the Honeywell International v. ITT Industries case caused some head scratching. In affirming a lower court ruling that ITT did not infringe on Honeywell’s fuel filter patent, the Court found that the invention was identified only to be the “fuel filter” and not other parts of the “fuel filter system” because the patent application referred to the filter as “the invention” for which they were seeking patent protection.

The Court’s opinion put patent drafters on notice: If you use the words “the invention” in your applications, you may risk limiting the scope of that patent in ways that you never imagined.

“It’s weird but you’ve got to play by the rules,” said Joseph Root, an IP attorney, author of Rules of Patent Drafting, and founder of QualiPat. “The folks in the black robes have ruled and it’s our job to listen.”

Root advised that, when drafting patent applications, just don’t use the word “invention” at all. Instead, refer to “the disclosure” or some other terms that avoid the risk of unintentionally limiting the scope of the patent and to withstand subsequent challenge.

This example of “Patent Profanity” was discussed by Root and Gene Quinn, a patent attorney, law professor and founder of IPWatchdog.com, during a webinar hosted recently by Reed Tech to provide IP practitioners with some practical insights on how to draft the most challenge-proof patent applications.

The webinar, “Optimizing Patent Applications: Drafting to Withstand Challenge,” can be viewed on demand by clicking here. This is the second in a series of three blog posts recapping some of the highlights from that webinar.

“Make sure that you’re avoiding language in the patent application that might leave you trapped in a ‘single-embodiment’ for the patent you’re seeking,” said Root. “No matter whether the inventor provides one embodiment or five, the patent drafter’s job is to build in as many alternatives as they can imagine. Then those alternatives should be broadened further with explanations showing how the actually disclosed material is exemplary and should be construed as illustrating, not limiting, the scope of the claims.”

Quinn also raised the importance of using variations as a best practice for ensuring thorough specification. Variations simply change a starting material, work piece, etc.

“To determine whether sufficient variation has been introduced in the specification, employ a simple test,” he explained. “Taking the broadest claim, look at each and every term – including terms in the preamble – and look back in the specification to see exactly what support that term has. Then determine how many different variations and forms apply to the subject matter represented by that term.”

Quinn reminded webinar participants about the value LexisNexis PatentOptimizer® can offer to help patent drafters choose their words wisely. He pointed out how patent drafters can highlight a term from their patent document and search a plethora of popular online reference sources, including the proprietary LexisNexis patent thesaurus, for alternative terminology to employ. Created by patent attorneys for patent attorneys, PatentOptimizer® streamlines patent drafting and analysis and serves as a critical quality control check when drafting patent applications or dissecting issued patents.

Please check back soon for Part Three in our blog series with highlights from the “Optimizing Patent Applications” Reed Tech webinar.

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