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   any reasons NOT to use incorporation by reference?
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   Author  Topic: any reasons NOT to use incorporation by reference?  (Read 888 times)
still_studying
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any reasons NOT to use incorporation by reference?
« on: Aug 8th, 2007, 10:04pm »
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Are there any situations where an incorporation by reference can hurt a patent application or a resulting patent?
 
If a competitor's earlier patent explains motivation for the general type of invention, and if that patent will be cited as prior art in any case, would it nevertheless be inadvisable to IBR it as a general rule, or are there specifics to look for in making a decision on whether or not to IBR it?
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MrSnuggles
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Re: any reasons NOT to use incorporation by refere
« Reply #1 on: Aug 8th, 2007, 11:32pm »
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If I incorporate by reference (IBR), I usually do two things: (1) only incorporate the portion of the document that I need, be specific, e.g., page and line numbers and (2) have a statement in my application that states "where there are inconsistencies between this document any any document incorporated by reference, the present document controls." (or something similar, better phrased).
 
Basically, I worry about incorporating definitions or limitations that are inconsistent or unwanted with respect to my application.
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iploya
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Re: any reasons NOT to use incorporation by refere
« Reply #2 on: Oct 2nd, 2007, 2:20pm »
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What Mr. Snuggles said.
 
Plus,
 
To elaborate, when you incorporate by reference, you have to worry about what a whole lotta claim terms mean in the incorporated reference, and how they will be construed in light of what you are now describing in your app.  If someone else wrote the incorporated patent, then chances are they wrote that reference in a different mindset than you write yours, with their own preferences and nuances and intentions, along with all the associated human imperfections that occur in every person's writing -- the gap between what they meant to convey ideally and the way it actually went down on paper.  So any weaknesses or mistakes in their app get sucked in and probably magnified in the context of your app.
 
Further to this point, you have to be damn sure you use consistent terminology because chances are you are going to use a word in a different way than it was used in the incorporated app.
 
I and most practitioners I know avoid incorporation by reference as a general rule.
« Last Edit: Oct 2nd, 2007, 4:14pm by iploya » IP Logged
patent_type
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Posts: 81
Re: any reasons NOT to use incorporation by refere
« Reply #3 on: Oct 2nd, 2007, 4:32pm »
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Um, what MrSnuggles and iploya said.  And to add, sometimes incorporating by reference can expand what art the examiner can look in to find art to combine to reject the claims of your application.  Not that the PTO needs any encouragement to look outside your art to find references to use in a rejection  Grin .
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