“Detailed Description of the Invention”…unusual?

The audio below is one of the more alarming statements that I have heard in listening to the various oral arguments from the Court of Appeals for the Federal Circuit.  It highlights the disconnect in some instances between the Federal Circuit and attorneys that draft and prosecute patent applications.  In Technology Properties Ltd. v. ARM Ltd., Judge Dyk asked appellant’s counsel about the heading “Detailed Description of the Invention” that appeared in the patent at issue.  Judge Dyk commented that this was an unusual heading and that most patents he had reviewed used “Detailed Description of the Preferred Embodiments.”  And, he implied that because language different from “Detailed Description of the Preferred Embodiments” was used in the patent at issue that the patent should be construed more narrowly [Listen].

Those comments should come as a surprise to any patent attorney who has spent any amount of time drafting patent applications and working with the Code of Federal Regulations or the Manual of Patent Examining Procedure.  The Code of Federal Regulations at 37 CFR 1.77(b)  recommends using the heading “Detailed Description of the Invention.”  Furthermore, MPEP sections 608.01(a) and 608.01(p) use the phrase as well.  In fact, MPEP section 608.01(p) is itself dedicated to the “Detailed Description of the Invention.”  Practitioners have indeed moved away from using the phrase “Detailed Description of the Invention” and often use just “Detailed Description”  — but it is disconcerting to hear this audio. 

The Federal Circuit in recent years has made a bigger deal out of phrases like “the present invention” and “the invention.”  One hopes that in doing so the judges are aware of what the PTO is recommending to patent practitioners and examiners via its regulations and the MPEP.

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