JimIvey: Thanks. I didn't know that Examiners used "comparewrite(R)" or something similar. It doesn't make any (legal) difference. What's new is new and what's old is old is old.
True. But how much time does your client want you to spend arguing about whether a slightly changed paragraph is "new matter"? I don't want to argue about whether the old stuff is really old stuff, so I leave it unchanged (except for clerical corrections and such). Instead, I'd much rather spend time arguing about whether the new text is really old stuff (supported by the old stuff but merely updated best mode, for example).
I type to question why experienced practitioners - like you - include "boilerplate" that, in my view, merely recites what the law, as I understand it, is anyway- e.g. "the claims define the invention". It seems the same as writing "the following examples in no way limit etc. If there are any CCPA, CAFC, or SCOTUS decisions that limit claims to examples or preferred embodiments, they are rare and the exception. Has the CAFC ever been swayed by such boilerplate? Any cites? (Confession: I do write "the present invention, in certain of its embodiments, is illustrated by the following examples." So I guess I'm a bit of a "sheep").
If a patent is a legal document and a legal document should not include unnecessary words, why is the practice of reciting settled law in an application so prevalent? Chief Judge Rader - or his clerk - knows the law and probably won't take my word for it. I'm earnestly interested in your reply. In the effort to clean-up my legal writing, am I doing my clients a disservice by not using such boilerplate?
First, I've seen exactly the opposite (written by another practitioner): "The following sets forth the broadest application of the present invention as contemplated by the inventor." So, at the very least don't do that! Can the applicant waive the general rule that the spec isn't limiting? If so, can something less than the particularly stupid statement quoted above be deemed to be such a waiver? Perhaps the boilerplate can help tip the scales in favor of not being limiting.
Second, Judge Rader and his clerk are not the first and last word on you claims. In fact, if the trier of fact determines that the applicant meant for a particular phrase in the spec to be limiting -- perhaps partially defining a claim term, would Judge Rader or the clerk think the factual issue ought to be overruled?
Third, as for not including extra words, what's the penalty for exceeding the requirements of 112p1? Nada. What's the penalty for falling short of the requirements of 112p1? No patent. Economy of language is good, but not so much that you fail to meet the requirements of law. Excess verbiage will cost you style points but not patent rights.
There isn't much boilerplate I use in my applications. I've seen boilerplate that goes on for pages prior to beginning the detailed description -- as if they'd rather you didn't read it -- defining "and" and "or" and "includes" and "maybe" and "perhaps" and numerous other words. Of course, it's really hard to define "and" and "or" without making the definition circular. I thought they should just incorporate a specific dictionary by reference and move on.
However, having said all that, the one bit of boilerplate I use is the one you describe, something like "The above description is illustrative only and is not limiting. Instead, the present invention is defined solely by the claims that follow."
Regards.
Author
Topic: Needed help on Continuation-in-Part (CIP) processing.. (Read 420 times)
