Five Common Mistakes of Patent Prosecution from the Enforcement Perspective (Part 1)

Mistake #1: The Invention?

The first common mistake is describing the scope of the invention using over-precise language. This may occur in the specification or in a response to Office Action. For foreign originated applications, this is often caused by translation errors.

Examples
• “According to the invention”
• “The invention is/does”
• “According to the method/apparatus of the invention”
• “The method/apparatus of the invention is/does”

Consequence
• Narrower claim construction.

Case Study

In Praxair, Inc. v. ATMI, Inc., No. Civ. 03-1158-SLR, 2005 WL 2989767 (D. Del. Nov. 8, 2005), the parties dispute the meaning of “pressurized fluid” in the claims of U.S. Patent No. 6,007,609, and whether this term covers gas phase fluid only or other fluids as well.

According to the patent specification, “[t]he apparatus of this invention provides a flow restriction in the storage container . . . that will positively limit the discharge of gas phase fluid from the container . . .” ’609 patent at col. 3, ll. 54-58.

Citing the above disclosure, the court construed “pressurized fluid” to mean “gas phase pressurized fluid.” Praxair, 2005 WL 2989767, at * 3.

Solution

One may consider using broad language instead:
• “Consistent with the invention”
• “Consistent with the method/apparatus of the invention”
• “According to an embodiment of the invention”

(TO BE CONTINUED)