difference of alternative and additional embodiment

[oem_odm]

hello all,

could someone give a simple example of the difference in alternative embodiment, and additional embodiment.

I stabbed a guess that alternative embodiment is a different way of achieving the same advantages of the preferred embodiment

and

additional embodiment are minor additions/changes to the described preferred embodiment

many thanks :-)

[klaviernista]

could someone give a simple example of the difference in alternative embodiment, and additional embodiment.

I've never seen an application that makes a meaningful distinction between an "alternative" embodiment or an "additional" embodiment.  If you are trying to decide which term you should use while drafting an application, pick one and be consistent throughout the specification.  That way, a court will not have to wrangle with whether the applicant meant something different when it described some embodiments as "alternative" and others as "additional." 

In my view, calling something an "alternative" embodiment or an "additional" embodiment is just semantics.   Any "alternative" embodiment could be accurately described as an "additional" embodiment, and vice versa.

Best,

Klav

[oem_odm]

Hello Klav - thankyou - Im new to this and didn't know.

Example of patent which mixes alternative + additional:

http://www.google.com/patents/about?id=tbCoAAAAEBAJ

Also I have the "patent it yourself" nolo publication - it lists "additional embodiments" ...then leads to "alternative embodiments".

[JimIvey]

I'm not aware of any meaningful distinction between "alternative embodiments" and "additional embodiments".  I always use "alternative embodiments".

Regards.

[klaviernista]

Hello Klav - thankyou - Im new to this and didn't know.

No problem.  Glad to help.  Seeing as how you are confused about the terms, just imagine what the Federal Circuit will do when it needs to decide whether two different words mean the same thing (note: the usual outcome is that the court decides that differing terms do not have the same meaning, for if the applicant intended them to mean the same thing, he/she would have used the same term).  So, consistency is key.

[DogDayPM 9er9er9er]

No problem.  Glad to help.  Seeing as how you are confused about the terms, just imagine what the Federal Circuit will do when it needs to decide whether two different words mean the same thing (note: the usual outcome is that the court decides that differing terms do not have the same meaning, for if the applicant intended them to mean the same thing, he/she would have used the same term).  So, consistency is key.

Or when they have to decide whether "desirably" is the new "preferably".

I had a boss who'd comb the USPQ for new trigger words (whether something picked on by CAFC or just a district court decided to import some particular new meaning to a commonly used term), and incorporate it into his list of verboten verbiage.

[oem_odm]

thank you everyone.

[klaviernista]

[quote author=DogDayPM link=topic=13014.msg61688#msg61688 date=125659222
I had a boss who'd comb the USPQ for new trigger words (whether something picked on by CAFC or just a district court decided to import some particular new meaning to a commonly used term), and incorporate it into his list of verboten verbiage.
[/quote]

I've had bosses who would do the same.  Blew me away when the phrase, "the invention" became patent profanity.

[JimIvey]

I've had bosses who would do the same.  Blew me away when the phrase, "the invention" became patent profanity.

For what it's worth, I don't agree that "the invention" should be banned outright.  I do believe that "the invention" should never be described directly outside the claims.  Accordingly, some things can be "according to the present invention" and embodiments of the invention can be (and should be) described directly.

Regards.

[Isaac]

For what it's worth, I don't agree that "the invention" should be banned outright.

It pretty easy to find cases where the federal circuit latched onto phrases "the invention ...." when reading limitations into a claim, or when invalidating a claim for not reciting a limitation.   Admittedly, those cases also cited other evidence, but practitioners are understandably leery.   On it's face, the phrase "the invention" when unqualified refers to every embodiment of the invention.

I do believe that "the invention" should never be described directly outside the claims.  Accordingly, some things can be "according to the present invention" and embodiments of the invention can be (and should be) described directly.

I was told to layoff the phrase "exemplary embodiment".  Just describe the embodiments, which of course are examples of your invention.   Give the embodiment some options if need be.

[ChrisWhewell]

a quick review of Honeywell v. ITT can help - just don't use it in a limiting fashion and then later expect to be able to get a court to give you a broader interpretation.  As a default, saying just don't use it seems safe, but if one put, say, the word "disclosure" for example, in every location of Honeywell where invention had formerly occurred, the problem would not have been solved by mere use of a different word for invention.  The issue stemmed from in the language surrounding the noun.   I think that's right ...... but will add a "?"

[JimIvey]

I was told to layoff the phrase "exemplary embodiment".  Just describe the embodiments, which of course are examples of your invention.   Give the embodiment some options if need be.

I looked it up long ago to be sure, and "exemplary" can mean "as an example."  I think it carries a connotation of being held out as an example to follow, as a preferred ways of doing things, like an exemplary employee meaning a great example to follow.  FWIW, I use "illustrative" instead.

I use "an illustrative embodiment of the present invention" all the time and have had no issues during enforcement.

Regards.

[runamamun]

could someone give a simple example of the difference in alternative embodiment, and additional embodiment.

I stabbed a guess that alternative embodiment is a different way of achieving the same advantages of the preferred embodiment

and

additional embodiment are minor additions/changes to the described preferred embodiment

many thanks