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.