Patent Law and Boilerplate, Cautionary Language, Caveats, Qualifications, Provisos, Criterions, Repudiations, Stipulations, Macros, Disclaimers, Rote Text, Broadening Language, Formulaic Text, and Restatements of Aphorisms: Useless, Helpful or Harmful?

Patent Law and Boilerplate, Cautionary Language, Caveats, Qualifications, Provisos, Criterions, Repudiations, Stipulations, Macros, Disclaimers, Rote Text, Broadening Language, Formulaic Text, and Restatements of Aphorisms: Useless, Helpful or Harmful?

 by Dov Greenbaum

Excerpt:

The Supreme Court's periodic forays into patentable subject matter, most recently in Alice v CLS, 134 S. Ct. 2347; 189 L. Ed. 2d 296; 2014 U.S. LEXIS 4303 [an enhanced version of this opinion is available to lexis.com subscribers], may result in yet another set of guidelines for patent attorneys and examiners as to how best draft software and business method applications such that the claims fall within the purview of patentable subject matter. If history is any guide, patent attorneys will be steered to use claim language that allows for the continued patenting of software and/or business methods, provided that the proper limiting language, as supported by the specification, is used.

Patents do not typically rank relatively high in terms of gripping and engrossing reading. The language, syntax and structure typical of patents are not necessarily what one would want to use to promote the Progress of Science and useful Arts. This readability, which is supposed to be set out in "full, clear, concise, and exact terms" is often even further diminished by the additive boilerplate, repetitive and redundant language and disclaimers, among other fillers, that patent drafters add to protect themselves from past, current and future shifts in patent policy, among other uncertainties in the prosecution of the patent application and its subsequent possible litigations.

In short, patent drafters often load up patents with seemingly extraneous language for a number of possible of reasons. Not least is the conventional wisdom that they have nothing to lose: it can't hurt and can only help.

They may be mistaken.

The Patent Specification

In the quid pro quo of patents, the patentee is required, in exchange for a 20 year monopoly on their invention, to provide an enabling disclosure of their invention; i.e., the patent specification.

Under 35 USC § 112, "[t]he specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention." [an annotated version of this statute is available to lexis.com subscribers] [footnotes omitted]

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Dov Greenbaum is an intellectual property attorney at Reinhold Cohn Group in Tel Aviv. He has extensive experience in litigating and drafting patents in varied fields including hardware, software, biotech and medical devices. Dov is also an Assistant Professor in the Department of Molecular Biophysics and Biochemistry, Yale School of Medicine, at Yale University. Dov completed postdoctoral fellowships at Stanford University and Eidgenössische Technische Hochschule Zürich (ETH Zürich), where he focused on issues related to science and law. In addition to his many legal and scientific papers he has also written non-technical pieces relating to science in society. Dov has his law degree from the University of California, Berkeley, and a PhD in Genetics with a focus in Bioinformatics from Yale University.