{"id":76,"date":"2009-07-02T15:45:37","date_gmt":"2009-07-02T22:45:37","guid":{"rendered":"http:\/\/www.717madisonplace.com\/?p=76"},"modified":"2009-07-28T17:18:13","modified_gmt":"2009-07-28T23:18:13","slug":"detailed-description-of-the-invention-unusual","status":"publish","type":"post","link":"https:\/\/www.717madisonplace.com\/?p=76","title":{"rendered":"“Detailed Description of the Invention”…unusual?"},"content":{"rendered":"

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.\u00a0 It highlights the disconnect in some instances between the Federal Circuit\u00a0and attorneys that draft and prosecute patent applications.\u00a0 In Technology Properties Ltd. v. ARM Ltd.<\/em><\/strong>, Judge Dyk asked appellant’s counsel\u00a0about the heading “Detailed Description of the Invention”\u00a0that appeared\u00a0in the patent at issue.\u00a0\u00a0Judge Dyk\u00a0commented that this was an unusual heading and that most patents he had\u00a0reviewed\u00a0used “Detailed Description of the Preferred Embodiments.”\u00a0 And, he implied that because language different\u00a0from “Detailed Description of the Preferred Embodiments” was used in the patent at issue that the patent should be construed more narrowly [Listen<\/a>].<\/strong><\/p>\n

Those comments\u00a0should 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\u00a0the Manual of Patent Examining Procedure.\u00a0\u00a0The Code of Federal Regulations at 37 CFR 1.77(b) \u00a0recommends using the heading “Detailed Description of the Invention.”\u00a0 Furthermore, MPEP sections 608.01(a) and 608.01(p) use the phrase as well.\u00a0 In fact, MPEP section 608.01(p) is itself\u00a0dedicated to the\u00a0“Detailed Description of the Invention.”\u00a0\u00a0Practitioners have indeed moved away from using the phrase “Detailed Description of the Invention”\u00a0and often use just “Detailed Description”\u00a0 — but it is disconcerting to hear this audio.\u00a0<\/p>\n

The Federal Circuit in recent years has made a bigger deal out of phrases like “the present invention” and “the invention.”\u00a0 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\u00a0MPEP.<\/p>\n","protected":false},"excerpt":{"rendered":"

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.\u00a0 It highlights the disconnect in some instances between the Federal Circuit\u00a0and attorneys that draft and prosecute patent applications.\u00a0 In Technology Properties Ltd. v. ARM Ltd., […]<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[4],"tags":[],"_links":{"self":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/76"}],"collection":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=76"}],"version-history":[{"count":19,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/76\/revisions"}],"predecessor-version":[{"id":94,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/76\/revisions\/94"}],"wp:attachment":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=76"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=76"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=76"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}