Patent It Yourself Blog Offers Updates

David Pressman, patent attorney and author of Patent It Yourself , has created a blog that provides updates regarding patent law, and the book itself. The blog, which is not managed by or affiliated with Nolo, can be found at www.patentityourself.blogspot.com.

Below are two issues that may affect readers of Patent It Yourself:

What You Say in Application and Amendments Can Be Used Against You

Some recent appellate decisions have relied on wording in the specification or amendments to limit the scope of the claims. Two recent rulings held that an object of the invention that recited a specific arrangement limited the scope of the claims to that arrangement so as to prevent a finding of infringement. (Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1479 (Fed. Cir. 1998) and Vehicular Technologies Corp. v. Tital Wheel International, Inc., 212 F.3d 1377, 1380 (Fed. Cir. 2000).) Another decision held that even though some claims were limited to a pleated surface and some were not, since the Summary of the Invention in the specification and an attorney stated in an amendment that a surface was pleated, all claims would be limited to a pleated surface and therefore were not infringed. (C. R. Bard, Inc. and Davol, Inc. v. United States Surgical Corp., #04-1135 (2004 Oct 29).)

To avoid these problems I recommend the following changes:

• Omit the Objects and Advantages section entirely (many patent attorneys are now doing this) or don’t name it “Objects and Advantages.” Instead, call the section "Advantages."
• Include a disclaimer to introduce the Advantages section. One way to do this is as follows: “Accordingly the present invention may have one or more of the following advantages..."
• Write the Advantages section carefully so that you don't recite any specific details or arrangements that could be regarded as limiting -- for example, don’t state "It is an advantage to provide a console between the seats.” Instead state, “It is an advantage to provide a more accessible console.” Be sure that your invention and any possible variation will meet every advantage. Also use “weasel” words so that no advantage will be too broad or absolute -- for example, don’t state, “One advantage is to avoid the problem of..." Rather state “One advantage is to reduce the problem of..."
• Keep the Summary section and the Abstract general. Do not include any details of the invention in these sections that you would not want to be used to limit the invention.
• In the Remarks portion of any Amendment, never make an argument for the patentability of any claim that refers to any features that are not in that claim -- for example, if you’re arguing the patentability of a claim that simply recites a surface, don’t state that the cited prior-art patent to Smith doesn’t show a pleated surface. If you’re arguing the patentability of a narrower claim that recites a pleated surface, be sure to first argue the patentability of the broader claim without mentioning the pleated surface and then state that the narrower claim is additionally or independently patentable because it recites pleats, which Smith doesn’t show.

Correction to Form 10-3 in Patent It Yourself

Note that in the filled-out Form 10-3 (Fig 10K on page 10/23 of Patent It Yourself ), some of the amounts in Item 2 (“EXCESS CLAIMS FEES”) are erroneous. Under “Total Claims,” the “Fee ($)” reads “$9” but should read "$25." The “Fee Paid ($)” reads “$36” but should read "$100."

Under “Indep. Claims,” the “Fee ($)”reads “$42” but should read "$100." The “Fee Paid ($)” reads “$42” but should read "$100."

• Patent Pending Now!