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Patent Prosecution 101 – The “Invention” November 4, 2010

Posted by Brian Schar in Patent prosecution.

This post is the first in what I plan to be an occasional series, oriented toward the new practitioner.  I hope to set forth my view on several basic fundamentals of patent prosecution in a way that may be helpful.

The first fundamental of patent prosecution is the “invention.”  After all, patents are all about invention, right?  An inventor invents an invention, then contacts his or her patent attorney to obtain a patent on that invention. 

In its awkward and inimitable way, the MPEP states that “the applicant shall particularly point out and distinctly claim the subject matter which he or she regards as his or her invention. The portion of the application in which he or she does this forms the claim or claims. This is an important part of the application, as it is the definition of that for which protection is granted.”  (MPEP 608.01(k)).  As the CFR puts it, more concisely, “[t]he specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery.”  (37 CFR 1.75(a)).  Even more clearly, the Federal Circuit boils this down to the aphorism that “‘[t]he invention’ is defined by the claims.”  (E.g., Vas-Cath Inc. v. Mahurkar,  935 F.2d 1555, 1565 (Fed. Cir. 1991)). 

Because “the invention” is defined by the claims, there is no need to state elsewhere in the application that “the invention” is anything else.  Indeed, careless use of the term “invention” in the specification can be fatal in an infringement case arising out of that patent.  This only makes sense; if the invention is defined by the claims, but the specification also throws around the term “invention” with respect to other elements that may not be in the claims, or that may be more limited than the claims, confusion is generated about what the inventor really regards as the subject matter of the invention. 

One might be tempted to say, as a matter of logic, that if the invention is “defined by” the claims, then any other use of the term “invention” in the specification is irrelevant as to the scope of the invention because it is contrary to the definition set forth by the claims.  However, precedent does not agree.  See, for example, C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858 (Fed. Cir. 2004), and Scimed Life Systems Inc. v. Advanced Cardiovascular Systems, Inc., 242 F.3d 1337 (Fed. Cir. 2001).   

The practical upshot is that one should not use the word “invention” in a US specification.    Of course, there’s always a “but.”   If you intend to file in certain foreign jurisdictions (mainly Japan), you may be forced into reciting objects of the invention.  Consult an experienced practitioner if foreign filing is planned.


1. patent litigation - November 8, 2010

Great patent law primer. I’m hoping you’ll post a similarly thorough and informative article on the fundamentals of patent enforcement.

2. shiny - November 9, 2010

invention? who said you ever had an invention????

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