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Topic: Inlcuding objectives in specification (Read 1682 times) |
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AndrewF
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Inlcuding objectives in specification
« on: Aug 24th, 2006, 10:26am » |
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Any thoughts on whether objectives of the invention should be included in the specification? Too risky if patent is ever litgated. And if you do you include them, do you put them in the background section or summary?
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Jonathan
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Re: Inlcuding objectives in specification
« Reply #1 on: Aug 24th, 2006, 11:03am » |
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I believe the general consensus on this issue is to not include an objects of the invention section or at the very least very carefully phrase them out in view of the claims.
Typically an objects section is included in the summary.
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JimIvey
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Re: Inlcuding objectives in specification
« Reply #2 on: Aug 24th, 2006, 12:30pm » |
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I agree with Jonathan, but I'll go even further and say don't include them at all -- even if you're very careful.
First, the form looks stilted and artificial and is tedious to read. If you're going to make your patent harder to read, you should have a good reason to do that.
Second, all too often (and perhaps necessarily), objects of the invention directly characterize "the present invention." And, they tend to do so using "and" rather than "or." Here's an example:
"It is an object of the present invention to make cars go faster.
It is another object of the present invention to make cars more fuel efficient."
What happens if some competitor makes something that infringes at least one claim literally but it doesn't make the car go faster? or doesn't make the car more fuel efficient? It looks as if your intent was to only cover things that make the car go faster and that make the car more fuel efficient. In short, when you explicitly state one or more objectives of "the present invention", what happens when an accused device doesn't achieve any one of the stated objectives?
Now, I've heard some practitioners say that the "objects" can provide support for changes in the claims that wouldn't have otherwise been in the application or to provide motivations for obviousness combinations as defensive publication. In response, I would respectfully submit that a properly written application would include all that stuff anyway -- see my post a few days ago about selling the invention (or at least an illustrative embodiment of it).
In short, if you need the "objects" in your application, your application is probably poorly written. If you don't need them, leave them out.
Regards.
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| « Last Edit: Aug 24th, 2006, 12:31pm by JimIvey » |
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James D. Ivey
Law Offices of James D. Ivey
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Isaac
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Re: Inlcuding objectives in specification
« Reply #3 on: Aug 24th, 2006, 12:43pm » |
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I seldom see objects or advantages in the summary that are not describe in the detailed description. When advantages are in the detailed description, the impact is easily tied to embodiments or examples of the invention while still providing the required support. That is not so easily done in the summary.
If the material only appears in the summary, then it seems to me that the chance that it may help someday is outweighed by the risk that the material might instead limit the scope of the claims as Jim warns.
Besides that, I don't understand how a drafter might develop some special precognitive powers when writing the summary, but then be unable to get that newly gained insight to appear in the detailed description.
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Isaac
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JimIvey
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Re: Inlcuding objectives in specification
« Reply #4 on: Aug 24th, 2006, 2:49pm » |
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on Aug 24th, 2006, 12:43pm, Isaac wrote:Besides that, I don't understand how a drafter might develop some special precognitive powers when writing the summary, but then be unable to get that newly gained insight to appear in the detailed description.
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Well, this part I can see how it happens. If you're like me and you write the summary last (well, just before quickly filling in the abstract and brief description of drawings), then it makes sense that the summary would be written with better insight into the invention than the detailed description.
For what it's worth, my highly unconventional sequence in patent application writing is: background, drawings, detailed description, more drawings, more detailed description (iterate over drawings and detailed description as necessary), claims, summary, brief description of the drawings, abstract. Done.
To the extent my claims end up relying on any specific definitions or such, I include them in the summary. It ends up making sense since, in reading the application/patent, the definitions appear before they're used in the detailed description.
Regards.
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James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
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