obvIPat - Obviously Patentable

The blog for inventors, in-house counsel, & entrepreneurs.

Not Your Father’s Patent Application, Part 3

by Orlando Lopez

Some might say that there is no object to today’s patent applications.  And they would be somewhat right.

While reading a patent application from 10-15 years ago, it was typical to find a number of objects of the invention.  Nowadays, if we listen to our litigator colleagues, we do not use the word invention.  Rather we use euphemisms like “these teachings.”  Also, you will rarely find objects of the invention in today’s patent application.  Again this is driven by the rulings of the CAFC (Court of Appeals for the Federal Circuit) in claim construction.  Given any indication that there’s only one invention, it is likely that the CAFC will restrict its claims to that invention (see for example, Edwards Lifesciences v. Cook, 582 F. 3d 1322 (Fed. Cir. 2009, stating that “when the preferred embodiment is described in the specification as the invention itself, the claims are not necessarily entitled to a scope broader than that embodiment”).  It is statements like this that make us shy away from using the word “invention.”  To which the inventor usually remarks, “but this is my invention!”  Not only do we shy away from using the word invention, but we also avoid the objects of the invention.

Again, we do this to avoid a claim interpretation (construction) that will narrow the claim (see Medrad, Inc. v. MRI devices Inc., 401 F.3d 1313 (Fed. Cir. 2005)).  Even though there is no invention and there is no object to this application, the detailed description still describes the inventor’s work (that is, the invention) and the invention solves the problem, or problems, that needed to be solved.


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