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[chusteczka]

“... in accordance with the invention.”
“... according to the invention ...”
“The inventive (object) ...”
“... of the invention ...”

These phrases are sprinkled throughout most patents, usually in the Brief and Detailed Descriptions of the Drawings.

It is mentioned in this thread by klaviernista to use “present disclosure” instead of “invention”.
"including" in specification to "comprising" in claims
http://www.intelproplaw.com/ip_forum/index.php/topic,11541.0.html

Is there a useful purpose to these phrases that enforces their use?  In my opinion, these phrases are devoid of meaning and useless since everything disclosed in the specification concerns the “invention” or “present disclosure”.  My preference is to omit such empty statements but there must be a valid reason why these phrases are used in most patents, that I am not aware of.

Could someone please either support my preference to omit these empty statements or tell me why they are needed, used, or found useful?

EDIT: s/validate/support/

[JimIvey]

Well, the law requires that we describe "the invention".  If you're not going to introduce descriptive material with "In accordance with the present invention," what are you going to use for such introduction?

You certainly don't want to describe "the present invention" directly.  It's defined solely by the claims (or at least should be).  So, there shouldn't be any objectives of the invention or any sentence in which "the present invention" is the subject of the sentence or is otherwise described directly.

"Accord" means agreement.  So, "in accordance with" means something like "consistent with".  Such is consistent with describing illustrative embodiments of the invention rather than describing the invention directly.

Regards.

[Robert K S]

Legal writing guru Jim McElhaney would probably deride "...in accordance with the present invention..." as a "throat-clearing phrase".  I refer you to The Power of Plain Talk, 96 ABA Journal 22, 23 (January 2010).

[khazzah]

“... in accordance with the invention.”
“... according to the invention ...”
“The inventive (object) ...”
“... of the invention ...”

In my opinion, these phrases are devoid of meaning and useless since everything disclosed in the specification concerns the “invention” or “present disclosure”. 

I disagree. These statements are not devoid of meaning, and in fact the plain meaning would seem to convey the drafter's understanding of what the invention is.

In my view, the specification relates to features that *could* be claimed -- but may not be. I also say (as JimIvey did) that the only thing that actually defines the invention is the claims.

That said, there is lots of Fed. Cir. case law holding that in some circumstances, statements in the about "the invention" can be used to narrow the scope of the claims. Therefore, there are good reasons to at least think carefully about using "the invention" to directly describe something. A simpler rule is to strike "the invention" from your spec-drafting vocabulary, though that might be overkill.

My preference is to omit such empty statements but there must be a valid reason why these phrases are used in most patents, that I am not aware of.

My answer to why you still see "the invention": tradition. It's common to learn to write patents by looking at the work of others. Folks commonly used "the invention" back in the 1980s -- before much of the case law I alluded to -- and that practice carries forward today.

[khazzah]

Well, the law requires that we describe "the invention". 

True. So can you make an argument that a specification that does not contain the word "invention" is invalid under 112 1st and/or 112 2nd?

I've never run across this in the case law. And surely there have been patents litigated that omit "invention". Does this argument simply have no legs?

It seems the counterargument is that a POSITA understands the spec to describe the invention even without that magic word. But that alone seems conclusory, ie, *why* does a POSITA understand the spec to describe the invention? Maybe because POSITA knows the spec is *supposed* to describe the invention, so there's a presumption that it does?

[Straying a bit from the original topic, but this caught my interest.]

[JimIvey]

That said, there is lots of Fed. Cir. case law holding that in some circumstances, statements in the about "the invention" can be used to narrow the scope of the claims. Therefore, there are good reasons to at least think carefully about using "the invention" to directly describe something. A simpler rule is to strike "the invention" from your spec-drafting vocabulary, though that might be overkill.

Yeah, I'd say that's overkill.  If you can't use the phrase, "the invention", without describing the invention directly, you probably shouldn't be writing patent applications.

It seems the counterargument is that a POSITA understands the spec to describe the invention even without that magic word. But that alone seems conclusory, ie, *why* does a POSITA understand the spec to describe the invention? Maybe because POSITA knows the spec is *supposed* to describe the invention, so there's a presumption that it does?

I would not feel comfortable relying on an argument that, since the specification is supposed to describe the invention, it must be presumed to do so.

Is it possible to satisfy Section 112 without using the word, "invention"?  Maybe.  Who wants to be the test case?

FWIW, I'll probably keep my occasional throat-clearing.

Regards.

[khazzah]

Is it possible to satisfy Section 112 without using the word, "invention"?  Maybe.  Who wants to be the test case?

I'm just surprised I haven't seen such a test case.

I've read at least a dozen Fed Cir decisions that show bad things can happen from the careless use of the word "invention." Yet I can recall nothing at all about a bad thing happening if you don't use the word "invention" at all. Curious.

[MYK]

I'd suggest ". . . in accordance with the prophesy" instead.  (With apologies to Skippy.)

[chusteczka]

Thank you all for your contributing thoughts.  I am not fluent with the legal requirements and your input is greatly appreciated.

Here is what I understand from your input:

1) Law requires the invention to be described in the specification and claimed in the claims, according to "35 U.S.C. 112 Specification".

2) While the phrase "the invention" can have unforseen limiting consequences, it is uncertain if it needs to be included.

3) It may be a throat clearing phrase but its inclusion is made as a precaution due to uncertainty.

4) Interest remains in the prophesy.  That twist to the phrase gave me a chuckle, BTW.



Here is possible valid use:
Fig. 1 shows (a drawing of the invention's main focus) according to the invention.
Fig. 2 shows (supporting structure).
Fig. 3 shows (prior art as a reference).


It would be logical that similar description could be used throughout the specification with the term "according to the invention" to focus the reader's attention on the important aspects.

However, 35 U.S.C. 112 states the specification shall contain a written description of the invention.  Therefore by definition, the entire specification is "according to the invention".  Adding that phrase appears to be redundant.  I lose focus when reading that phrase in patents because appears as sensational marketing with no technical benefit.

With the understanding the specification is "according to the invention", then the invention is described by default, thereby requiring prior art and supporting structure to be explicitly described, which it is.  Inventors explicitly describe prior art and supporting structures as such since description without could lead to rejection based on obviousness.

It seems explicit description of what is and what is not the invention is required.

Any further thoughts?

[JimIvey]

Therefore by definition, the entire specification is "according to the invention". 

No, not really. 

It's so hard to explain some of this stuff because the examples we can imagine always seem to fall short.  Here, I'll name an actual patent I've written.  US 6,223,329  I believe the patent can no longer be asserted, so I can talk a bit about it.  As far as I know, this is the first invention of "partitioning" used in complex chip design, such as through chip design software from Cadence.

You'll see that I begin both the summary and detailed description with "In accordance with the present invention, ...."  I appear to use the phrase often in the brief description of the drawings and sparingly elsewhere.  However, I do identify specific things that are "in accordance with the present invention", such as the processing of circuit design 100.

So, in short, it's not the whole specification that is "in accordance with the present invention" but instead the particular described thing that is intended to represent an illustrative embodiment of the invention you hope to claim. 

Regards.

[khazzah]

3) It may be a throat clearing phrase but its inclusion is made as a precaution due to uncertainty.

I don't agree with the above statement. I think attorneys include "the invention" because everyone else does, and because it seems self-evident that your spec would talk about the invention.

I've never seen the "uncertainty" issue -- ie, is a patent without the magic word vulnerable to invalidity under 112 -- discussed before today.

However, 35 U.S.C. 112 states the specification shall contain a written description of the invention.  Therefore by definition, the entire specification is "according to the invention". 

No, the conclusion you draw doesn't follow the premise. If it did, there would be no such thing as a written description rejection. To the contrary, if your spec fails to describe something that's claimed -- in a way that shows the inventor "possessed" the claim at the time of filing -- you are vulnerable to a 112 written description rejection.

Another way of looking at it is that "the specification shall contain X " means "if it doesn't you're in trouble", rather than "the spec, by definition, contains X".

It would be logical that similar description could be used throughout the specification with the term "according to the invention" to focus the reader's attention on the important aspects.

As a matter of readability, I agree. But readability is only one aspect to consider when writing a patent app. Many things that improve readability can have a negative effect on claim interpretation.

Inventors explicitly describe prior art and supporting structures as such since description without could lead to rejection based on obviousness.

Not sure where you're going with the obviousness angle. I'd say that a spec that identifies a structure as prior art would make your claim an easy 103 target, especially without an explanation of how your claim distinguishes. But I don't see why leaving out an "explicit description of prior art" would lead to a 103.

It seems explicit description of what is and what is not the invention is required.

Nah, I say that's what's required of the claims, not the spec:

35 U.S.C. 112 2nd Para.
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

[klaviernista]

I don't have the inclination to hash this point out with Jim again.  As much respect as I have for him (he is clearly an excellent and very intelligent attorney), I just can't agree with him on this point (and a few others which are well known, but that is for another day).

I'll also leave you with a link to this nice presentation.  It contains numerous case cites which support my position (though I'm sure, knowing the federal circuit, that it is possible to dig up at least a few cases that weigh in the opposite direction).

http://www.aipla.org/html/spring/2009/papers/Irving-Slides.pdf

[ME]

What about saying:

“... in accordance with an embodiment of the invention.”
“... according to an embodiment of the invention ...”

instead?

For European practive you use the problem solution approach to showing inventiveness, so more often than not we talk about advantages that particular embodiments may have.

[khazzah]

What about saying:
“... in accordance with an embodiment of the invention.”
“... according to an embodiment of the invention ...”
instead?

That's a common practice among many practitioners I know. Makes it clear that you're not referring to one/THE invention, but rather one variation of it. Though I haven't researched the issue, I don't recall any case law where the patentee was burned by this approach. 

[JimIvey]

I don't have the inclination to hash this point out with Jim again.  As much respect as I have for him (he is clearly an excellent and very intelligent attorney), I just can't agree with him on this point (and a few others which are well known, but that is for another day).

Thanks, Klav.  I respect your positions and contributions here as well.

I'm looking at the slides and I'm not sure exactly what your point is here.  I don't believe that all mentions of "the present invention" describe it directly.  The few quotes I see in the caselaw in the presentation do describe "the present invention" directly.

“The key feature of the present invention is the particular type of lactose employed in the composition.” -- quoting a response during prosecution, emphasis in the paper.

I don't do that.  I believe that "according/accordance/etc." and "illustrative embodiment" are each a degree of separation from "the present invention" and the thing described.

However, I'm always willing to learn and improve.  If I'm wrong about maintaining at least one degree of separation between "the present invention" and the description, I'd really like to know about that.  I don't have time to pull all those cases and read them, but the ones I've read always lack that separation.  If you (or anyone) has a counter example, I'd love to see it -- preferably at the Fed Cir level or higher.

Regards.

P.S.  For what it's worth, my work has been litigated (at least twice) and those issues never came up.