Patent Law

Prohibited Words in a Patent – “Invention”

By Russ Krajec, Esq.

This post is part of a series talking about the Prohibited Words.  The other posts are here.

Another one of Prohibited Words is the word “invention”.  Nowhere in any patent specification should the word “invention” be used.  Nowhere.  The invention is described in the claims and the claims alone.  The specification supports and explains the invention, as well as describes the invention so that someone of ordinary skill in the art can practice the invention.

The problem with using the word “invention” is that, by definition, we do not know what the “invention” really is until the application is examined and allowed by a Patent Examiner.  The claims may morph and change during prosecution.  For example, we may think that the invention is a new mousetrap when we draft the application, but after examination, the Examiner may allow claims for an improved latch mechanism.

If the allowed patent application is well drafted, the improved latch mechanism may be used for an improved mousetrap, as well as a tripping device for circuit breakers or whatever else.

The fact of the matter is that we do not know what the invention is at the time of drafting.  Often, we think we know what we want it to be, but as business conditions change, new technology is developed, and we examine the prior art, our own perceptions of what we want the invention to be may change.

The problem with using the word “invention” is that by defining the “invention” in any form, we are potentially limiting the actual claimed invention inadvertently.  With the weird ways courts are interpreting the specification, an inadvertent mention of the invention may improperly limit the invention, especially when the scope of “the invention” changes dramatically during prosecution.

Full post as published by Anything Under the Sun Made by Man on May 01, 2007 (boomark / email).