Terminology in Patent Application

Terminology in Patent Application : Patent drafting is a subtle art. The drafter has to be careful about his/her choice of words throughout the application, as each word may add a limitation to the invention. A patent practitioner must try to choose wording that provides the broadest allowable scope of the invention.

Terminology in Patent Application

One of the many difficulties faced by the drafter in the task of drafting the patent application is to find “perfect” words that adequately describe the structure of the invention. It is very important as the Patent Office may reject a patent application under 35 U.S.C. § 112, if the language used in the claim or the description is indefinite or overly broad. Imprecise words can also limit or distort the scope of the claims in subsequent litigation.

For example, the use of terms describing quantities in the claims, such as “at least” or “less than” may be rejected as indefinite unless the specification provides proper definition or meaning of such terms in the context of the invention. Similarly, overly broad terms describing a class of substances, such as words specifying broad categories of chemical compounds such as “acids” or “alcohols” may be regarded as overly broad; if in case the prior-art provides references which uses any one or more particular substances under the given category.

Patent laws of most of the jurisdictions allow the patentee (or the drafter of the patent application) to be his/her own lexicographer. Therefore, the drafter has the liberty to coin a term in order to properly define an element or a particular feature of the said element. Many a times, coined terminology or terms are the ones that have been commonly used in the trade in order to provide a more accurate or a more flexible description of the product or the process of the invention. However, it is important to consider that the coined terminology should be so selected or framed that it does not distort the description of the particular term. Also it is very important that the coined terms shall be properly defined in the specification in order to avoid indefiniteness types of rejections.

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