Patent Profanity

By: Kristen Hansen

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.
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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.

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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