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Author Topic: defining terms of the art in the specification  (Read 467 times)

G8ZoST

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defining terms of the art in the specification
« on: 02-04-11 at 05:14 am »

What are some considerations for definiting terms known in the art in the specification?

Some that I can see:

- Makes your usage of the terms in the spec unambiguous (depending of course on the quality of the definition given).

- Helps judges and other trial participants in potential future litigation to establish what you meant without the recourse to (by no possibly historical) external materials. This would especially be the case in fast-changing arts like computer software.

- May unnecessarily narrow down your spec.

- Definitions are tricky - so there's areal danger that through a mistake here you cut off a lot of potential scope.

Of course there is no general answer for all situations. But I would just be interested in what others are doing here.
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bleedingpen

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Re: defining terms of the art in the specification
« Reply #1 on: 02-04-11 at 05:37 am »

What are some considerations for definiting terms known in the art in the specification?

Some that I can see:

- Makes your usage of the terms in the spec unambiguous (depending of course on the quality of the definition given).

- Helps judges and other trial participants in potential future litigation to establish what you meant without the recourse to (by no possibly historical) external materials. This would especially be the case in fast-changing arts like computer software.

- May unnecessarily narrow down your spec.

- Definitions are tricky - so there's areal danger that through a mistake here you cut off a lot of potential scope.

Of course there is no general answer for all situations. But I would just be interested in what others are doing here.

If the terms are terms of the art, why define them?
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G8ZoST

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Re: defining terms of the art in the specification
« Reply #2 on: 02-04-11 at 06:03 am »

Because some seem to be of the opinion that this eases reading by non-specialists in the relevant art, e.g. by judges.
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Kaitlin

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Re: defining terms of the art in the specification
« Reply #3 on: 02-04-11 at 08:16 am »

Absolutely. 
Remember if you who are skilled in the art can't come up with an appropriate definition now, you may well be leaving the job to a judge who is not only not skilled in that particular art, but quite possibly has no scientific background whatever, and who will have to make a determination based on his or her own reading of scientific dictionaries and the urgings of waring litigants.   There is no patent background required for federal district court judiciary.   If the definition is an important one that could be disputed in future by reasonable minds not trained in the art (or unreasonably disputed when challenged by a master of fallacy with chutzpah), you probably want to address it in the specifications.
« Last Edit: 02-04-11 at 08:28 am by Kaitlin »
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This post is an off-the-cuff musing and should not be misconstrued as legal advice. THERE IS NO ATTORNEY-CLIENT RELATIONSHIP BETWEEN US. Proper legal advice requires full disclosure of facts-not appropriate to a public forum-and attorney research time and effort which has not been expended here.

khazzah

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Re: defining terms of the art in the specification
« Reply #4 on: 02-04-11 at 09:47 am »

What are some considerations for defining terms known in the art in the specification?

First off, I agree with bleeding pen: there is no need to define terms that are truly "terms of art". In fact, I think it's confusing when you attempt to redefine something that already has an accepted meaning.

However, I think that many terms used in patents are *not* terms of art: connected, coupled, device, adapter, mechanism ... I can also  think of lots of others that have some meaning to a POSITA -- module, network, software -- but not enough agreement about meaning to say they are "terms of art".

My sense is that definitions are common in some types of technologies (biochem?) and not in others (electrical/computer).
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Karen Hazzah
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http://allthingspros.blogspot.com/

Information provided in this post is not legal advice and does not create any attorney-client relationship.
 



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