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April 07, 2005
Vagueness in the Written Description
One of the biggest challenges in writing the written description is that it is almost impossible to guess how the invention might be used over the next twenty years, which is the life of the patent. Especially in developing technologies, what makes sense today may be turned on its ear by changes in technology or the market. However, reading that crystal ball is essential for good patent protection.
There are a number of cases where limitations from the specification are read into the claims by the courts. In the Phillips v. AWH Corporation case before the Federal Circuit, the lower courts read a limitation into a claim because the drafter described ‘the’ advantage of the invention had a special feature. The drafter seemed to me to be describing only ‘an’ advantage of a particular embodiment. However, the applied the feature to all the claims. If the drafter had used ‘an advantage’ rather than ‘the advantage’, it is likely that the case would not be in front of an en banc Federal Circuit and would have been settled a long time ago.
The best way to deal with this situation is to eliminate any mandatory language from the written description. Use terms like ‘may’ and ‘could’ rather than ‘must’ and ‘should.’ Give every alternative embodiment that can be imagined, and especially examples at the outlying extremes of the invention.
Many times, the inventors see their specific embodiment as the most logical and rational of the possibilities. What is an optimal embodiment today may be obsolete in three years. I see the invention as a combination of several elements, regardless of the embodiment. When writing the written description, I try to take each element to its logical extreme and cover every possibility for that element. After going through each element in as much detail as possible with as many examples as possible, the entire field of various embodiments should be covered.
Remember, the purpose of the written description is not only to support the claims, but to give as much breadth and scope to the claims as possible. Additionally, a broad written description effectively keeps other inventors from attempting to patent a close invention, one that may turn out to be even better than the inventor’s optimized embodiment of today.
Posted by krajec at April 7, 2005 08:35 AM
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Comments
Vague wordings are also handy if you haven't actually invented (yet) what you are patenting :) Have a look at the last paragraph of http://story.news.yahoo.com/news?tmpl=story&cid=581&e=4&u=/nm/20050406/tc_nm/tech_sony_brain_dc
Patent numbers are 6,729,337 and 6,536,440. I wonder how this can be justified under 35 U.S.C. 112
Posted by: Jonas Maebe at April 7, 2005 10:37 AM
Jonas:
You are not incorrect in your comment.
Regarding the Yahoo article about Sony, I would have counseled Sony not to patent the idea until they were ready to launch an actual product. What is the point of educating all their competitors on how a new technology (supposedly) works, all the while the time limit of the patent is running out. There is no business justification for filing such a patent, let alone the written description and best mode requirements.
Russ
Posted by: Russ Krajec at April 8, 2005 09:44 AM
I guess the point is that
a) they assume such technology will be developed anyway, but they have no real plans to do so themselves
b) when someone else does develop it, they will have to pay Sony as supposed "first inventor" (although I'm not sure how much they've shot themselves in the foot with this stupid PR blunder)
Simon Phipps of Sun called this sort of practice "patent farming" at our conference last year, although that was in relation to patents applying to standards.
Posted by: Jonas Maebe at April 11, 2005 06:43 AM
Most patent blunders are made with the marketing side of the brain and not the logical, business side.
I do not have any good explanation for Sony's actions, other than someone did not know how the patent system works.
Like you pointed out, they could have serious 35 USC 112 issues that puts the patent on shaky ground.
There are a couple factors that may have contributed to the Sony patent. In US industry, patents are a bonus system for employees. Submit an invention disclosure and get $250, get it filed with the patent office and get $1000, etc. This encourages every crazy half-brained idea to be submitted. (I know how this works: I submitted 15 such disclosures at one company over a 2 week period.) If you really want the patent to get through, all you need to do is put your manager's name on the patent.
Posted by: Russ Krajec at April 11, 2005 03:01 PM