Meaning of Embodiment in Patent Applications

The embodiment is part of the language used in patent applications. Every patent application has a section with the caption DESCRIPTION OF THE PREFERRED EMBODIMENT. Often, the patentee describes some part of his or her invention as an embodiment. For example, a patent embodiment may describe how a headlight of was made or how the ejector seat of a fighter aircraft operates based on the patent application.

Preferred Embodiments and Using the Word “Substantially”

The use of noncommittal words like "substantially" and "preferred" provides flexibility in the language used to describe and claim an invention. Using “preferred” to describe an embodiment of an invention shows that the inventor chose this version over several alternatives. The case of Verderi, LLC vs. Google Inc. succinctly shows the benefits of using these terms in patent applications. The District Court ruled in favor of Google because it included spherical depictions of the objects in its application. However, the Federal Circuit overruled this decision at appeal, citing errors in the interpretation of Verdiri's claims regarding spherical depictions of objects. The court maintained that the inclusion of substantially in the application covered the spherical depictions in Google's "Street View."

Claim Strategies for Patent Applications — Filing Narrower Patent Claims

The general practice when drafting the claim set for a patent application is to include the claims which encompass the broadest range of the invention but still fall short of capturing the prior art. In some cases, you may want to restrict your claims to a smaller scope of technology. It's possible to narrow your patent claims by restricting it to:

  • A specific use case.
  • A specific commercial product or service.
  • A field of application.
  • A specific feature of the invention

Before choosing to narrow your claims, consider the following merits and demerits of narrower claims:

Advantages of Filing Narrower Patent Claims

The following are some of the advantages of filing narrower claims:

  • It is easier to obtain narrower claims and more difficult to challenge them. Using narrower claims can expedite obtaining enforceable patent rights as it reduces the prior arts that can invalidate or obstruct your claims. Also, it is often more difficult to challenge narrower claims as they are extremely clear about the specific embodiments of your invention.
  • Narrower claims protect against unknown prior art: Using narrower claims limits the search of the patent examiner to prior art relevant to your invention. They will narrow their search to the language used in your claims. If you can use narrower claims related to a certain technological field, you can protect your invention against prior art from unrelated industries.
  • It is possible to broaden your claims later: If you applied for a patent in the USA, all that is required to broaden your claim is filing a continuation application. The continuation application is an extension of the original patent application (also known as the parent application) and uses the same specification and priority filing date as the parent application. If you pursued only a specific claim in your patent application, you can broaden your claim in a continuation application by including alternative embodiments or prevent your competitors from cloning your invention.
  • It helps mitigate the risks related to broad claims.
  • Your patent application may not be approved if claims are too broad, especially in cases where the claims seem abstract.

Disadvantages of Filing Narrower Patent Claims

  • Narrower Claims have limited business utility: The primary function of patents is to serve as business tools. They can protect the economic value of your invention and provide you an advantage over competitors. However, a patent that restricts your claims to a specific embodiment of an invention makes it easier for competitors to modify your invention without violating your patent rights, thus reducing its usefulness to your business.
  • You may not be able to broaden claims in foreign applications: While it is possible to broaden your claims if your application was filed initially in the United States, this may not be possible in certain jurisdictions like the European Patent Office.
  • Narrower claims provide less flexibility when negotiating the scope of allowable claims: During the patent examination process, the patent office advises the applicant to narrow their claims before granting their patent. This is only possible if you were pursuing broader claims. However, you won't be able to negotiate any claim protection if your original application was already narrow.

If you need more information about patent embodiment, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.