BLOGS: The High-Tech Patent Agent: A View from the Trenches in Silicon Valley

Tuesday, January 14, 2014, 9:12 AM

To Define or Not to Define

Strong opinions abound as to whether definitions should be included in a patent application.  The client, or the firm, may have a policy about definitions.  This is likely worth following, but might be worth revisiting in certain circumstances.  Here are some pros and cons, for your consideration. 
Many clients prefer to omit explicit definitions in patent applications for terms, in order to allow “wiggle room” during possible litigation.  The applicable principle here is that putting a specific definition for a term in the patent application might be too limiting when it comes to claim interpretations in a court.

Some clients prefer to include explicit definitions for terms, in a glossary at the beginning or end of the specification in a patent application, or on an as needed basis as the term is introduced along the way.  The applicable principle here is that putting in specific definitions for terms provides solid ground when it comes to claim interpretations.

One way to define terms, without putting in explicit definitions, is to give examples.  Examples often help fill out the claims scope, so that embodiments are not limited to one specific example.  Another way to define terms is by context.  Use of a term in the context of a description, with examples and embodiments, can show what is meant by the term without committing to a specific definition.  A caution here is that a single sentence using a term, particularly if the term is in the claims, might not be sufficient context to determine the full meaning of the term.

A patent applicant can be his or her own lexicographer.  However, unusual uses of words and combinations of words deserve meaningful explanation in the patent application.  Without such, examiners and courts are free to interpret words in a manner that is contrary to the applicant’s intent.  It behooves the patent practitioner to make sure that the meanings of words, especially in the claims, are clear.  Context, examples, embodiments, and definitions can play important roles.

Where there is concern that a definition, an example, or an embodiment might be too limiting for a term, especially if the term is applied in the claims, boilerplate language can be added to the specification, to the effect that other embodiments etc. may be applicable.  Intuitively, this is important near the point(s) of novelty.  But we have also seen this is important elsewhere in claim language, even in seemingly ordinary claim limitations involving terms commonly known in the various arts.

For instance, sometimes an examiner takes a claim term with a common meaning, or a claim term with a well-known meaning in an art, e.g., a term of art, and interprets the term so that it applies to some reference in a manner wholly different from the intentions of the patent applicant.  This is where the use of the term in the specification is vital.  For, an examiner may believe and assert that he or she is interpreting the term in the broadest reasonable manner, but the applicable requirement is that claim terms are interpreted in the broadest reasonable manner consistent with the specification.  We can rein in an improperly overbroad interpretation of a claim term, made by an examiner during patent prosecution and applied to a reference of which we wish to dispose, by arguing that such interpretation is inconsistent with the specification.  But, we can only do so if the specification has useful support for the meaning of the term.  So, choose carefully whether or not to use explicit definitions, and keep in mind other ways in which the meaning of terms can be found.

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Monday, January 6, 2014, 8:49 AM

Patent Families

Often, a single disclosure from a client leads to a single patent application.  Sometimes, the claims in the patent application face a restriction requirement, and the unelected claims can get later filed in a divisional patent application.  Or, the client may ask for a continuation, with claims fully supported in the parent application as filed.  But, what should we do if the client wants to have a patent family from the outset, descending from a single disclosure?

A particularly rich disclosure may have multiple inventive aspects, each of which can be developed in a claim set.  So, we can write a very detailed description, with lots of embodiments, and lots of drawings.  A disclosure that lends itself to a method might have a patent application with several flow diagrams, and accompanying description.  One claim set could be dedicated to one of the flow diagrams, with one or two method claims and perhaps system or tangible media claims.  Later patent applications could have claims sets dedicated to others of the flow diagrams, also with method claims and system more tangible media claims.

A key advantage to filing a detailed patent application is that, during the pendency of the parent patent application, every continuation, divisional, or continuation-in-part application filed that claims benefit of the parent application has the same effective filing date as the parent patent application.  Of course, material that is later added make a continuation-in-part application, and claims in the continuation-in-part application pertaining to that material, benefit only from the filing date of the continuation-in-part application.  A client may ask for multiple claim sets initially, and, knowing this, the practitioner can make sure to have sufficient detail in the parent application to support these in the present applications and further claim sets in later applications.  Such a strategy can lead to a patent family, and tends to be more efficient with respect to costs save document as compared to a one-at-a-time approach.  Multiple patents with the same specification but differing claims can be filed in parallel (on the same filing date) or sequentially, with a parent application having descendents.  It is well worth discussing patent strategy up front with the client, so that the client understands a range of possibilities and can make informed decisions.  This makes the patent practitioner’s job more straightforward as well.  All part of the art of patenting.

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