Field of the Invention - include or exclude

Started by lovethepirk, 08-17-14 at 05:06 PM

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lovethepirk

I have this patent book that lists how the everything should be constructed in a lot of depth.  I don't see 'Field of the Invention' anywhere listed in said book.  In the index of the book there is a 'Field of the Invention" so when I flip to that page it states:

"In recent years, the Patent Court began limiting the scope of some patents by relying upon 'limiting statements'...."
"For that reason, your patent should not contain any statements that the courts could possibly use against you to limit the claims..."

"...that is, do not indicate any field of the invention, do not mention any problems with the prior art that are not already known, do not indicate that any embodiment is preferred..."

I am looking at a lot of patents in my field of study and all of them I have seen list a 'Field of the Invention'.

Should one include it or remove it?


JimIvey

I always include the "Field of the Invention".  It's so broadly stated that it's hard to imagine it could ever narrow a claim.  My understanding is that 37 CFR suggests that it be included and that the text is used to classify the application.  If you can't write a field of the invention that's so broad as to not narrow the claims, I don't know how you're going to be able to write the claims.

So, I'll respectfully disagree with that book.

Regards.
--
James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
Friends don't let friends file provisional patent applications.

khazzah

Quote from: lovethepirk on 08-17-14 at 05:06 PM
Should one include it or remove it?

As with many, many things in patent practice, this is a matter of opinion. And perhaps that's all you're asking for ... opinions.

I don't have a strong opinion on this question. Most of the clients I work for are large corporations, and they have their own rules as to whether this section is included. When the choice is mine, I include a broadly worded Field of the Invention.

Quote from: lovethepirk on 08-17-14 at 05:06 PM
I am looking at a lot of patents in my field of study and all of them I have seen list a 'Field of the Invention'.

That tells you it's common practice. Which probably means it's not a *terrible* idea. But doesn't really tell you it's a good idea. Or why some folks leave it out.

Karen Hazzah
Patent Prosecution Blog
http://allthingspros.blogspot.com/

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

lovethepirk

Thanks for the thoughts, I was curious why this book stated that yet I see it in each patent I pull from PAIR.


NJ Patent1

As JI noted, the "field" is just a short statement to aid in classifying the app and getting it to the most appropriate AU.  I have no problem reciting "the present invention relates to a medicament useful for, e.g., treating hypertension, and to dosage forms containing it."  Never had a client object to it, in fact have had to advise to "tone it down" a bit.

dbmax

#5
In searching the PatFT database online, I discovered the following statistics:

Nearly 110,000 specifications use some form of the term "inter alia." 

About 6% of those have an inventor named "John."

Fewer than 3000 abstracts use some form of the term "inter alia." 

About 9% of those have an inventor named "John."

Thus, an inventors name is 50% more likely to be John if "inter alia" is used in the abstract than if used in the specification.

db

8)






MYK

"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

NJ Patent1

db:  "Thus, an inventors name is 50% more likely to be John if "inter alia" is used in the abstract than if used in the specification."  This is indeed well and good and very interesting. Nice detective work.   But my client, Nunzio, is from Brooklyn, thrice broken nose, and cauliflower ear, always carries a baseball bat (why?), and insists on exempli gratia instead of inter alia in the abstract. He insists they mean something different in his Mother's mother tongue (with some support). Ohhhh! don't insult his mother (or his godfather)! If you would like to debate with him in person,  PM me street address, and hours you are  home alone, I'll pass along.  K?    :)  He likes e.g. better that i.a.. Fuggedaboutit. Nobody needs to get hurt here ...  It's business, not personal db, well except for the five yards I'm into him for.  BTW, you by chance got the number for witness protection?   If I don't get these claims allowed w/ "e.g." in abstract, may need it (I hate crutches). 



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