Patent Law

By Dennis Crouch

The Patent Act requires that the written description of an invention be 'concise.'  35 U.S.C. 112p1. The meaning of that requirement is unclear, but but the language of Section 112 at least suggests that a written description needs to be concise in order to satisfy the enablement requirement.  Of course, there is a tension between providing a disclosure that is 'concise' and at the same time 'full.' In Markman v. Westview, the Supreme Court recognized this tension — noting that the description must be 'complete yet concise.'

In a 1967 district court case, the court focused briefly on the requirement — noting that the 'descriptions contained in the patent in suit are sufficiently concise and clear to enable one skilled in the art to construct that which is taught by the patent.'  San Marino Electronic Corp. v. George J. Meyer Mfg. Co., 155 U.S.P.Q. (BNA) 617 (C.D. Cal. 1967).

In my brief search, I found no cases invalidating a patent because its description was not concise. The most on-point case appears to be a pre-1952 Eigth Circuit case where the court came close to invalidating a family of patents based on their prolicity:

We think that the patents are unnecessarily prolix in verbiage and there should have been fewer claims more simply stated. They border on failure to comply with the statutory requirements concerning succinct description and particular pointing out and claiming. But consideration of the file wrappers and the trial court record has persuaded that those skilled in the art have understood them and the courts have had them explained.

National Aluminate Corp. v. Permutit Co., 145 F.2d 175 (8^th Cir 1944). It is interesting that part of the court's problem with the patents was that they had too many claims.  The USPTO does reject individual claims that it deems overly wordy or 'prolix.'  The idea behind those rejections is that sometimes overly-wordy claims may have the 'net result of which is to confuse rather than to clarify.'  However, the USPTO prolix rejections are grounded in Paragraph 2 of Section 112 — for failing the requirement of 'particulary pointing out and distinctly claiming the subject matter.'

The more accepted use of the 'concise' requirement is explained in the case captioned Application of Knowlton, 481 F.2d 1357 (C.C.P.A. 1973).  In that case the precurser to the Federal Circuit relied on the 'concise' requirement to limit the enablement requirement.

[I]t must be borne in mind that the disclosure need not only be full, clear and exact to satisfy the statute, it must also be concise, and that the disclosure is directed to those skilled in the art. The amount of precision necessary in any given case is always a matter of degree. Absent special circumstances it is not required that every nut, bolt and rivet actually used in mechanical inventions be described, or, in chemical cases, that the electron orbital patterns for a claimed compound be set forth.

In the right case, a defendant may well convince a court to give the concise requirement its full weight and invalidate a patent written in confusing and overly-wordy language.

Notes:

• The Rising Size and Complexity of the Patent Document
• I searched the BPAI database of decisions (1997–2009) and found only one case reviewing a rejection where the Examiner found the claim invalid as prolix 'since they contain long recitations or unimportant details which hide or obscure the invention.'  Ex parte Nagano, App. No. 1996–4094 (Bd. Pat. App. Inter. 1999). In Nagano, the Board reversed the rejection – finding no support for the Examiner's generalized assertions that the claims were confusing because of their length or contained unimportent details.