November 2009
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Patent Language: “The Present Invention” versus “An Embodiment of the Present Invention”

If you spend any time reading patent applications, two things will probably become apparent to you:  1) you probably need to find a hobby or five to take up more of your time; and 2) sometimes it may seem like patent applications are written in some kind of strange, overly complicated, almost alien language.  Usually, there’s a perfectly good explanation for why one would use a more complicated phrase, in a patent application, to say what could be said in a word or two anywhere else.  It generally has something to do with legal precedent that would impact the protection granted by the patent.  In our first of what will be another series of subject-specific posts about why we use the words we use in drafting a patent application, Tactical IP takes a look at one of the oft-inserted patent language twists – “an embodiment of the present invention,” used in place of “the present invention.”

When writing a patent application, there is a delicate balance that must be maintained, between describing an invention well enough to meet the statutory requirements and keeping your language general enough that the inventor’s competition can’t make a quick, easy design-around implementation that doesn’t infringe the patent.  Patent protection is only worth as much as what you can prevent others from doing without paying you licensing fees or a royalty.

Luckily (or unluckily, depending on which way you look at it) decades of infringement litigation and appeals of patent office decisions give a roadmap for patent practitioners to follow when drafting a patent application.  Unfortunately, the roadmap changes so often that the language you’re using today to draft a patent application may be no good by the time that application is used as the basis for an infringement suit – or even by the time it’s being examined by the PTO.

One patent drafting faux pas, which has developed in the last eight years or so, is stating that something is “the invention,” or stating that “the invention” includes something else.  As the Court of Appeals for the Federal Circuit has demonstrated, such language can be used to narrow the protection that your patent would otherwise provide.

For example, In SciMed v. Advanced Cardiovascular Systems, 242 F.3d 1337 (Fed. Cir. 2001), the appellate court affirmed the trial court’s interpretation of claims reciting “separate” inflation and guide wire lumens as being limited to “coaxial lumen structures having annular inflation lumens.”  The original claim language should have been broad enough to describe the defendant’s allegedly infringing device, but because the “Abstract” and “Summary of the Invention” sections of the plaintiff’s patent application stated that that the present invention included certain features, the plaintiff lost.  If, instead, plaintiff’s patent attorney had only inserted three game-changing words in front of “the invention,” things may have turned out a little differently.  Which three words, you ask?  Answer: “an embodiment of”

You see, stating that “an embodiment of the present invention” includes a particular structure or feature, is much broader than stating that “the present invention” includes that structure or feature.  The connotation of the latter is that the so-described feature or structure is essential to the present invention, rather than being only an optional part of a single version of the invention.

In the years since SciMed, other infringement cases have turned on omitting “an embodiment of” in front of “the invention.”  See, e.g., Biogen v. Berlex, 318 F.3d 1132 (Fed. Cir. 2003) (holding that, where only one embodiment was disclosed, statements in the application, which described the invention as using a particular marker gene, limited infringement to protein production processes that also used the gene, even though the gene was not recited in the claims); or Honeywell v. I.T.T., 452 F.3d 1312 (Fed. Cir. 2006) (“On at least four occasions, the written description refers to the fuel filter as ‘this invention’ or ‘the present invention’ . . . .  Moreover, the written description does not indicate that a fuel filter is merely [an] . . . embodiment of the claimed invention.  . . .  Given the written description’s disclosure, we conclude that the patentee has limited the scope of the ‘879 patent claims to a fuel filter.”).

Infringement litigation is not the only place where using “the invention,” rather than “an embodiment of the invention,” can get you into trouble.  It can also provide grounds for an examiner to reject claims in an application as being unsupported by the specification.  See In re Curtis, 354 F.3d 1347 (Fed. Cir. 2004) (holding that a single-embodiment description of “the present invention,” which included microcrystalline wax, could not be used to support claims that recited a coating “capable of increasing the coefficient of friction,” i.e., only a claim to using microcrystalline wax as a coating was supported by the written description).

So, as you can see, using six words instead of three, which may seem wasteful or silly in other situations, can be critically important in drafting a patent application.  Many lawyers cringe at this kind of usage, since the conventional wisdom tells us to employ the smallest number of words possible – be as succinct as you can.  When drafting, for example, a contract, excess verbiage can often provide a party with means of escape, without incurring liability for breach.  Once again, patent law practice proves to be different than “normal” law practice.  Conventional wisdoms don’t always translate over.

Special thanks goes out to my research assistant, Jennifer Miller, who helped to write this post.  Jennifer is an associate in the Intellectual Property Department of Ballard Spahr, L.L.P., and a member of the electrical and communications technology team and the software and business methods team in the Patents Group.

The article was originally posted on The Tactical IP Blog.

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