You may have noticed that few patents seem to actually use the word “invention.” This was not always the case. After all, the entire basis of a patent is the invention. Nevertheless, the use of a word, such as “invention,” or a term, such as “present invention,” has become somewhat pejorative in patents and patent applications. In fact, words like invention have been added to a seemingly growing list of what some might consider patent profanity.

So, what's behind this aversion to the use of “invention?”

Definite statements as to what the invention “is” or “is not” can trigger problems. In expressing an invention definitively, that expression may serve as the sole representation of the invention, precluding a broadening of the scope given to the invention in instances where alternatives are not expressed.

In Techtronic Industries v. Int'l Trade Commission, 944 F. 3d 901, 907 (Fed. Cir. 2019), the court agreed with the Appellants that coverage of certain aspects was disavowed. Quoting Philips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc), it stated that “where the inventor has clearly set forth a different definition of a claim term, or has manifested that the invention does or does not include a particular aspect, that intention ‘is regarded as dispositive.' Id. at 1316 (citing SciMed Life Sys., Inc. v. Adv. Cardiovascular Sys., Inc., 242 F.3d 1337, 1343-44 (Fed. Cir. 2001)).”

Further, the court in Techtronic Industries discussed that although a passive infrared detector was not recited in the claim under consideration, the requirement of a passive infrared detector was nonetheless read into the claims as the invention was repeatedly described as “being directed to garage door openers that locate the passive infrared detector in the wall console…” The court stated, quoting Poly-Am., L.P. v. API Indus., Inc., 839 F.3d 1131, 1136 (Fed. Cir. 2016) that, “Disavowal can be effectuated by language in the specification or the prosecution history.” Phillips, 415 F.3d at 1316-17.

Accordingly, in Techtronic Industries, the court concluded that “It is axiomatic that, where the specification ‘describes ‘the present invention' as having [a] feature,' that representation may disavow contrary embodiments.” See Poly-America, LP v. API Industries, Inc., 839 F. 3d 1131, 1136 (Fed. Cir. 2016).

The newfound profanity in “invention” certainly indicates that it is best to describe an invention in terms of its alternatives and in connection with using a number of examples. Stating definitively what an invention “is” or “is not” can lead to problems down the road. Consequently, it has been more common not to see the word “invention” used in patent applications at all. In many cases, “invention” has given way to the use of the words “aspect” or “embodiment,” without a prepositional phrase or object of the preposition.

How Gallium Law Can Help

We have significant experience drafting patent applications and using appropriate language to avoid instances of patent profanity. If you would like to discuss this issue further or seek advice about what language to use in your own patent application, please fill out this online form or call us at 651-256-9480 to schedule a consultation.

*The information in this article is not legal advice and should not be relied on. The content of this article is for informational purposes only and is meant as a starting point in your search for answers to your legal questions.