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​​Patently Strategic Musings

Patent Profanity

7/2/2024

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By: Kristen Hansen
Picture
Like George Carlin's Seven Words You Can't Say on TV, there are certain words you shouldn't use in patent applications. The following is meant as a guideline for avoiding the use of certain “patent profanity” terms.  Some of the terms are okay to use with a specific intent and with specific implications, but are best to avoid if you do not know how to use them in that manner. 
 
“Patent profanity” refers to the use of certain words that arguably limit the scope of a claim or alter the meaning because they use absolute phrasing or terms. Often these words are found in the specification section of a patent as well as in the prosecution history.
 ​

Patent Profanity Do's and Don'ts

Describing an aspect of the invention with an absolute term suggests that the invention is not complete without the aspect. Well drafted patent applications should instead include generic language, variations, alternatives, and examples to identify the broadest possible scope of the invention. In practice, you should:​
  • Avoid patent profanity for some embodiments to create broad claim scope and catch those who attempt to design around a patent
  • Intentionally use patent profanity to define a narrow claim scope position that may be useful for patentability/validity

Example Patent Profanity Terms

​The tables below are not exhaustive, but serve as concrete examples of terms you should never use, terms you should try to avoid, and terms that can only be used with caution if used correctly. We've also made these tables available in a downloadable format on our resources page.

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The use of the following terms without critical thought as to why the terms are necessary can result in narrowly construed claims in claim construction proceedings, litigation proceedings, and other proceedings. These terms characterize the language in an absolute form that is simply not necessary to describe/enable an invention.

Never Use These Terms...

absolute
exactly
irreplaceably
pivotal
absolutely
exclusive
key
pivotally
all
exclusively
mandate
preferred​
always
exemplary
mandated
prior art
best
exhaustive
mandatorily
required
broadest
imperative
mandatory
requirement
certain
imperatively
most
requires
certainly
important
must
requisite
compelling
importantly
necessarily
shall
critical
indispensable
necessary
should
critically
indispensably
necessitate
special
crucial
inescapable
necessitated
superior
crucially
inescapably
necessitates
unavoidable
definitely
inevitable
necessity
unavoidably
definitive
inevitably
need
unique
definitively
inextricable
needed
uniquely
each*
inextricably
needs
unrivaled
entirely
inherent
never
very
entirety
inherently
only
very important
essential
instrumental
optimal
vital
essentially
instrumentally
paramount
 
essentials
integral
perfect
 
everything
invention
perfected
 
everywhere
irreplaceable
perfectly
 

Avoid Using These Terms...

authoritative
farthest
major
poorest
authoritatively
finest
man hours
purest
biggest
foremost
master
shortest
black hat
forever
maximize
simplest
black list
fundamental
maximum
slave
blackhat
furthest
minimize
slightest
blacklist
greatest
minimum
smallest
compel
highest
nearest
ultimate
compelled
intrinsic
newest
ultimately
compulsorily
intrinsically
nothing
urgent
compulsory
invaluable
nowhere
urgently
conclusive
invaluably
obvious
valuable
conclusively
invariably
obviously
white hat
constantly
largest
oldest
white list
decisive
latest
ought
widest
decisively
least
overarching
worst
determinative
littlest
peculiar
 
earliest
longest
perpetual
 
easiest
lowest
perpetually
 

Only Use These Terms Correctly...

embodiment
​embodiments
implementation
implementations
Always use “In some” in front of these terms or make certain the term is plural and covers all of the examples.

Avoid “In one” and “in another” nomenclature – because if it is indicated for only the one embodiment/implementation, it will not be considered as usable for multiple of your specification embodiments with a literal read of the specification into the claims.
each
Avoid (especially in claims if possible); ask yourself, does it really have to be “each X”?
every
Ask yourself, does it really have to be performed for “every X”?
configured to
Unless this term is in the claims section or is being recited in the specification as exact claim language, it does not belong in the specification UNLESS you use the term purposefully as “X is configured to Y” FOLLOWED BY exactly what structure(s) are performing a function. Multiple examples are best here. Avoid listing things associated with “configured to” language and use separate sentences for each example. If you forget to add the examples, the “configured to” language is useless because you have no actual description for what or how something is configured to do a function.  Further, during prosecution, you will not have 112 support if you have zero examples for how “X is configured to Y.”  i.e., you have no support for actual structure to perform the function.

Patent Profanity Case Law Lessons

​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 led 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.

Go Deeper on Patent Quality

Patent profanity is just one of the many topics pertaining to quality patents that Kristen discussed in her Patently Strategic Podcast episode on quality drafting practices. Check it out below or wherever you listen to podcasts.
​
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