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Patent Obscenities: You could end up in the doghouse!

by Alexandria J. Senn, Associate Attorney, Williamson Intellectual Property Law, LLC, Atlanta, GA                               July 10, 2008

A wife asks her husband “Do I look fat in these jeans?” In response, the husband chooses his words very, very wisely. We all know the wording of his response may determine if he is sleeping on the couch or enjoying the luxury of his bed.

Similarly, the wording in a patent application may change the fate of your patent application. Your application certainly is not sleeping on a couch, but it could be in danger if you do not choose your words in your application very, very carefully.

One could agree that calling your spouse “pleasantly plump” is blasphemous. But what words are offensive in the patent world? You may be surprised to know that the following words are considered obscene: necessary, critical, superior, peculiar, important, essential and sometimes, invention.

But why? Why do the words “necessary”, “critical”, “superior”, “peculiar”, “important”, or “essential” need to be avoided? The answer to this question is more clearly understood by thinking of your patent as a beautifully manicured lawn. Pretend for a moment, that you have spent many hours, time and money creating the most perfect front yard. Neighbors compliment how green and well kept it is and you consider it to be your pride and joy. Not surprisingly, one day you may decide to put a fence around the perimeter of your front yard, not only to protect it, but also to declare to the world that this yard is yours.

The words in your patent application are much like the fence you build around your front yard. They operate as a declaration of what you are claiming as yours. But, unlike the fence in your yard, words in your patent application are subject to “grafting,” which is the concept of imputing limitations from your patent application into your claims, thereby limiting the scope of your claims. As such, it is important to avoid the aforementioned words altogether in order to ensure your patent has the broadest protection possible.

For example, in Pharmacia & Upjohn v. Mylan Pharmaceuticals, Upjohn argued that Mylan infringed its patent for micronized glyburide formulations under the doctrine of equivalents. Pharmacia & Upjohn Co. v. Mylan Pharms., Inc., 170 F.3d 1373, 1374 (Fed. Cir. 1999). In particular, Upjohn argued that Mylan infringed its patent because Mylan composition utilized “anhydrous lactose,” which Upjohn argued was the equivalent of “spray-dried lactose.” Nonetheless, the Court held no infringement by Mylan because Upjohn, throughout its patent, emphasized the “criticality” of using spray-dried lactose. As such, the Court concluded that Upjohn was barred from relying on the doctrine of equivalents because of its statements in the prosecution history. Id.

As you can see from this example, there is reservation in utilizing the word “critically” in your patent because the word may limit the scope of your patent. It is far better to avoid the word “critical” (and “necessary”, “critical”, “superior”, “peculiar”, “important” and “essential” altogether because they invite a patent examiner or judge to limit what you are claiming. As such, this case is particularly important in exemplifying that the words utilized in your application should be as ambiguous as possible, thus allowing the maximum scope of your patent.

Your patent application is like a big beautiful yard. It deserves the most protection you can get. So you aren’t going to build a crummy fence around it. You are going to erect a sturdy white picket fence around it that says “Keep Out,” and the best way to accomplish this goal is to avoid the aforementioned words altogether.

For more information on the patent process, please visit Patent Information.

The content of this article is not intended to be, and does not constitute, legal advice and does not create attorney-client privilege. Consult the attorney of your choice before embarking on any legal matter or any document preparation/filing.

Williamson Intellectual Property Law, LLC
1870 The Exchange, Suite 100
Atlanta, GA 30339
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Williamson Intellectual Property Law, LLC
1870 The Exchange, Suite 100 - Atlanta, Georgia 30339