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[Isaac]

I want to write the specification in order to write claims for all subsets that I might need later on, possibly all existing subsets, and that these subsets would be supported by the specification.

Your elements perform some functions that are presumably subsets of the functionality of the claimed invention.  You are going to describe how those elements work together or separately to accomplish the claimed functionality.  If you do that, then it will be clear what combinations are allowable.

So fully describe an embodiment.  Explain how other embodiments accomplish the function.  Explain the roles of additional components that can be incorporated in the invention.  What is not clear to me is how using "may" helps you accomplishes your objective.



 

[Yak]

You can legitimately write claims that are broader than the described embodiments, but you cannot write claims that have details that that you have not described.

If the specification describes an embodiment having elements x1, x2, x3, x4, x5, x6, x7, x8, x9, would a claim for an embodiment having only elements x3, x5, x6 be supported by the specification? Would such an embodiment be considered to be broader since it has less element limitations, or narrower as it may be non obvious from the specification that three elements are sufficient for an embodiment, and so less elements can be considered an improvement over the description provided in the specification? Might such a three elements embodiment be considered to be a detail that is not described?

This was, and still is, a difficult concept for me as a new practitioner to get a firm grasp on.  Here is simple example which may help and I hope is accurate.  If this is wrong, I hope someone will clarify. 

Suppose you invented the first shovel and there exists no other shovel in the prior art which would prevent claims for your shovel to issue. 

You describe your invention, as a preferred embodiment, in the specification as a tool having an elongated handle with a circular cross section.  Attached to a first end of the handle is a spade.  The spade has a tubular member to receive the first end of the handle, a tread for resting the feet to drive the spade into the ground, and a metal tip. 

Your broad claim is written as:
A shovel tool comprising a handle and a spade, wherein said handle is connected to said spade.

This claim could possibly be interpreted broader than the specified embodiment and cover specific embodiments not in the disclosure.  Such as where a tool uses a non-elongated handle, a handle having a square cross section, or where the spade is attached to the handle at another location besides the first end, etc. 

[SNielson]

Here are my thoughts about the may/can issue.  As other posters have said, I think "may" means "is permitted to, but not required" and "can" means "capable of."  I don't see a problem using either of these terms with these meanings in mind.  I will limit my comment to the use of "may" since few seem to dispute the use of "can."

Let's suppose a patent drafter is describing element A in the specification.  Element A includes element B and the inventor has told the drafter that some embodiments of element B are X, Y, and Z.  The drafter is considering including one of the following statements in the specification:

"Element A includes element B."
"Element A includes element B, which is an X, Y, or Z."
"Element A includes element B, which may be an X, Y, or Z."

The first statement omits any mention of X, Y, or Z, which is obviously not preferred (Edit: I am operating under the assumption that X, Y, and Z are not mentioned elsewhere).  The second statement provides support for X, Y, and Z, but raises the question whether element B is limited to only X, Y, and Z.  The third statement uses "may" to remove the question inherent in the second statement and make it clear that element B is not limited to only X, Y, and Z.  If may was removed and its meaning substituted in its place, the third statement would read "Element A includes element B, which is permitted to, but not required to be an X, Y, or Z."  This is similar to non-limiting language that many practitioners already use.  I can't see why using "may" to mean the same thing is a problem.

There are other ways to say exactly the same thing without using "may."  However, I can't see any reason to condemn one practitioner's choice to use "may" instead of "including, but not limited to" or some equivalent phrase when the meaning is very much the same.  This just seems to be a matter of style about which every practitioner has an opinion (and is certain he/she is correct).

As for "can," it doesn't mean the same thing as "may."  To illustrate this, I have replaced "may" in the third statement above with "can."

"Element A includes element B, which can be an X, Y, or Z."

This now means that element B is "capable of" being an X, Y, or Z.  That's fine, but what about the question whether B is limited to only X, Y, and Z?  I don't think the use of "can" addresses this issue.  Stating that element B is capable of being X, Y, or Z, does not explicitly state anything about whether element B includes (or is capable of being) something else.  You can argue that "can" implicitly means that element B can be something else, but the same thing can be said when "is" is used (e.g., element A includes, element B, which is an X, Y, or Z.  In contrast, the term "may" answers the question in a broad way.

I agree with Jim that practitioners who use "may" in every sentence create patents that are hard to read.  I don't think the term itself should be blamed since the same could be said for patents that excessively use other weasel words and phrases.

[Isaac]

"Element A includes element B."
"Element A includes element B, which is an X, Y, or Z."
"Element A includes element B, which may be an X, Y, or Z."

The first statement omits any mention of X, Y, or Z, which is obviously not preferred.  The second statement provides support for X, Y, and Z, but raises the question whether element B is limited to only X, Y, and Z.  The third statement uses "may" to remove the question inherent in the second statement and make it clear that element B is not limited to only X, Y, and Z.

Why would the spec avoid the first statement?  If there are really a lot of possibilities for element B, why wouldn't the spec include a broad statement of what element B is/does?

The question of whether Element B is limited to X, Y, or Z is easily answered by looking at the specification as a whole.  The use of may, in my opinion, is caused by the attempt to provide a detailed description of the invention rather than a detailed description of the embodiments.

[Isaac]

"Element A includes element B."
"Element A includes element B, which is an X, Y, or Z."
"Element A includes element B, which may be an X, Y, or Z."

The first statement omits any mention of X, Y, or Z, which is obviously not preferred.  The second statement provides support for X, Y, and Z, but raises the question whether element B is limited to only X, Y, and Z.  The third statement uses "may" to remove the question inherent in the second statement and make it clear that element B is not limited to only X, Y, and Z.

Why would the spec avoid the first statement?  If there are really a lot of possibilities for element B, why wouldn't the spec include a broad statement of what element B is/does?

The question of whether Element B is limited to X, Y, or Z is easily answered by looking at the specification as a whole.  The use of may, in my opinion, is caused by the attempt to provide a detailed description of the invention rather than a detailed description of the embodiments.

The claims perform the function of detailing what is in the invention, and I believe we all agree that may does not belong in the claims.

[SNielson]

"Element A includes element B."
"Element A includes element B, which is an X, Y, or Z."
"Element A includes element B, which may be an X, Y, or Z."

The first statement omits any mention of X, Y, or Z, which is obviously not preferred.  The second statement provides support for X, Y, and Z, but raises the question whether element B is limited to only X, Y, and Z.  The third statement uses "may" to remove the question inherent in the second statement and make it clear that element B is not limited to only X, Y, and Z.

Why would the spec avoid the first statement?

Because you want support for X, Y, and Z since the inventor specifically mentioned them as examples (I said the inventor mentioned them in my post).

If there are really a lot of possibilities for element B, why wouldn't the spec include a broad statement of what element B is/does?

The specification could certainly include a discussion of what element B is/does, but that doesn't affect my example.

The question of whether Element B is limited to X, Y, or Z is easily answered by looking at the specification as a whole.

If you are drafting the application, why not make it explicit instead of relying on "looking at the specification as a whole?" 

The use of may, in my opinion, is caused by the attempt to provide a detailed description of the invention rather than a detailed description of the embodiments.

I don't know what you mean by this.

The claims perform the function of detailing what is in the invention, and I believe we all agree that may does not belong in the claims.

Absolutely.  I don't think anyone is saying that can or may should be used in the claims.

[Isaac]

Why would the spec avoid the first statement?

Because you want support for X, Y, and Z since the inventor specifically mentioned them as examples (I said the inventor mentioned them in my post).

Avoiding the broad statement does not prevent you from providing support for b being an X, Y, or Z.  If you really intend to allow B to be an X, Y, or Z, but also some Ws, would not the preferred way be to describe both a broad B, and also a B that is specifically one of x, y, and z?

Are you saying that you would instead use "b may be x, y, or z", and then not describe b in broad terms?  I just don't see the positives from that approach.

[SNielson]

Because you want support for X, Y, and Z since the inventor specifically mentioned them as examples (I said the inventor mentioned them in my post).

Avoiding the broad statement does not prevent you from providing support for b being an X, Y, or Z.  If you really intend to allow B to be an X, Y, or Z, but also some Ws, would not the preferred way be to describe both a broad B, and also a B that is specifically one of x, y, and z?

Are you saying that you would instead use "b may be x, y, or z", and then not describe b in broad terms?  I just don't see the positives from that approach.

B may or may not be broadly described.  If B is not broadly described, then it is certainly more beneficial to use "may" in the way and for the reasons I mentioned above.  However, even if B is broadly described, I still don't see a problem using "may" to make it clear that element B should not be limited to the specific embodiments mentioned in the specification.

[Isaac]

However, even if B is broadly described, I still don't see a problem using "may" to make it clear that element B should not be limited to the specific embodiments mentioned in the specification.

Fair enough.  It seems that we disagree on a fairly minor stylistic point.  I think may is inherently weasily because it does not say that any particular feature is actually in an embodiment, while you don't feel that way but agree that weasily stuff should be avoided.

[SNielson]

Fair enough.  It seems that we disagree on a fairly minor stylistic point.  I think may is inherently weasily because it does not say that any particular feature is actually in an embodiment, while you don't feel that way but agree that weasily stuff should be avoided.

I think that practitioners use "may" for precisely the reason that they don't want something limited to only the devices, materials, steps, features, etc., mentioned in the specification.  I don't think that means "it does not say that any particular feature is actually in an embodiment."  Rather I think it means that the embodiment could include, but does not have to include, any of the features explicitly recited.  If that is what the drafter wants to convey, then I don't see a problem stating it outright, with or without using the word "may." 

I doubt that any practitioner would have a problem stating that element B includes, but is not limited to, X, Y, or Z (or element B could be, but is not limited to being X, Y, or Z).  If that is the meaning the practitioner wants to convey then so be it.  I just can't figure out why it is so bad to use "may" to convey that meaning.  It is almost like "may" has become a bogeyman word.

I think the problem with any kind of weasel word or phrase is that if you use it too much it gets very distracting and takes away from the message that the inventor actually invented something.  A judge or a juror who reads a patent where everything is optional (which is what excessive use of weasel words conveys) comes away wondering what exactly, if anything, the person invented.

[Isaac]

I don't think that means "it does not say that any particular feature is actually in an embodiment.  Rather I think it means that the embodiment could include, but does not have to include, any of the features explicitly recited.

In my opinion, the two statements you are trying to distinguish are equivalent.  We appear to have a fundamental disagreement about what "may" means and to the extent we disagree about that, we are not going to agree about the implication of saying that an embodiment may include feature X.

Further, I've already agreed that the imprecision in the use of can and may is unlikely to make the least bit of difference in the determination of claim scope, which suggests that at most I'm wanking on about a style issue.