No No Words: What Words do you Avoid in Patent Applications

I'm planning to do a quick study of "no no words" in patent applications and how their use has changed over time. Examples include "objects of the invention," the "present invention," "must," "prior art," "limitation," ...

Are there other phrases or words that I should include in the study?

Comments

[Isaac]

require(s)
necessary
crucial
critical
...( synomyms)

Of course one might use them in describing PA in the background section.

[MaxDrei]

How about "surprisingly" as in "Surprisingly, it has been found that..." given recent events in Europe, in pharmaceutical patent litigation?

[4Y Associate]

Maybe "preferred" as in "preferred embodiment"? I think there is a debate as to whether the embodiment identified as the "preferred" embodiment would limit claim construction.

But, perhaps I'm wrong.

[Budge]

I once had a client insert "hypotehtical" before "embodiment". I think that won the no-no-hell-no prize for me. Kudos!

[curious]

important?

[James Daily]

never, always, obviously, very important, essential, key, necessarily

Some of these were taken from http://www.michbar.org/ip/pdfs/Diner2007.pdf and http://www.krajec.com/index.php?/weblog/C54/

The MPEP flags the following: at least about, -type (as in 'ZSM-5-type aluminosilicate zeolites'), on the order of, substantial portion, or like material, comparable or superior, aesthetically pleasing, or similar

http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2173_05_b.htm

[anonymous]

eliminate, maximize, minimize, motherf---er

[patent leather]

"means"

[Steve M]

"signal"

[David]

whereby (in claims)

[MJS]

"Summary of the Invention"
"Field of the Invention"

[Just an ordinary inventor(TM)]

(many) embodiment(s) r OK
"preferred" embodiment doesn't help

"r. u. a. f'k. i." is a no no in a response.

[Just an ordinary inventor(TM)]

present "invention" is a no no

"embodiment" is OK

"preferred" embodiment doesn't help

[4Y Associate]

@David

I think "intended use" terms is a good suggestion. "such that...," "whereby...," "can...," etc. There's a whole section on intended use terms in the MPEP.

[anon]

"novel", "new and improved", etc.

[Actual Inventor]

What I would like to see is the rational for a word being a so called "No No Word". Simply saying, "don't use it", does not help anything.

[Actual Inventor]

4Y Associate:

Maybe "preferred" as in "preferred embodiment"? I think there is a debate as to whether the embodiment identified as the "preferred" embodiment would limit claim construction.

All you need to do is use "preferred embodiment" for every embodiment described in the application.

[Mad]

necessary, requires, must, always, never, only, to name a few...

my new two no no words: signal, software ;)

[CJ]

How do you avoid running afoul of the best mode requirement if you don't least mention, for example, compounds that are generally/especially preferred over others?

[AS]

for biotech app.: prevent and prophylactic.

[Caveman Lawyer]

MaxDrei, could you please explain your comment about "surprisingly," or point to the case you're referring to? Sorry, I missed this case, and I'm not sure why "surprisingly" would be considered a negative.

[gpwhite]

Regarding CJ question about best mode, it is my understanding that the best mode must be included but does NOT have to be labeled as the best mode. But it can't be buried either.

[European practitioner]

I do not believe in "quick fix" rules, such as avoiding a list of words. At least the case law I have studied, it is not the use of a particular word per se that has caused problems, but the context that is being conveyed by that word. (Maybe someone can provide me with such case law?)
Following Euroean practice, I am careful to establish the most general form of the invention and problems that it solves. Having done this, the expression "object of the present invention" is not a problem as long as it is used with reference to this most general form of the invention.
The problem with many specifications that I have seen have problems in litigation is that they confuse general statements of the invention with specific embodiments. If you do that, I do not believe any list of "no no" words will help you.

[john Prosecutor]

4Y Associate | Feb 06, 2009 at 08:24 PM -- recommends against "intended use" terms -- I think that there are appropriate times when they can be used

[john Prosecutor]

what are the various cases which urge us to avoid these words? Please list, fellow commenters

[Znutar]

"Aspect of the invention" in place of "object."

I'd also like to vote for "said." "The" works just as well without the pretentious edge, and makes reading and understanding claims easier for inventors and other non-patent professionals. [My favorite pro se prosecuted patent has claims filled with "the said ____ " and the examiner did nothing to help the applicant clean up the language. Check out 5,918,159.]

It falls outside of the scope of the assignment, but I consider any term in the claims not found elsewhere in the specification to be a no no word.

[Alun Palmer]

Nothing wrong with 'said'.

Generally, it's only partly case law that leads us to avoid certain words. Mostly it's peculiar knee-jerk reactions from Examiners that respond to them like Pavlov's dogs!

[Mark Nowotarski]

"tax"

[Dave]

Also, in claims, the terms "conventional," "normally," "traditionally," and "standard" limit the described feature to technology existing at the time of the invention.

[Bob Hodges]

I agree with European Practitioner as far as needing to avoid confusing general, broad statements of the invention with specific embodiments. However, as far as "quick fix" rules, "rules" and "words to avoid" can be very helpful because some are very dangerous and avoiding those terms reduces risk. These are not absolute "fixes," but they make writing a less risky application much easier.

Regarding cases that establish that a word is a no-no word, I do not have time to list them. However, the debate above about whether any case "prohibits" a word or renders its use "always" a no-no is misplaced because cases do not make such rules or pronouncements. However, there are cases that have interpreted a sentence such as "the invention is..." as limiting the claimed invention to what was stated in the remainder of the sentence, regardless of the words in the claims or other broad statements in the application. The problem in this example is two-fold. First, the "invention" should be whatever is described in the claims. Because claims are often amended during prosecution, a specification filled with sentences pronouncing what "the invention is" can and has been used by courts to limit otherwise broad claims. The second problem is the use of imperative forms of the verb to be. This indicates (and can be used by a court to indicate) that the subject of the sentence MUST be whatever is stated. Thus, every sentence in imperative form describing the invention in less than the broadest terms could be interpreted as stating that the invention be limited to the more limited statement.

The grammar pitfall also applies to other ways subgenera of inventions are described. For example, in the common situation where you are trying to describe a specific component that can be used in most, if not all, configurations of the invention, it is not uncommon to see "In one embodiment..." or "In some embodiments...." The problem is that this could be interpreted as limiting the component involved to a single embodiment or to less than all of the embodiments it could be used with.

The point is, not only words, but grammar can be used against you.

[Bob Hodges]

Another no-no word:

"May" The word "may" can be interpreted as expressing doubt, incompleteness or uncertainty. I saw an Interference lost because a key sentence using the word "may" was interpreted by the Board as expressing uncertainty about what was stated.

[Bob Hodges]

How about some yes-yes words?

"for example" and "such as"

Several court decisions have declined to limit claims to limited embodiments and subgenera described in specifications because they were phrased as examples.

[Poppa Bear]

As for rationales...

There is no legal requirement in the US to use the word "invention" within the application, and doing so, whether with respect to an "object", "aspect", "gist", "heart", "essential element", or any other use of the term "invention", often invites limiting the construed scope of the claims to whatever subject matter is described as the "invention". That is, given that allegedly only the claims define the invention(s) of a US patent, and given that those claims can change after an application is filed, why leave other characterizations of the "invention" laying around in the spec to confuse judges, juries, experts, opponents, etc.?

Likewise, there is no US legal requirement to label any section of the specification as a "Field of the Invention" or "Summary" ("of the Invention" or otherwise"). Including a "field" or "summary" might limit interpretation of the claims to only subject matter that a PHOSITA would believe to reasonably fall within that field or summary.

Speaking of claim constructions, opponents have tended to have an easier time convincing district court judges (and sometimes Federal Circuit judges) of particular claim constructions when the applicant helps out by describing claimed subject matter using absolute and/or very limiting terms, such as terms pointed out in previous posts and certain other terms (e.g., necessary, require(s), crucial, critical, obviously, very important, essential, key, necessarily, must, always, never, only, maximize, minimize, eliminate, prevent, etc.).

There is no US legal requirement to include a section titled "Background" ("of the Invention" or otherwise), and doing so can prove troublesome. For example, the content of a "Background" is sometimes treated (and occasionally rightfully) by the examiner as an admission of prior art ("APA"). Why create that hassle? For that matter, why compare anything about the "invention" or its embodiments to anything done by others? Why not save those attempts to distinguish over the prior art for when the examiner or an opponent has actually put specific prior art in contention against a particular claim? Moreover, any inaccuracy in the characterization of prior art, whether presented in the spec or later, potentially can be grounds for a messy inequitable conduct allegation. So if any discussion is believed required of a prior art reference, why not stick strictly to quoting that reference?

Similarly, there is no US legal requirement to discuss what is "known", and doing so often invites poorly-trained examiners to insist that such discussion is an admission of prior art, even when there is no attribution of what is "known" to those other than the inventor(s). Why not simply cite known non-cumulative material prior art via an Information Disclosure Statement?

As pointed out in a previously posting, there is a US legal requirement to disclose the preferred embodiment, if any, of the inventor(s) as of the effective filing date. But there is no legal requirement to label any particular embodiment as preferred, and doing so can provide a more detailed and/or efficient infringement roadmap to potential pirates, and/or invite certain judges to construe asserted claims to cover each such labeled preferred embodiment. See, e.g., the line of cases that includes MBO Labs, Inc. v. Becton Dickenson & Co., 474 F.3d 1323, 1333 (Fed. Cir. 2007) (quoting On-Line Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH, 386 F.3d 1133, 1138 (Fed. Cir. 2004) ("[a] claim interpretation that excludes a preferred embodiment from the scope of the claim is rarely, if ever, correct"))).

Especially clear today in light of Bilski and the Board's various "creative" interpretations of it, is the fact that the law and/or interpretations of the law can change over the life of an application/patent. With that in mind, there is nothing necessarily wrong, and there ultimately could be advantages in, discussing "means", "signals", "software", "business methods", etc., in the specification. Nevertheless, care should be taken to avoid locking any particular subject matter to potentially contentious terms without being able to claim that subject matter in a manner that excludes or avoids those terms. For example, a particular process might be reasonably and/or advantageously described as capable of implementation "via software, firmware, and/or hardware, such as a processor and/or processor means, which can include one or more microprocessors, integrated circuits, FPGA's, optical processor's, etc.".

As discussed in MPEP 2173.05(b) (referenced in a previous post), relative terms and/or terms of degree (big, small, tall, short, heavy, light, etc.) can be problematic, particularly in claims, when no standard for measuring that degree is provided in the spec and a PHOSITA would not be reasonably apprised of the scope of that term. That MPEP section explains why other terms, such as "about", "essentially", "relatively", "substantially", "similar", "or the like", "on the order of", "type", "comparable", "aesthetically pleasing", "superior", etc., can raise concerns.

Although "incorporation by reference" can be a handy tool in the US, it can create enablement issues in foreign jurisdictions that do not give effect to the "incorporation" statement. If there is any possibility of filing outside the US, it is generally better to simply insert the otherwise "incorporated" material into the priority application.

Speaking of foreign jurisdictions, while many prefer to see a problem-solution approach, under KSR, discussions of a “problem” can create trouble for a US patent. As explained by Hal Wagner, "[w]hat creates a special and immediate challenge for patent application draftsmanship is the KSR linkage between a 'problem' that is be solved by the patentee and the common sense of a worker skilled in the art who is motivated by the problem to seek out an 'obvious to try' solution." In support, Hal quotes KSR Intern. Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742 (2007) ("[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.")

Lots of rationales to chew on.

[Paul Cole]

Some sense and much nonsense has been written on this topic.

Judges, whether in US or Europe, are very bright people and are more influenced by the overall merits of the case than the presence or absence of particular buzz-words, although such words can have binding effect if used incautiously and even if not may provide a pretext for the court summarily reaching a decision adverse to the patentee that it feels inclined to make but would otherwise find it harder to do. I thouroughly agree with the comments of "European practitioner".

We should all agree with Isaac that to say that a feature is necessary, crucial or critical when it is not can have disastrous consequences.

And Max Drei is right about "surprisingly". A patent specification should be a straightforward document free of gratuitous value judgements - so just say what the result is and leave it to subsequent evidence and argument whether it is surprising or not.

"Preferred" covers both rational and irrational preference. If a feature is preferred for a reason and is labelled clearly as preferred but not essential then there is no reason not to use that language, especially if the reason for the preference and the results that are obtained are stated. But if it is a mere description for an arbitrary group of embodiments (as often in chemical specifications) then it is misused and a potential source of trouble. Why not simply say that some embodiments incorporate this feature or have that structure?

Theree is a school of thought, especially amongst those in the US in the mechanical and electrical arts, that we should draft very bland patents. The specification as originally filed needs to be a flexible document since much can happen in the 3-6 years between initial filing and possible grant, and it is dangerous to be irreversibly committed to any formulation of the invention at the outset. But the inventive features have to be contained in the specification as filed, and there should be sufficient supporting information that their significance can be recognised. During examination it is necessary to decide what the invention really is, arrive at a definition and commit to it. "Hier steh Ich; Ich kann nicht anders" as Martin Luther said. We may subsequently be able to amend, but only with difficulty, and often we have to stand or fall with one of the issued claims. Abraham Lincoln, when he practiced law, knew the importance of identifying the key point in a case and fighting on that point. If there were ten points he might concede on nine of them knowing they were worthless but would fight and win on the tenth knowing that it was critical. Eventually we have to do the same job in our field of specification drafting, and to get it right.

[Poppa Bear]

A hearty second to everything stated above by Mr. Hodges.

[Poppa Bear]

On the opposite side of the coin from the no-no words, keep in mind the opportunity to explicitly define any claim term (or specification term) in the application. Providing such explicit definitions can serve to limit the scope of the claimed subject matter, but can also serve to limit what prior art a PHOSITA would consider to be pertinent with respect to that claimed subject matter.

[Poppa Bear]

This is a response to Mr. Cole's statement that "During examination it is necessary to decide what the invention really is, arrive at a definition and commit to it."

Stated more generally, upon paying the Issue Fee, the applicant has at least financially committed to substance of the allowed claims, which can define any number of inventions. For various reasons, other potentially allowable claims, defining other inventions, might have been deferred for pursuit in continuing applications (CON's, divisionals, etc.).

Realistically, any overly firm commitment "to what the invention really is" too early in the process runs a meaningful risk of being thwarted by unknown and/or previously unknowable (hidden) prior art. Until a US applicant has a fair shot at knowing all relevant prior art before filing, competent drafters are probably wise to build much flexibility into their applications.

[GP]

I completely agree that the background section and the summary are just landmines you plant yourself.

Had to direct a client elsewhere once. Their lead inside had a PhD and was insisting on a 9 page background. I calmly explained that this wasn't a paper for publication in PNAS, and that a 9 page background was a really bad idea. She said proper attribution had to be included. I said, "see yuh."

On the other hand, when you get the objection from the Examiner for the spec, you've created problems in a different way.

[breadcrumbs]

Thank you Dennis for a refreshing topic that (so far) leaves out the vitriolic and juvenile banter that seems to come with some of the more contentious subjects.

[posing as a vitriolic banterer]

"Thank you Dennis for a refreshing topic that (so far) leaves out the vitriolic and juvenile banter that seems to come with some of the more contentious subjects."

Bite me.

[Paul Cole]

It is amazing how many useful things are thrown away for fear of what might happen in litigation.

By all means cut out the definition of field of the invention. Ignore the fact that you can write multiple alternative definitions at the time of filing and by amendment to the claims select one of them during prosecution as the best definition. Ignore the fact that the CAFC likes definitions and calls for them to be included e.g. as in Sage Products Inc. v. Devon Industries Inc. Throw away the opportunity to argue that a prior art reference, though superficially similar, is not within the field of the invention (it works well in Europe and can work in the US). Throw away the opportunity to argue, with support from statements made in the specification as filed, that a secondary reference is in a field too remote to be considered by the skilled person. If you file in Europe throw away the opportunity to argue that a particular item of prior art is not an appropriate primary reference, and cannot be used to define the technical problem, because it does not fall into the relevant field of endeavor.

Don't carry out a prior art search, and if you do never make an assessment which reference is in the closest prior art and therefore should find its way into the background section. (I agree with GP that the Background section is not part of a PhD thesis - usually an objective discussion of a single prior art reference in the field of endeavour of the invention is all that is appropriate).

Deprive yourself of the opportunity of systematically identifying every difference from what is disclosed in your selected reference, and identifying a subset of differences with associated benefits that should be mentioned in the specification. Turn a blind eye to the theorem that if you have correctly identified all the differences and claimed them, then if there is inventive subject matter in the application you should have a claim to that subject matter and that this remains true even if more relevant prior art later turns up. When drafting your claims the "know nothing" and "seat of the pants" approaches are more dependable - use the Force!

Don't mention the single prior art reference you have found in a Background section because (a) it might give the Examiner the impression that the inventor knows what he or she is talking about, and (b) some nasty litigator might question why you selected that reference and you won't have explained it to the inventor(s) at the time, and you won't have made a file note or other contemporaneous record of the reasons for your selection.

Write a background section not based on the actual disclosure of a particular reference but instead full of cloudy generality that may turn out to be wrong. Your "know nothing" approach will commend itself to any reasonable examiner and might even escape comment by your feared litigator.

Definitely omit to mention the advantage that flows from each new claimed combination of features. Case law going back to 1803 on both sides of the Atlantic supports the proposition that this is evidence of invention, and the proposition has even found its way into KSR v Teleflex, so it is definitely not anything you should be using to your advantage. In Europe you could use the advantage to reconstruct a credible technical problem. Definitely you would not want to be in position to do that.

Undue fear of litigators (parakeltophobia, derived from the Greek word parakeltos?) leads to featureless specifications that do not command respect. The bland lead the bland. If this comment is in somewhat outspoken terms then it reflects the seriousness of the topics under discussion.

[Anonymous]

"the invention is ..." (and variants thereof)
"most preferred ..."/"most preferably ...."
"obviously, ..."
"in a first [second], [third] embodiment ..."

This should be fun; I'm looking forward to the compilation. Get ready for the melee as prosecutors defend their most-favored monikers.

[Paul Cole]

In response to Breadacrumbs and "posing as a vitrioloc banterer we do not seem to have heard from Malcolm Mooney yet.

[SmedleyLudlow]

what about "consisting of" in a non-chemical application?

[BigGuy]

"what about 'consisting of' in a non-chemical application?"

There's absolutely nothing wrong with it, like almost all of the suggested no-no's here, IF THAT IS WHAT YOU MEAN. Use it, enjoy it, but just be aware of exactly what it means.

A few of the suggestions above are or have become terms of art, and thus carry all sorts of baggage with them. "Object of the invention" is one of those. I honestly don't know what it means, so I don't use it. (I'm not sure I know what an "aspect of the invention" is either.) "Prior art" is another. If you're referring to something specific, say so. Otherwise, leave it out.

[Mark Nowotarski]

"The word "may" can be interpreted as expressing doubt, incompleteness or uncertainty."

Only if you read into it more that what it says.

[Steve Zweig]

Perhaps a few simple rules might suffice. For example, one rule might be that the language should be chosen based upon the concept that the typical application should be assumed to consist of a large number of alternative "potential" inventions; and prior to prosecution, the drafter will not know in advance which of these alternative inventions will end up surviving. This puts a first constraint on the language: "don't be too specific."

A second balancing concept, however, is that the fundamental "bargain" of patents, adequate disclosure for protection, (e.g. 35 USC 112) must continue to be respected. This puts a second and balancing constraint on the language: "don't be too general."

Ideally the drafter should, in conjunction with the client, know enough about the underlying technology to achieve a good balance between these two constraints. Too early a fixation on one of many possibilities hurts the client, while language that is too general hurts the client by running into 35 USC 112 issues, and also denies the public the benefit of the disclosure.

Also in my opinion, "informing the public" means that the invention should have well written "background" and "summary of the invention" sections. Omitting these has some negative implications, such as lack of candor, or lack of possession of the invention, that could reflect poorly on the profession, and may also hurt the client by annoying the examiners.

Put it another way, it is important to gain the examiner's trust. A properly written background and summary of the invention can both educate the examiner, and help the client by streamlining prosecution (avoiding wasting valuable resources on side issues).

[Jeffrey McKinney]

I agree with Paul Cole's comments. Whether a word is a "no no" oftentimes depends on perspective: litigators want ultimate flexibility; prosecutors have to commit to get cases allowed. It also can depend on one's area of practice. I have heard experienced biotech practitioners say that one should never use the word "embodiment" in a patent application, an idea that most mechanical practitioners might find ridiculous. Finally, one's view of "forbidden words" may develop from one negative experience with an outlier examiner. It is unclear that an event with incredibly low probability should generally rule one's actions.

[Jeff Spangler]

"Nothing wrong with 'said' ..." other than its awkward legal pretentiousness and absence from ordinary English. The convention is to name an element the first time as "an element" and thereafter refer to it as "said element". Why not simply subsitute "the" for "said"? (Although I've heard of hidebound Examiners who object to this "unconventional" usage even when "the" is used consistently after first naming the element.)

[Joe Breimayer]

I would appreciate it if every "no no" on the list that you are developing was supported by a citation to a case where the particular "no no" was instrumental in an adverse outcome. I still see recent decisions where the inclusion of "objects" in the SUMMARY, for example, did not play any role in patent claims that were held valid and infringed, so cases that turn on "objects" would be a good start. Would everyone who has contributed please go back and support the contribution with case law? You can exclude "means" where case law has been well developed and is fairly widely understood.

[Malcolm Mooney]

" I have heard experienced biotech practitioners say that one should never use the word "embodiment" in a patent application"

On what planet? That is the stoopitest thing I've heard in quite a while.

This is what happens when people whose only personality trait is anal retentiveness are allowed to practice law: thoughtless, reactionary bullcrap.

[htp]

Here is a long list which I have collected over time (which may include the NO NO words already submitted): “The invention …,” essential, must, needed, desirable, usual, correct, required requirement, laborious, expected, never, must, significant, majority, peculiar, most, should, surely, none, only, rarely, "limited success with," "free of," "substiantially free of," typically, highly, absolutely, frequently, difficult, conveniently, "time consuming," commonly, generally, uncommon, usually, few, "as much as," "substantially XXX," "majority of XXXX," special, "fully", "clearly", "concisely" and "exactly." Some of then are not really NO NO, but I would think that if you use them, you better have a definition somewhere.

With respect to "surprisingly discovered," see Purdue Pharma L.P., et al. v. Endo Pharmaceuticals, Inc., et al.

With respect to "standard," "conventional,"
"normal," see PC Connector Solutions LLC v. Smartdisk. Claim terms such as "standard", conventional", and "Normal" limited the claim limitations "to technologies existing at the time of the invention."

With respect to "at least one of A, B, C, D, and E" -- not a NO NO, but proceed with caution with the rather screwy case, SuperGuide Corp. v. DirecTV Enters., Inc., 211 F. Supp. 2d 725

With respect to "contain" or "containing" not a NO NO, but why bother, why not just use "comprise" or "comprising" to avoid disputes down the road. See Mars, Inc. v. H.J.Heinz Co. 03-1617

[anonymous]

""Aspect of the invention" in place of "object.""

Whaa??? Scratch "of the invention" entirely! Look up the definition of "aspect" and ask yourself if you want to say that something is "an aspect of the invention."

[HiMarry]

I assume we're talking about the detailed description and not the claims. No-no words for the detailed description include 'Means' or 'step' since "means for" and "step for" are claim language having signigicant legal meaning and you don't want to f' with that by using those words in the detailed description. Any word ending in ly, obviously, essentially, necessarily. Instead of 'emboidment', use 'example'. Instead of "is" use "may be" since "is" ties the hands of patent litigator.

[Roger Karp]

The only words I'm aware that you should absolutely never use are the seven words made famous by the late George Carlin.

Anything else can be used or misused depending on the context. Just be careful out there, and keep the peace.

MHO, YMMV, etc.

[Miles Edgeworth]

If you have software claims, words in the specification like signal, carrier, network, wave, distributed, or anything that even remotely suggests that your program may be transmitted from one computer to another on anything other than a physical memory-type storage medium risk 101 rejections from particular examiners and art units, even if the claims are in proper Bauregard format.

[Poppa Bear]

Regarding negative implications arising out of use of the term "invention" in the specification, see, e.g., Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007) ("[w]hen a patent thus describes the features of the 'present invention' as a whole, this description limits the scope of the invention."); Honeywell Int’l, Inc. v. ITT Indus., 452 F.3d 1312, 1318-19 (Fed. Cir. 2006); Scimed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343 (Fed. Cir. 2001) (“[T]he characterization of the coaxial configuration as part of the ‘present invention’ is strong evidence that the claims should not be read to encompass the opposite structure.”); see also Andersen Corp. v. Fiber Composites, LLC, 474 F3d 1361, 1368 (Fed. Cir. 2007) (specification’s description of a “critical element” found limiting).

But in partial support of Mr. Cole's second posting, see Praxair, Inc. v. ATMI, INC., No. 2007-1483 (Fed. Cir. 9/29/2008) (Fed. Cir., 2008):
However, it is generally not appropriate “to limit claim language to exclude particular devices because they do not serve a perceived ‘purpose’ of the invention. . . . An invention may possess a number of advantages or purposes, and there is no requirement that every claim directed to that invention be limited to encompass all of them.” E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1370 (Fed. Cir. 2003) (citation and footnote omitted); see also Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., No. 2007-1363, 2008 WL 4072052, at *6 (Fed. Cir. Sept. 2, 2008) (quoting and applying E-Pass). The language here does not suggest that each embodiment of the invention must serve the uniformity objective.

But nearly all of the parts of the specification that discuss uniform capillaries cover only specific embodiments of the invention of the ’609 patent and not the invention as a whole. As such, these parts of the specification are not properly construed as limiting the meaning of the claim language. Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed. Cir. 2007).

The exception is statements such as the language in the Summary of the Invention section of the ’609 specification that “[t]he apparatus of this invention provides a flow restrictor in the storage container in the form of a tube having multiple uniformly shaped capillaries . . . .” ’609 patent col.3 ll.54-56. A somewhat similar statement appears in the Detailed Description of the Preferred Embodiments. See id. col.7 ll.27-29 (“A useful feature of this invention is the provision of the essentially round outer
cross section of the tube with the relatively uniform internal capillary passages.”); see also id. col.9 l.66-col.10 l.9 (“A number of other forming techniques and material properties can be important to obtaining a uniform multi-capillary structure. . . . Uniformity of the resulting capillaries also improves as the alignment of the conduits in the drawing stock becomes more parallel.”).

Although these statements appear to pertain to the invention overall, rather than a specific embodiment of the invention, they are contradicted by a number of express statements in the ’609 specification clearly indicating that uniformity of the capillary tubes is a feature only of certain embodiments, and not of all embodiments, of the invention. The Summary of the Invention states “in a limited apparatus embodiment this invention is an apparatus for controlling the discharge of pressurized fluids . . . . The apparatus comprises . . . [a] tube defining multiple and uniformly sized capillary passages . . . .” Id. col.4 l.66-col.5 l.17 (emphasis added). Another passage from the Summary of the Invention confirms this understanding, describing capillary uniformity as an aspect of “a broad embodiment [of] this invention”. Id. col.4 ll.22-34 (emphasis added). Likewise, the Detailed Description of the Preferred Embodiments section of the specification explains that “[t]he preferred structure of this invention is a uniform multi-capillary assembly that virtually eliminates the presence of irregular capillaries. . . . The most preferred form of this structure eliminates all irregular capillaries.” ’609 patent col.7 ll.29-61 (emphases added).

Finally, the structure of the claims confirms that uniformity was not intended to be a feature of the invention as a whole. The specification expressly defines the uniformity of different uniform capillary passages as a “variation in average diameter between
capillaries not exceeding 15%.” Id. col.7 ll.37-40. While no mention of uniformity appears in independent claim 1, the uniformity criterion defined in the specification —“variation in diameter of different capillary passages does not exceed 15%” — is set forth in dependent claim 4. Id. col.11 ll.25-28. It therefore appears that the uniformity requirement, as set forth in the specification, was intended to be added by dependent claim 4, and was not already present in independent claim 1 or the invention overall.

[Poppa Bear]

Regarding "objects", see also, Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1313-14 (Fed. Cir. 2007) (limiting claims in part based on specification’s identification of the “primary objective” of the invention and its distinction of the invention from the prior art based on that objective).

[Poppa Bear]

Although they are currently somewhat out of favor, I would not be surprised to someday witness a comeback of means plus function claims. The dominant case law requires, however, that an applicant who claims using means-plus-function language “must set forth in the specification an adequate disclosure showing what is meant by that language. If an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112.” In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc).

[Kevin R.]

"business method"

[anonymous]

Miles wrote, "If you have software claims, words in the specification like signal, carrier, network, wave, distributed, or anything that even remotely suggests that your program may be transmitted from one computer to another on anything other than a physical memory-type storage medium risk 101 rejections from particular examiners and art units, even if the claims are in proper Bauregard format."

Given the thousands of patent applications that already define computer readable mediums to include signals, do you really think that you're safe because your particular spec doesn't include that language?

Maybe your safe at the USPTO, but in litigation, the defendants' first exhibit for their Markman briefs should include hundreds of patents including signals and their briefs should argue that the ordinary meaning includes signals in the absence of an express disavowal in your specification.

[anonymous]

I absolutely never use the word "fartabulous" in my applications.

[MaxDrei]

Somebody asked why "surprisingly" is a No No. What prompted me to offer it is the Boehringer v Almirall decision to be found in the link below.
http://www.bailii.org/ew/cases/EWHC/Patents/2009/102.html

[Jeffrey McKinney]

"" I have heard experienced biotech practitioners say that one should never use the word "embodiment" in a patent application"

On what planet? That is the stoopitest thing I've heard in quite a while.

This is what happens when people whose only personality trait is anal retentiveness are allowed to practice law: thoughtless, reactionary bullcrap."

One person I heard say that was a $3 million+ per year prosecution partner at a very well known firm. She had a bad experience in Europe where the use of "embodiment" caused an examiner to view each referenced embodiment as a separate invention.

Perhaps in line with what others have said, I have seen practitioners spend a lot of time trying to figure out whether a word is optimal or potentially damaging in litigation; they would have been better off spending the time on better describing the invention.

[Tim Richardson]

Fascinating, relevant stuff!
Let's dig a little deeper for the rationale behind the choice of language.
1. An issued US patent must describe the invention adequately (including the "best mode"); it must also provide basis for the claims. Preferably, it also provides basis for other claims that may be needed in interference, reissue or re-examination. The same is true for a US application, though with greater emphasis on possible future claims. Strictly speaking, anything else is unnecessary (since the specification is a legal document, not a scientific document, or an advertisement for the inventors' skill or for the diligence of the draftsman).
2. It is never advisable to assume, at the time of filing or even at the time of issue, that you know and fully understand the relevant prior art (still less the most relevant prior art).

Where do these simple truths take us in terms of "no-no"s?
(A) The specification of a granted US patent must NOT
(i) state, explicitly or implicitly, that it is necessary (or "key", "vital", etc. etc., or even "important") to make use of any feature which is not present in each claim;
(ii) state, explicitly or implicitly, that the invention will provide specific advantages, or solve specific problems, or fulfill specific "objects", unless that is true of each claim;
(iii) discuss the prior art (discussion cannot change the prior art; all it can do is to commit to a present view of the prior art, which may not be the best view in, for example, litigation 5-20 years later);
(iv) discuss the reasons why the invention works -- except in those rare cases in which those reasons are needed to provide basis for the claims.
(B) The specification as filed should also observe these rules. If it does not, it should be amended in prosecution so that it does.

What about "yes-yes"s?
The list is endless. But top of my personal list is for the initial specification to have a Summary of the Invention in the most general terms, and in as many different forms as I can think of (bearing in mind who might be sued for infringement), and then to add a list of features one or more of which can be present. The claims are more specific, balancing the economic and business aims of the applicant and my view of the Examiner's likely reaction to the claims. This form of drafting leaves the door open for the future prosecution of a wide variety of claims.

I think that these comments are equally applicable to applications for PCT/ foreign filing, except that it is advisable to add a final claim which reflects the broadest possible view of the invention (to avoid any possible application of a "no-late-claiming" rule). In some jurisdictions, notably Europe, a brief discussion of the most relevant prior art (selected by the Examiner, not you), and/or of the problem solved by the invention, may need to be added during prosecution, but is not required at the time of filing.

[6]

One day the firing squad of the CAFC will take aim at and blow away all of your horrendously drafted apps. And I will be there, laughing.

[6]

"She had a bad experience in Europe where the use of "embodiment" caused an examiner to view each referenced embodiment as a separate invention. "

Species lol, I'll have to remember that when restriction time comes around.

[Anonymous]

Patent profanity comprises:
    the invention is, are, essential, preferred, all, every, critical, necessary, advantageous, significant, majority, peculiar, most, must, needed, desirable, usual, correct, requirement, specify, expected, never, must, should, surely, none, only, rarely, limited success with, typically, highly, absolutely, frequently, commonly, generally, uncommon, usually, few, partly, as much as, special, conveniently, difficult, time consuming, laborious, prior art, ....

[Actual Inventor]

To an "Actual Inventor" the notion of so called "No No Words" just seems silly. If there is a statue that specifically says certain words are illegal then of course those are words every inventor must leave out.

And if there is an MPEP section that specifically says certain words are not allowed then those words should not be used.

Other than that its just opinion and conjecture. Just because some argument was won or loss based on some word does not mean that now every inventor must , or must not use that word, Anyone can argue the semantics and lexical ambiguity of any word, in any court case, and the outcome can never be predicted.

And thats my opinion.

[Actual Inventor]

Mr Poppa Bear:

As an Actual Inventor, my Patent Application is also a sales brochure and/or proposal to potential licensees. Or if I intend to use my invention to run my own business, and keep it a trade secret its a training manual for priveleged employees, partners and associates. Therefore the specification must be detailed enough to actually teach people how to make and/or do something. So if I left out all those sections you suggest my patent application would be of little value to anyone in the real world.

Now if you could guarantee me that such a minimalist approach with zero "No No Words" would sail through the PTO and be impossible for anyone to even think of challenging in court, then I can see your rationale. But until then I will stick with writing applications that actually work to produce income so I can have something editable to chew on.

[Jonathan]

Maxi - The Almirall case was interesting especially when combined with the US Purduepharma case (thanks for the link). We should implement a transatlantic treaty banning "surprisingly". The courts do not like surprises.

Both cases are pretty interesting and stand for similar propositions. Obviously the courts do not like the use of "surprisingly" when nothing has been done.

Boehringer used "surprisingly" in the context of no results and statements of unexpected properties. The court did not seem to like that.

Almirall used the word "surprisingly" in a similar context, but had data and results behind the statement. The court did not seem to mind this as much.

I think this statement from the Magistrate in Almirall captures the heart of the problem in Purdue and Almirall:

In reference to Boehringer:
"I would add that though one often sees the word used in patents, 'surprisingly' has no relevance to anything I have to consider. On the other hand, whether 'an unexpectedly beneficial therapeutic effect can be observed' is at the very heart of the case and moreover, has been the cause of both parties' experiments."

Very interesting case though...

[MaxDrei]

Jonathan, thanks. Care to comment on the contributers upthread who "had trouble in Europe" and who think US drafting works just as well for PCT prosecution outside the USA? In drafting, what's good for the USA is bad for the rest of the world, and vice versa. The rest of the world fits better with the inventor's instinct, set out above, as to what makes a good patent specification, namely:

1. To be patentable, an "invention" has to be a solution to a technical problem (so in the claim you define the invention in terms of technical features, and in the specification you disclose the quid pro quo, which is the technical effect those features deliver)

2. And you have to do all that no later than your filing date (otherwise the system isn't really a "first to file" one)

3. And, because you don't know what prior art is going to bite you during prosecution (and later), you need "fall back positions" of narrower scope, all supported by a corresponding technical effect, flagged up in the app as filed.

4. In other words, you have to step up to the plate, and say what you think you have contributed to the art, already by filing day.

5. Which of course is anathema to litigators, who run the US show.

6. And so the list of "No No" words above is one compiled by the litigators.

7. But the judges can do something to address this sad state of affairs, where inventors are disgusted by patent applications, and the general public, and the politicians start to despise the patent system.

8. It starts with judges like the one in Amirall and Boehringer.

BTW, the commentators writing about PCT/Europe/embodiment and invention seem to have no EPO experience. The EPO Examiner is just pointing out that, if you want a patent on invention X, you need to have announced it in the app as filed. Otherwise, your prosecution amendment fails the "written description" requirement of European law, which we call Art 123(2) EPC.

[Poppa Bear]

In reply to Actual Inventor, we seem to agree that a patent application can be used for many purposes, some more reasonable than others. This thread seems to be directed toward the use of patent applications for obtaining patents, and the legal implications of the language employed by those applications. If fulfilling legal requirements and mitigating legal risks runs contrary to the desired use of a patent application as a marketing or training tool, or as a mechanism for documenting trade secrets, then perhaps the patent application is not the best vehicle for those non-patent purposes.

We also seem to agree that to fulfill the legal requirements of section 112, “the specification must be detailed enough to actually teach people [PHOSITA] how to make and/or do” the claimed subject matter. Yet the currently justifiable legal basis for the use of certain sections or section labels (e.g., “Background”, “Summary of the Invention”, etc.) that are not mandated by statute or regulation, but instead have emerged via custom and/or tradition, is apparently quite debatable.

Stated differently, under US law, a patent application must include some sections and some content. Notably, although it makes several functional requirements, US law makes very few requirements for specific labeling of those sections (e.g., “Abstract” or “Abstract of the Disclosure”), and very few (if any) requirements for specific language in the content. Thus, the choice of such wording is left to the discretion of the drafter.

Given the typically long lead-time between filing and examination, and the typically even longer wait for ultimate enforcement success or failure, gaining sufficient personal experiences to generate strongly supported rules of thumb can be rather challenging. Thus, as suggested by Dennis’ original question, our desire for best practices extends to anecdotes and the sometimes unusual fact patterns, dicta, and holdings posed by various cases.

In summary, many of the postings on this thread suggest that it can be prudent for the drafter to act with at least some care when selecting sections, labels, and content.

[Helful Hinter]

Actual Inventor:
You must be very new at this game.
Please, get a good patent attorney.

[Ken Dusyn]

The word " relevant" and whether it constitutes some form of admission, e.g., as to "documents being considered as prior art".

[Poppa Bear]

There seems to be consensus that via the claims it initially presents, an application provides an initial statement of “what you think you have contributed to the art, already by filing day”. Whether from the perspective of a US litigator, an EPO prosecutor, or the applicant, those claims might be problematic, however, if cast, for example:
1. too broadly, such that there is a high chance of need to avoid prior art by narrowing amendment or cancellation, potentially leading to substantial loss of exclusive scope, prosecution history estoppel, and/or wasted prosecution;
2. too narrowly, such that their subject matter is unlikely to be infringed, is easily and economically designed around, and/or otherwise lacks sufficient commercial value to justify the patenting exercise; or
3. too sloppily, such that a competitor can not reasonably determine (upon referring to the specification) the scope of the claimed subject matter, how to implement that claimed subject matter, or whether their particular implementation infringes or not.

The postings regarding the No-No list (a.k.a., best practices for patent application drafting) includes suggestions relating to claim language, specification language, and even labels for application sections.

Although some of these suggestions seem to be driven only by a desire to prevail via US enforcement of the patent, many seem to be based on a motivation for expedient and/or effective preparation, examination, and/or licensing, in the US, EU, and/or elsewhere.

It is not currently apparent that those desires and suggested best practices can not be substantially reconciled such that a given application can substantially meet them all.

Rephrased, what specific suggested best practices are both reasonably well-supported and apparently irreconcilable across practitioners and/or jurisdictions (e.g., prosecution vs. litigation, US vs. Japan, EU vs. China, etc.)?

[123]

Language is an art, and words are the artist's tools. There are certain tools, e.g., "essential", that are not ordinarily useful, but I would never say "never".

I knew an attorney who would refer to every feature beyond the absolutely essential as a separate embodiment, as in: "In one embodiment, the apparatus may further comprise..." There are two problems with this: (1) it begs for restriction, and (2) any disclosed "embodiment" which is not specifically claimed is dedicated to the public. I prefer to have one or two "embodiments", and then refer to different "implementations" of each embodiment, or simply say that the embodiment "may" include additional features. I've only had one examiner assert that a feature described that way is not necessary to the invention and therefore not limiting in the claims, and he withdrew his assertion after my response.

In general, an application should discuss nothing more than is statutorily required or risk creating PHE unnecessarily (take heed, Actual Inventor). So my summaries generally just restate my claims.

Its unfortunate, but you never know whether or when a judge is going to use language in the spec to limit the claims in ways you never intended or even imagined.

[Jeffrey McKinney]

Thanks to htp and Poppa Bear for the citations.

[Just an ordinary inventor(TM)]

Dear 123,

Re:
“Its unfortunate, but you never know whether or when a judge is going to use language in the spec to limit the claims in ways you never intended or even imagined.”

Worse yet, despite en banc Philips v AWH and other clearly established precedent, you never know whether or when a judge is going to use language in the FILE HISTORY to limit the claims in ways you never intended or even imagined.

Moreover, Judges can screw an independent inventor anytime s/he wants, and they are inclined to do so given the troll-trash talk propaganda spread for most of a decade by companies like Cisco, Intel, Microsoft, Oracle, and Symantec directly and through their Coalition for Patent Fairness, a cartel dedicated to dummying down the American patent system overtly and covertly by skewing the media, the public and our three branches of government against self-employed independent inventors.

[Just an ordinary inventor(TM)]

Dear Actual Inventor,

Please take heed of some of the comments above.

[Tim Richardson]

Fascinating, relevant stuff!
Let's dig a little deeper for the rationale behind the choice of language.
1. An issued US patent must describe the invention adequately (including the "best mode"); it must also provide basis for the claims. Preferably, it also provides basis for other claims that may be needed in interference, reissue or re-examination. The same is true for a US application, though with greater emphasis on possible future claims. Strictly speaking, anything else is unnecessary (since the specification is a legal document, not a scientific document, or an advertisement for the inventors' skill or for the diligence of the draftsman).
2. It is never advisable to assume, at the time of filing or even at the time of issue, that you know and fully understand the relevant prior art (still less the most relevant prior art).

Where do these simple truths take us in terms of "no-no"s?
(A) The specification of a granted US patent must NOT
(i) state, explicitly or implicitly, that it is necessary (or "key", "vital", etc. etc., or even "important") to make use of any feature which is not present in each claim;
(ii) state, explicitly or implicitly, that the invention will provide specific advantages, or solve specific problems, or fulfill specific "objects", unless that is true of each claim;
(iii) discuss the prior art (discussion cannot change the prior art; all it can do is to commit to a present view of the prior art, which may not be the best view in, for example, litigation 5-20 years later);
(iv) discuss the reasons why the invention works -- except in those rare cases in which those reasons are needed to provide basis for the claims.
(B) The specification as filed should also observe these rules. If it does not, it should be amended in prosecution so that it does.

What about "yes-yes"s?
The list is endless. But top of my personal list is for the initial specification to have a Summary of the Invention in the most general terms, and in as many different forms as I can think of (bearing in mind who might be sued for infringement), and then to add a list of features one or more of which can be present. The claims are more specific, balancing the economic and business aims of the applicant and my view of the Examiner's likely reaction to the claims. This form of drafting leaves the door open for the future prosecution of a wide variety of claims.

I think that these comments are equally applicable to applications for PCT/ foreign filing, except that it is advisable to add a final claim which reflects the broadest possible view of the invention (to avoid any possible application of a "no-late-claiming" rule). In some jurisdictions, notably Europe, a brief discussion of the most relevant prior art (selected by the Examiner, not you), and/or of the problem solved by the invention, may need to be added during prosecution, but is not required at the time of filing.

[MaxDrei]

Mr Richardson, I don't understand. You post yesterday, with your assertions about how to draft for Europe. Then I reply, suggesting that you are wrong and indicating why, and then you post again, just above, but your second posting is (at first sight) identical to yours from one day earlier. I'm not going to bother copying my reply, word for word, because I think readers want to see a discussion (rather than just people repeating what they wrote one day earlier). You?

[Just an ordinary inventor(TM)]

Max,

With all due respect, I know I should be the one to talk, but, please, get a life (;-).

[Roy Salvagio]

"More specifically" versus "in a particular embodiment" or "For example"

(When providing illustrative examples or to ensure literal support for dependent claim limitations)

[Nobody asked but...]

A computer readable medium [no]

A computer readable storage medium [yes?]

[Actual Inventor]

Mr. Poppa Bear wrote:

If fulfilling legal requirements and mitigating legal risks runs contrary to the desired use of a patent application as a marketing or training tool, or as a mechanism for documenting trade secrets, then perhaps the patent application is not the best vehicle for those non-patent purposes.

Dear Mr. Poppa Bear:

As an Actual Inventor I find all is needed to reduce if not eliminate the risk of viollating legal requirements is to simply read the statue, and refer to the MPEP for the rules.

And there is nothing at all contrary to following these easy to understand requirements by making sure the patent application is well documented and prepared for marketing, training, trade secret status, and most important licensing.

Indeed the above points are the primary motivation and "PURPOSE" for filing patent applications and without such reasons people that are patent attorneys, examiners and judges would not have jobs. Never forget that, please.

[Actual Inventor]

Helful Hinter wrote:
Actual Inventor:
You must be very new at this game.
Please, get a good patent attorney.

Dear Mr./Ms. Helful Hinter.

As an “Actual Inventor” that can read and comprehend English there is never a reason to hire a patent attorney to write and prosecute patent applications.

In fact it is a complete waste of money. Why would I, an expert, indeed the worlds foremost expert on my particular invention, tutor and teach a complete novice my invention, and then pay for the privilege? The tradition is the expert gets paid and the novice pays.

Furthermore, the only reason “Actual Inventors” that can read and comprehend english should ever consider hiring a patent attorney is if there is a trial. And in that case I suggest hiring a skillful litigator with the oratorical skills of President Obama and a proven track record of arguing and winning cases in the court the trial is taking place, e.g. Fed Cir, SCOTUS, etc.

But of course the “Actual Inventor” should get a 50% discount on legal fees since said “Actual Inventor”, would have to spend time teaching said litigator the invention.

[Actual Inventor]

Just an ordinary inventor(TM) wrote:

Dear Actual Inventor,

Please take heed of some of the comments above.

Dear Just an ordinary inventor(TM)

I would ask you to do the same. And remember Judges are not God(s). If a judge screws you then appeal it!

Imagine if Deihr would have given up because of what happened in Flook?

[Nads]

Actual Inventor,

The problem is that claim drafting is an art and, in litigation, claims are EVERYTHING. You, as an 'actual inventor' and not an actual patent attorney, don't know jack about claim drafting.

If you really want to cut corners, hire a real patent attorney draft your claims, then write the rest of the application yourself.

[curious]

don't mention problems or deficiencies in prior art which invention solves?

[John Prosecutor]

Dear Mr. Actual Inventor:

You get what you pay for. You may get a nice patent document with the seal and the ribbon which looks very nice framed and on your wall, but isn't worth much of anything when you try to license or enforce it.

[question]

fellow commenters -- when there are a number of "embodiments" in the application, how do you refer to the "embodiments"? As "embodiments"? As another "feature"? Alternative?

[Malcolm Mooney]

"One person I heard say that was a $3 million+ per year prosecution partner at a very well known firm. She had a bad experience in Europe where the use of "embodiment" caused an examiner to view each referenced embodiment as a separate invention."

What a shock that a "$3 million per year" partner could turn out to be an irrational wanker.

The idea that using the word "implementation" in a patent specification is somehow "safer" than using the word "embodiment" is beyond retarded.

Grow up, people. Don't embarass the profession.

[123]

Mooney: "Embodiment" is a term of art, just like "means". To a non-practitioner or novice like yourself, there's no substantive difference between "means for connecting A and B" and "fastener for connecting A and B", but an experienced practitioner knows that the former raises a lot more issues than the latter. I'm simply suggesting that if, under certain circumstances, you refer to variations as "implementations" of a single embodiment rather than separate "embodiments", then you have at least left yourself an argument against issues like restriction and dedication.

[You get what you pay for]

"In fact it is a complete waste of money. Why would I, an expert, indeed the worlds foremost expert on my particular invention, tutor and teach a complete novice my invention, and then pay for the privilege? The tradition is the expert gets paid and the novice pays."

You may be an expert in the invention, but being an expert in patent law is another thing altogether.

As this thread is ample evidence of, even the most innocent of words can trip up a seasoned practitioner. I've seen some very intelligent inventors who wrote and prosecuted their own applications get lousy claims that were very difficult to license. Also, the specifications were so narrowly written that even when an experienced attorney got a hold of the application, it was difficult to save.

[Malcolm Mooney]

"I'm simply suggesting that if, under certain circumstances, you refer to variations as "implementations" of a single embodiment rather than separate "embodiments", then you have at least left yourself an argument against issues like restriction and dedication."

And I'm telling you that you are wrong and that your advice is worthless. The term "embodiment" does not imply a distinct invention any more than "implementation" does. Period. You don't have a better argument using one of those terms versus the other.

"To a non-practitioner or novice like yourself"

LOL, Mrs. Implementation. Please crawl back under your rock and take your false misleading bullcrxp with you you.

[posing as Mooney]

"take your false misleading bullcrxp with you..."

And, believe me, I know all about false and misleading bullcrxp!

[Bart Simpson]

Craptacular!

"No no words"? What is this Patent Kindergarten?

[All Seeing Eye]

Since the topic is so vast, I have focused on one, OK maybe two, themes. Use of the word "Preferred" or "preferable" with regard to embodiments and use of the word "may."

Use of the words "preferred embodiment," "preferably," and related words intended to refer to the preferred embodiment should be avoided.

Also, Mr. Hodges says that use of "may" is a problem. I believe that such an idea is woefully out of touch.

Use of the word "may" is far preferable to use of the word "is" in many circumstances. Only the more underdeveloped reader (typically occupying an in-house position) has a problem with the word "may." Often times, its not the in-house attorney that has a problem, but the barely literate engineer who must sign the declaration who then says, "wait a minute, you said my gizmo MAY have a biasing spring. That's not really right, it HAS to have a biasing spring."

Sheesh.

[123]

Mooney: I suspected that your lack of class was the result of your ignorance. Now I know for certain.