Article Suggestion: “The Present Invention” vs. Divisional Practice

If somebody is looking for an article to write, I think it might be worthwhile to address the impact of 35 USC §121 on claim construction. What particularly should be addressed is: when a specification uses a phrase such as “the present invention,” should 35 USC §121 temper the impact of that language.

Historically, some patent applicants have probably innocently used the phrase “present invention” as a shorthand phrase in their specification. Moreover, the MPEP has historically counseled applicants to format their applications with phrases such as “Background of the Invention” and “Summary of the Invention.” At some point in recent history, the Federal Circuit seized on the “present invention” language in issued patents as a potentially limiting phrase. The Federal Circuit logic seems to be that an application when written can only be for one invention. So, any reference to the “present invention” impacts the claim construction. However, that logic ignores Congress’s express intent to allow there to be more than one invention disclosed in an application. Namely, 35 U.S.C. §121, the divisional statute, states:

§121. Divisional applications
If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application. The validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention.
(July 19, 1952, ch. 950, 66 Stat. 800
Pub. L. 93–596,
 §1, Jan. 2, 1975, 88 Stat. 1949
Pub. L. 106–113,
 div. B, §1000(a)(9) [title IV, §4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536
1501A-582Pub. L. 107–273,
 div. C, title III, §13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906
Pub. L. 112–29,
 §§4(a)(2), 20(j), Sept. 16, 2011, 125 Stat. 295

Notably, 35 USC 121 recognizes that the Director’s power to restrict is discretionary and that a patent may issue in which the Director did not require the patent to be restricted to one invention. So, I think an interesting article could be written discussing whether the Federal Circuit’s jurisprudence on this topic fails to take into account 35 U.S.C. §121 and divisional practice. It might also be interesting to search a database of US issued patents to see how many divisional patents contain the phrase “the present invention.”

If you’d like to listen to an oral argument where “the present invention is” language came up quite often, the oral argument in CAMPBELL SOUP COMPANY v. GAMON PLUS, INC., No. 2020-2322 (Fed. Cir. Aug. 19, 2021) would be a good one to listen to:

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