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[patentwind]

hi
when reading some articles, the author said it is not good to use "of the present" in the specification any longer, for example, background of the invention changed as background, summary of the present invention changed as summary only, or in the detailed description part, they suggest using "an embodimetn of the present invention" instead. they believe, using "of the present invention" in parts of the specification will affect the scope of the claims or will result limitation on the invention. but if it is, why almost all the specification still be drafted in this way, including most newly application, including the applications of the big firms.
thanks

[Bill Richards]

I have seen no cases which suggest this is in any way a problem.

[Isaac]

There is case law suggesting that using "the present invention" in the specification at least provides support for a decision to limit the claims.


Microsoft Corp. v. Multi-Tech Systems, 357 F.3d 1340 (Fed. Cir. 2004)

In light of those clear statements in the specification that the invention (“the present system”) is directed to communications “over a standard telephone line,” we cannot read the claims of the ’627 patent, the ’649 patent, or the ’532 patent to encompass data transmission over a packet-switched network such as the Internet.  Instead, the specification shared by all three patents leads to the “inescapable conclusion” that the communications between the local and remote sites of the claimed inventions must occur directly over a telephone line.

I avoid the use of the term "present invention" is the specification and both of the firms I've worked for have been insistent that I do so.   I'll admit to not knowing what most firms do.

Additionally, I'm told not to identify any embodiment as the preferred embodiment.

"Background of the invention" seems harmless, but perhaps that depends on what you put in there.  "Summary of the invention" seems like something to avoid IMO.

[JimIvey]

I wouldn't go that far.  There are ways to use the phrase "the present invention" without describing it directly in the specification.

I would have said (without the benefit of that particular case) that "the present system" is flirting with disaster, coming right up to the edge of saying "the present invention" has this or that quality.  Now, it seems that the phrase goes beyond the edge and is an official no-no.

I use "in accordance with the present invention" fairly regularly, albeit sparingly, in patent applications.  That means that what I'm about to describe is not inconsistent with the present invention.  I'm okay with that.  It's really no different that writing "in one embodiment of the present invention" yadda yadda yadda.  And I think that's perfectly fine.

However, I would never say that "the present invention" achieves this or that result.  It's my understanding that this is the very reason "objects of the invention" has fallen out of favor.  Instead of writing "the present system" (the phrase from the case Isaac mentioned), I probably would have written something like "the system of Figure 1" or "the system described herein."  That would make it clear that the thing I'm referring to is what I'm describing in the "Detailed Description" section, not the claimed invention.  I would also tie benefits and advantages to described embodiments rather than the invention itself.  

But I don't think merely finding "the present invention" as a phrase somewhere in the application makes the entire specification limiting.  As one pretty clear example, the typical disclaimer to the contrary often includes "instead, the present invention is defined solely by the claims with follow."

Regards.

[Isaac]

After reading Mr. Ivey's response, I understand that my phrasing was a bit sloppy.   I don't mean to imply that every use of "the present invention" creates problems.  For example describing the present invention as including additional alternatives to those things described shouldn't create a problem.    Further I generally close with a paragraph to which intends to point out that the invention should covers what's claimed and not be limited to what's described.  Replacing the invention with some kind of embodiment language in that closing pargraph creates nonsense.

But that said, detailed descriptions are usually written to describe example implementations of the invention.   The examples might not cover the full scope of the invention, and using "the present invention" in the context of discussing an example does state something more limiting than you may have intended.    If you look at CAFC case law you can find examples of cases where the court has refused to use such language to limit the claims, and other cases where the court has limited the claims based on such language.

[Isaac]

Something from the June 30th Patent Trademark and Copyright Journal

A patent on a "fuel system component" is limited to a fuel filter only because the written description expressly refers to the filter as "this invention," the U.S. Court of Appeals for the Federal Circuit ruled June 22 (Honeywell International Inc. v. ITT Industries Inc., Fed. Cir., No. 05-1407, 6/22/06).

Affirming a summary judgment of noninfringement, the court drew from its en banc decision in Phillips v. AWH Corp. to stress the importance of the specification in determining claim scope. The written description states on at least four occasions that the fuel filter is "this invention" or "the present invention," the court stressed, declining to read a broader claim scope. Since the accused devices lack a fuel filter, "not a preferred embodiment, but an only embodiment," there is no literal or equivalents infringement, the court ruled.

[frank10]

I've been using ... one embodiment of the invention or an embodiment of the invention with additional wiggle language

some clients don't like using "present".  some even don't like embodiment and want "aspect"

[Isaac]

In my opinion, in situations where using "embodiment" is a good idea, using "aspect" is not that great of a substitute.   An aspect of an invention is just one portion of the invention, while an embodiment of an invention is one expression or example of the invention.

[JimIvey]

I agree with Isaac, "aspect" can be problematic.  If an embodiment of an invention has at least 3 wheels, I think other embodiments can have fewer than 3 wheels.  If an aspect of the invention is that it has at least 3 wheels, can something with less than 3 wheels be considered an embodiment of the invention, i.e., can infringe?  If I understand those terms correctly, I think it's doubtful.

Regards.