Patents are Still "Very Important"

In Inpro v. T-Mobile, an applicant’s use of the phrase “very important feature” in the specification allowed the court to legitimately import the “important” limitation into the claims.  That result prompted a resourceful, but anonymous Patently-O reader to do some quick analysis to figure out: who still uses phrases like “very important?” The answer: Lots of people.

 

The following table shows the percentage of patents using the terms “important” or “very important” by month over the past twenty years.  As you can see, “important” features are alive and discussed in a significant number of applications.

 

Application Month	“important” %	“very important” %
Jan 1985	23.5	1.65
Jan 1990	24.0	1.80
Jan 1995	28.3	1.82
Jan 2000	29.6	2.08
Jan 2001	27.5	1.80
Jan 2002	27.0	1.78
Jan 2003	24.4	1.95
Jan 2003*	32.3	2.31
Jan 2004*	31.4	2.21

*Data taken from published patent applications, which may or may not also have issued as patents.

 

Of course, there are times when it is useful to talk about a “very important” feature of the invention — such as if you are attempting to avoid known prior art.  However, I would be cautious even on that point.

 

A few caveats to this data — some of these hits might be in the background saying “this problem is very important.”  Some of them might also be saying it is “not very important.”

Comments

[Paul Cole]

What are the drafting lessons which come from this case? In my submission:

(1) Go through the features of the main independent claims, look for the corresponding features in the disclosed embodiments and make sure that alternatives are disclosed. If you do not disclose foreseeable alternatives you cannot rely on being given broad protection. That is the rule under 35 USC 112(6) but it is a good rule to apply generally.

(2) Be sparing about the features you identify as important. The Court may believe you.

(3) Don't be afraid to identify what is truly important or preferred and why. Part of the public notice function of a patent specification is to identify the features that make an important contribution to inventive merit and the reasons why they do so. If you do not identify such features in the specification and you get to an infringement trial, the court is apt to think that the feature you wish to rely on is not truly inventive but instead is "the afterthought of an astute trial lawyer."

There should be a balance in the drafting of patent specifications - inappropriate "patent profanity" is to be avoided but we should not fall into the trap of being merely "the bland leading the bland" (quoting J.K. Galbraith who died recently). There is a fashion for very bland specifications, especially in the electronics art and possibly a concentration on numbers instead of quality. When they come to be enforced, these bland specifications are likely to give just as much trouble as their predecessors, but for different reasons, foreseeably including inventive step.

The various panels of the CAFC are in my submission (I am an Englishman and therefore by definition a non-expert) more conscientious and keen to give a just decision in the case before them than is sometimes credited by US commentators. Pauline Newman who was the judge in this case is one of the most respected members of the CAFC and renowned for her liberal attitude. If she says the claim term should be narrowly construed, then she probably has very good reasons for the view she has adopted based on the factual matrix before her.