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[JimIvey]

Upon reading the presentation slides further, I found a quote from the Fed Cir that pretty clearly states my understanding of the law (at page 17, slide 34, quoting C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858 (Fed. Cir. 2004)):

“Statements that describe the invention as a whole, rather than statements that describe only preferred embodiments, are more likely to support a limiting definition of a claim term. [citation omitted]”

Given that the presentation spent some time parsing "preferred", I'd say that "illustrative embodiments" is better than "preferred embodiments."

I'd also say that "a device according to (or consistent with or illustrative of) the present invention" is distinguished from "a device of the present invention."

Regards.

[MLM]

"According to an embodiment of the present invention" feels to me like lawyer-speak for "I want to have my cake and eat it too."

Ideally, the specification adequately (but succinctly) describes every embodiment of the invention that you want the claims to cover, but practically this is rarely possible since variations in the construction of the invention may be too numerous/impractical to describe (especially the ones we don't yet know of a.k.a. the effect of after-arising technologies on the invention). So we tiptoe around the invention in various ways trying to be careful not to say exactly what the invention really is in case we leave something out that is/should be covered by the claims, but not literally supported in the patent. (Also because English is an imperfect way of describing technical things.) I presume one reason for this is because an adversary in litigation will jump all over such an omission.

But I also sense that being too verbose can also be harmful. I vaguely remember from law school discussing cases where a patent that described many, many exemplary embodiments was being asserted (or challenged) over a particular embodiment that was not described, yet arguably covered by one of the claims and supported by the specification. The fact that the inventor appreciated that there were 20 embodiments was used against him for not appreciating the 21st embodiment, somehow implying that there was a good reason for not including that 21st embodiment in the description (e.g., it wasn't part of the invention?!) even when such an implication is not supported by hard evidence. Would he have been better off only disclosing two or three embodiments?

If I say that a widget can be made of plastic, and give a few examples of different kinds of plastic for support, how many examples can I give before I am limited to my laundry list of plastics despite the inclusion of weasel words (e.g., "or other suitable material")? If I'm a judge I'm thinking "that long list must be the entire list." How many examples is too few to support non-described embodiments using plastics that I did not describe? If I'm a judge I'm thinking "this inventor is just winging it."

[klaviernista]

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.. . .  

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.

I absolutely agree with you that it is necessary to maintain at least one degree of seperation between "the present invention" and the thing described.  My point has never really been that the term "the invention" cannot be used.  But rather that it should be avoided whenever possible as a phrase that carries more weight in the Federal Circuit than its 12 characters would imply.  Ultimately, I think it comes down to how risk averse the drafter is.  If you can write an application using a loaded term in a particular way that eliminates its potentially negative impact and never slip up, great!  Me?  I'd rather avoid the issue entirely and draft an equally clear document that doesn't use the loaded term in the first place

Admittedly my position may be overkill, and it may ultimately be fueled by paranoia, the seemingly erratic tendencies of the CAFC, and the yammerings on of many of my former colleagues.  But it is undeniably safe, and sacrifices relatively little (if anything) for that safety.  Not that I am saying that your particular drafting style is unsafe.  I've read a couple of your patents and they are extremely well written and I've seen no issues worth even mentioning.  Which is saying something, as I almost always find something to complain about (there is no greater motivation than to edit someone else's manuscript, as they say).  But from my experience training many junior associates (and now law students), I've come to find that most relatively inexperienced drafters struggle with this drafting point (i.e., patent profanity) far more than you might think.  So much so, in fact, that is it actually far easier to teach them to avoid using patent profanity at all, than it is to teach them to use the same terms in a way that is not patent profanity.

In the end, I think it all comes down to drafting style.  Each style has its ups and downs, with none being perfect.

[chusteczka]

Thank you for your further contributing comments.  I am understanding more of the nuances of this issue now with your assistance.  It starts to make sense for me.

JimIvey, I read your patent and appreciate the examples for proper use.  When writers copy from others without knowing why, it can sometimes create a mess as to the proper form to use.

khazzah, your directed comments are appreciated.

I like the addition of "according to an embodiment of the invention".

Regarding the slides klaviernista provided, they seem to focus on a related side issue.  Mainly being careful not to limit the written description only to the preferred embodiment.

Slide 26 states "where the specification makes clear at various points that the claimed invention is narrower than the claim language might imply, it is entirely permissible and proper to limit the claims.".

This is both eye-opening and understandable at the same time.  A writer needs to be aware that not enough disclosure in the specification may narrow the claims.

Slide 27 describes words and phrases used in the specification that may unexpectedly limit the claims.

Slide 34 states "Statements that describe the invention as a whole, rather than statements that describe only preferred embodiments, are more likely to support a limiting definition of a claim term.".  This concept is known and understood but a reminder can be useful.  I would have questions for a writer that described an invention as a whole, rather than through embodiments.

Slide 37 states how the term "this invention" may be limiting and the potential limiting similarity with "the present invention".

It seems that alternative embodiments should be described as also being "according to the invention".  It may be a mistake to only describe the preferred embodiment as "the present invention".


JimIvey, I really like your statement of "a device according to (or consistent with or illustrative of) the present invention".  That statement really helps drive home the usefulness of the statement.  It is possible that "according" was too vague for me.

MLM, I like your statements since they mirror many of my thoughts.  My first inclination was to remove that phrase since I have been struggling with it as klaviernista points out that inexperienced drafters often do.  This discussion has provided much insight that helps me to better understand its use.

[JimIvey]

If you can write an application using a loaded term in a particular way that eliminates its potentially negative impact and never slip up, great!  Me?  I'd rather avoid the issue entirely and draft an equally clear document that doesn't use the loaded term in the first place

Well, I'd say that the law requires us to be extremely careful with language in many instances, especially if you want to accelerate examination since it more or less requires that you make admissions that would be unthinkable (and probably malpractice) just a few years ago.  Concerns re "the present invention" in the linked presentation followed other words that are probably more worrisome -- e.g., requires, important, essential, etc.  So, there are many mine fields for us to navigate.  "The timorous may stay at home."  Murphy v. Steeplechase Amusement Co., 250 N.Y. 479, 483, 166 N.E. 173, 174 (1929).

Even so, I think most of us are up to the challenge.  Most times, it comes down to understanding the distinction between starting a sentence with "In an illustrative embodiment of the present invention," or with "In the present invention,".  It's essential that practitioners understand that distinction and stay on the "illustrative" side, but it's not all that difficult.

I think I recall one of the reasons I keep that language in my applications.  I vaguely recall an objection to the drawings many years ago in which the examiner wanted me to add a "PRIOR ART" label to all my drawings that weren't demonstrably related to "the present invention" in some way.  Luckily, I had my peppering of "in accordance with the present invention" in enough places to be able to add that phrase into the brief description of the drawings without having difficulty in establishing the absence of new matter. 

In addition, I once had an examiner require that I amend the section title, "Summary", to be, "Summary of the Invention" as required by 37 CFR (at least at that time).  I really didn't want the summary body to be so directly tied to "the invention", so I felt rather strongly that the degree of separation provided by "In accordance with the present invention," was important and should be kept.

At the very least, I would think it's less risky to be explicit about the degrees of separation from "the invention" than to be silent about it.

I agree that direct description of "the invention" in the spec is bad.  Beyond that, I don't think there's a clear answer, so it's okay to disagree.

Regards.

[smgsmc]

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.

Yes, you should become the head hauncho in-house IP counsel of a Fortune 100 Megacorp instead and dictate to outside counsel that it is verboten for the word "invention" to appear anywhere in the specification.  "Embodiment" only; no "embodiment of the invention".  Even:  "Title" only; no "Title of the Invention" for the first heading.  Can't make this stuff up, as the saying goes.

[JimIvey]

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. 

Oops.  My bad.  That patent isn't completely dead yet.  I hope I didn't say too much about it.

Regards.

[Isaac]

Luckily, I had my peppering of "in accordance with the present invention" in enough places to be able to add that phrase into the brief description of the drawings without having difficulty in establishing the absence of new matter.

If I understand you, you are saying that adding in the phrase allowed you to avoid labeling drawings prior art.  Perhaps even avoiding a silly AAPA based rejection that should not have been made.

In addition, I once had an examiner require that I amend the section title, "Summary", to be, "Summary of the Invention" as required by 37 CFR (at least at that time).  I really didn't want the summary body to be so directly tied to "the invention", so I felt rather strongly that the degree of separation provided by "In accordance with the present invention," was important and should be kept.

How did you deal with that?   I think I would have completely retitled the section to not even include the word summary.  A summary or summary of invnention has never been a required section of a patent application.

[JimIvey]

Luckily, I had my peppering of "in accordance with the present invention" in enough places to be able to add that phrase into the brief description of the drawings without having difficulty in establishing the absence of new matter.

If I understand you, you are saying that adding in the phrase allowed you to avoid labeling drawings prior art.  Perhaps even avoiding a silly AAPA based rejection that should not have been made.

That's exactly right.  The examiner was insisting that, for each and every drawing, I either reference "the present invention" in the Brief Description of the Drawings or label it as "Prior Art".

In addition, I once had an examiner require that I amend the section title, "Summary", to be, "Summary of the Invention" as required by 37 CFR (at least at that time).  I really didn't want the summary body to be so directly tied to "the invention", so I felt rather strongly that the degree of separation provided by "In accordance with the present invention," was important and should be kept.

How did you deal with that?   I think I would have completely retitled the section to not even include the word summary.  A summary or summary of invnention has never been a required section of a patent application.

It's been a long time, but I believe the examiner cited either 37 CFR 1.73 or 37 CFR 1.77 and insisted that "Summary" was not compliant.

I just amended the heading as requested, "Summary of the Invention".  The text under that heading was consistent with my practice to not describe the invention directly.  I felt some degree of comfort relying on the required wording of the heading came from the rules and not from me.  In other words, my defense was that I wasn't admitting that the summary section defined the invention but rather was using the magic words required by rule.

Regards.

[Isaac]

It's been a long time, but I believe the examiner cited either 37 CFR 1.73 or 37 CFR 1.77 and insisted that "Summary" was not compliant.

I note that neither of the cited rules give any requirements regarding the Summary.  "Should" isn't a requirement.  Obviously some of the sections in Rule 77 are governed by requirements found elsewhere.