Inventors who are willing to draft their own patent application need to go into the process with their eyed wide open, realizing that the resulting patent application will be better if a patent attorney is involved in drafting, and most importantly understand that numerous things that you can and likely will do that will lead to a resulting patent patent grant that is compromised. For those who are not going to do it by themselves the more you know and understand about drafting patent application, including patent claims, the better armed you will be to provide your patent attorney with information they need to create the best, most comprehensive patent application possible. Methods or processes claims will include active steps to achieve a certain result. In the method claims the transition i is typically either “comprising” or “comprising the step of”. While legally there may be some distinction between these two different transition, both are acceptable.
First, the term “Specification” as being used many times relates to the written disclosure that makes up that patent application and is not the part of patent claims and abstracts. The specification will include a description of invention and the manner and process of using, selling and making the invention, in full clear and exact term such that those skilled in the technology field or science to which the invention pertains. The specification must also completely describe at least one specific embodiment of the invention. Second patent or patent application contains different or redundant information. Generally speaking a patent is divided into a specification, drawing and patent claims. Only the patent claims define the exclusive right granted to patent applicant. The rest of patent is there to facilitate understanding of the invention articulated in patent claims, which is referred to as referred to as cliamed invention. The whole purpose of specification is to facilitate understanding of claimed invention. Indeed in a patent application you can define the term you will use in the patent claim interpretation, whether that claim interpretation takes place during patent prosecution with the patent examiner or once the patent is issued. But what happens when you do not define a term in the specification? As a general rule the ordinary plain meaning of the term as would be understood by someone of skill in the relevant technology.
It is impermissibly true that you cannot read form specification into a patent claim. Obviously when you add the critical term “impermissibly” into the mix that has to mean that there are times when it is appropriate to read into patent claim for specification, which indeed is true. You may have heard that it is inappropriate to read into claim form the specification. That it is entirely accurate although you will hear that proper misconception often repeated even by some patent professional.
Cant you read into patent claim form the specification?
The point of the specification is to act as a dictionary or glossary for patent claims. You absolutely can define terms and concepts in the specification and those meaning will be imported into the claims. What you cannot do is to fail to incorporate an element or characterization into the claim and then point to it in the specification and say it is implicit in the claim.
The issue came up several years ago during the patent war between Motorola and Apple, Judge Richard Posner, of United States Court of Appeals for seventh circuit issued a ruling, while sitting by designation as a trial judge. Motorola had argued that Apple’s U.S. Patent No. 7,479,949 was invalid because it used the term “heuristic,” thereby rendering the claims invalid as being indefinite and in violation of 35 U.S.C. 112(b). In fact, the term “heuristic” was used well over 100 times in the ‘949 patent, but it wasn’t ever specifically defined. Motorola’s primary evidence of indefiniteness consisted of statements in various depositions taken during discovery.
The nine listed inventors were deposed and most of them conceded that the term “heuristic” is “sort of vague word”. They were also unable to suggest an inappropriate definition. Nevertheless, Judge Posner agreed that the definition of heuristic provided by Apple for the purpose of claim construction was appropriate and keeping with the patent disclosure.