Defining Common Terms in Patent Specification for a Foolproof Application

 Using terminology with vague or common meanings in a patent specification might lead to problems like misunderstandings or broad/multiple interpretations during application review. This can quickly result in a delay in the approval of the patent application or even its rejection. Therefore, to reduce the likelihood of such hazards, the applicant should include well-defined terminology in the background, description, claims, drawings, and other parts of the patent specification.

This article explains how using common terms in a patent application can lead to the examiner developing broad interpretations, which can be problematic for the applicant. It also explains how one can avoid such ambiguities with straightforward measures to increase the likelihood of approval, such as defining common terms in the description and reciting embodiments in claims.

Understanding of Patent Specifications

The written disclosure that is not a part of the claims or the abstract is referred to in a patent application as the "specification." Also known as the written description, it typically provides a thorough, understandable, and detailed explanation of how to make and use the invention. A minimum of one embodiment of the invention must be described in the patent specification in order for it to function as intended. However, a patent specification has considerably more value than just outlining the invention and its various embodiments. It serves as a lexicon or glossary for patent claims and makes it easier to understand the inventions that are claimed.

The phrases used in the claims may be defined by the applicant to give the term any particular meaning. Technically speaking, the phrases, ideas, and definitions that can be used to the claims should be included in the patent specification. The specifications must provide placeholders with precise descriptions of the words and their intended uses because the claims frequently include definitions. In order to save the patent application, anything cannot be included within claims even when it is already mentioned in the patent specification.

Term Definitions in Specifications

Even though a description in a patent application is straightforward, the examiner may still be able to interpret any words. An examiner shall apply the broadest reasonable meaning of "person of ordinary skill in the art" in accordance with Patent Office regulations. What is the largest acceptable interpretation, how broad is it, and at what point does it become too broad? will be the following question.

The applicant's use of the term in the specification is the primary reference point for the examiner when interpreting claims. When a term is left undefined by a patent applicant, the examiner typically applies the term's "plain meaning" to arrive at the broadest conceivable interpretation.

Due to the term's or element's potential for numerous interpretations, it could cause issues for the applicant throughout prosecution or even after the patent has been granted. Simple words are frequently used without definition, leaving the examiner with a wide range of options. Let's explore this with the help of a recent case study.

A Case Study

In Re: Smith Int'l, Inc. Appeal 2016-2303 (Fed. Cir., Sept. 16, 2017), a case from the Court of Appeals for the Federal Circuit, the term "body" used in an application for....

To read the entire case study, visit our article about Patent Specification.