1. The Effect of Patent Profanity
2. Absolute Terms
3. Emphatic Terms
4. The Invention
5. Preambles
6. Disavowal or Disclaimer of Claim Scope
7. Reciting Known Risks of Dangers

Patent profanity refers to certain words or phrases that can alter the meaning of a term when used in the context of a patent, or other legal communication. When used in legal contexts such as patent claims, these seemingly normal terms can severely limit, or even harm, the protection offered to an agency by their patent.

Terms classified as patent profanity are unnecessary words that inadvertently limit the patent's protective ability by drawing the reader's focus toward specific elements of the invention. The elimination of these terms and/or phrases is important to an agency's patent application.

The Effect of Patent Profanity

Patent profanity is particularly significant in infringement cases, as the use of these seemingly innocent phrases may allow competitors to evade penalties for otherwise punishable offenses. Essentially, patents aim to maximize protection for the inventor over their ideas and creations. However, by ignoring patent profanity, these agencies are not taking advantage of the full spectrum of protection available to them through these laws.

There are numerous case studies highlighting the significance of patent profanity:

  • T-Mobile USA, Inc. avoided penalty by drawing attention to their competitor's use of the phrase “very important feature” in their patent. As T-Mobile did not list the same “very important feature” in their patent, it was decided that there was no violation.
  • Mylan Pharmaceuticals, Inc. won their case against Pharmacia & Upjohn Company due to the latter's use of the terms “key feature” and “critical feature” in their communication with the Patent and Trademark Office (USPTO). This highlights the importance of avoiding patent profanity in all aspects of the patent process.
  • In Biovail Corporation International v. Andrx Pharmaceuticals, Inc., the latter took advantage of the use of “necessarily” in their competitor's communication with the USPTO. This lead to a narrowing of the scope of Biovail's patent.
  • Microsoft Corporation won their case against Research Corporation Technologies, Inc., by focusing on their use of the phrases “the present invention” and the “objects of the invention” in their patent, thereby limiting the protection offered.

The best way to eliminate and/or reduce the occurrence of these instances is by monitoring the language used to describe the creations in question during patent development.

Absolute Terms

Absolute terms are words with big implications, leading the reader to believe that the invention relies upon their involvement, when this may not be the case. These words add unnecessary specification to general elements and should therefore be avoided at all times. Patents should focus on broad descriptions and general terms, avoiding absolute words such as:

  • Necessary
  • Key
  • Critical
  • Always
  • Important
  • Significant
  • Vital
  • Essential
  • Needs

Emphatic Terms

The scope of a patent can similarly be limited by the description of certain features as being “vital” or “necessary” to its functioning. These descriptions are referred to as empathetic terms, as they give needless characterization to individual aspects of the invention.

The Invention

Ironically, integrating the word “invention” into a patent is ill-advised in and of itself. By referring to “the invention” in a patent application, the applicant could unintentionally narrow the scope of the patent in the future, hindering its protection.

Preambles

Claim limitations should not be outlined in the introduction portion of an application, which is referred to as the preamble. Rather, this section should focus solely on the ways the product is intended to be used. By limiting the scope of the product, the applicant opens the door for similar products functioning outside the described scope to proceed without punishment. Limitations should be outlined in the following sections of the application; however, overly descriptive language should still be avoided, regardless of the section.

Disavowal or Disclaimer of Claim Scope

Patent applications may include supporting information such as images and amendments to previous versions. These inclusions similarly have the potential to limit the scope of an application, as they are just as legally binding as the language surrounding them.

Reciting Known Risks of Dangers

Acknowledging defects in the product should not be included in a patent application. By acknowledging they are aware of potential issues, an applicant can make themselves accountable in any future lawsuits. Rather than directly address any potential issues, language should be impartial and generalized.

If you need help ensuring your patent application is free from patent profanity, 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 with an average of 14 years of legal experience, including work with, or on behalf of, companies like Google, Menlo Ventures, and Airbnb.