Below is an overview of “patent profanity”—what it is, why it matters, and how patent practitioners typically avoid it when drafting patent applications. Please note that this article is for general informational purposes only and does not constitute legal advice.
1. What Is Patent Profanity?
In the context of patent law, patent profanity refers to the use of certain words or phrases in a patent application that can inadvertently limit the scope of the claims, undermine enforceability, or provide ammunition to challengers during litigation. These “profane” words or statements are often absolute, overly narrow, or unnecessarily limiting, and can be interpreted by courts or examiners as disclaiming broader interpretations of the invention.
Typical Examples of Patent Profanity
Absolute Terms: Words like “always,” “must,” “only,” “necessary,” “essential,” “required,” “inevitable,” “critical,” “indispensable,” or “fundamental.”
Characterizations of the Invention: Statements like “the invention is limited to…” or “the invention can only be practiced by…” or “the core of the invention is…” or “the invention specifically excludes…”
Pejorative Descriptions of the Prior Art: Overly negative or dismissive comments about known technology that might inadvertently concede advantages or create estoppel issues, such as “completely ineffective,” “totally unsuitable,” or “fundamentally flawed.”
Admissions of Known Technology: Phrases that can be read as acknowledging certain features are “well known,” “conventional,” “obvious,” “trivial,” “routine,” “standard practice,” or “commonly implemented,” which may harm the novelty or non-obviousness arguments for your claims.
Object Statements: Phrases like “It is the object of the invention to solve…” or “The primary object of the invention is…” which can be interpreted as limiting the invention to only what fulfills that object.
Transitional Phrases: Using “comprises” vs. “consisting of” inappropriately can drastically affect claim scope.
Unnecessary Disparagement: Statements like “unlike the inferior prior art,” “solving the failures of existing solutions,” or “overcoming the fatal flaws of conventional approaches.”
2. Why Is It Called “Profanity”?
The term “profanity” is used tongue-in-cheek in patent law. Much like actual profane language, these statements or words can be unnecessarily harsh or detrimental—except the harm in this context is legal, rather than social. They are “profane” because they have the potential to damage the intended breadth and enforceability of a patent in ways that might not be immediately obvious to the drafter.
The term gained popularity among patent practitioners following influential cases at the Court of Appeals for the Federal Circuit, which highlighted how careless language choices could severely impact patent rights.
3. How Patent Profanity Can Harm a Patent
Unintentional Claim Narrowing
Use of an absolute term, like “must,” can be interpreted to mean that a claimed feature is mandatory. During litigation, an accused infringer might point to that language to argue that, unless they also perform that “essential” feature, they do not infringe.
The normal rule is that a term in the claim is given the interpretation a person having ordinary skill in the art would have given it at the time the patent application was filed. However, the specification (and prosecution history) can and do inform that interpretation. For example, in Phillips v. AWH Corp. (Fed. Cir. 2005), specification language significantly influenced claim interpretation.
Prosecution History Estoppel
Statements made in the specification or during prosecution can be used against the patentee in later disputes. If you characterize your invention in a way that excludes certain embodiments, or if you dismiss prior art in a way that narrows your claims, you might be barred from later arguing for a broader interpretation.
The Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. case dramatically illustrated how prosecution history can limit doctrine of equivalents arguments.
Invalidity Risks
Calling a feature “conventional” or “well known” could potentially be used by examiners or courts to argue that the invention is not novel or non-obvious, especially if that phrase is not carefully qualified.
The Mayo Collaborative Services v. Prometheus Laboratories, Inc. decision demonstrates how acknowledging “routine” or “conventional” elements can trigger subject matter eligibility concerns.
Litigation Vulnerabilities
Opposing counsel can highlight these “profane” statements to influence claim construction. For example, a judge might read a specification reference to “the invention requires X” as binding on all claims—even if the claim language does not explicitly say “requires X.”
The Honeywell International v. ITT Industries case showed how describing “the invention” rather than “an embodiment” limited claim scope.
Doctrine of Equivalents Limitations
Statements that unnecessarily narrow the invention can prevent later assertion of the doctrine of equivalents, a legal principle that allows a patent owner to claim infringement even when all literal elements aren’t present.
4. Best Practices to Avoid Patent Profanity
Use Conditional, Non-Absolute Language
Instead of “the invention must include,” say “in some embodiments, the invention can include.”
Replace “required” with “may,” “can,” “could,” or “in certain implementations.”
Avoid Universal Statements
Refrain from “always,” “only,” “solely,” “strictly,” “never,” “impossible,” and similar terms. These words box you in and can later be used to argue narrower scope than intended.
Define Embodiments and Examples
Rather than describing a feature as mandatory or essential, present it as part of “an embodiment” or “one possible implementation.” This approach preserves optionality and flexibility.
Use phrases like “in one aspect,” “according to certain embodiments,” or “in some examples” to avoid binding all embodiments to specific features.
Careful Treatment of Prior Art
While it can be helpful to describe disadvantages of prior art, avoid absolute or dismissive terms like “this is obviously inferior.” Instead, clearly explain how or why your invention differs without overstating the flaws of the prior art in a way that might backfire.
Consider using language like “certain implementations of prior approaches may exhibit…” rather than “prior art suffers from…”
Strategic Use of Definitions
Include a glossary section that defines terms broadly, and state explicitly that examples are non-limiting.
As recommended by the American Intellectual Property Law Association, consider including a disclaimer that examples are illustrative only and not intended to limit claim scope.
Work Closely With Counsel
Patent attorneys or agents are trained to spot potential “profane” language. Collaboration ensures the specification is robust and does not inadvertently disclaim claim scope.
Regular reviews by experienced USPTO-registered practitioners can catch problematic language before filing.
5. Important Caveat: Candor with USPTO
Avoiding patent profanity is important to avoid limiting your ability to claim an invention that you have developed. However, it should not be done solely for the purpose of broadening what you can claim beyond what you have invented or otherwise misleading the USPTO. Because the patent prosecution process is ex parte (meaning just you and the examiner), you owe a duty of candor to the USPTO.
6. Conclusion
“Patent profanity” underscores the importance of precision in patent drafting. Small word choices—such as “must” instead of “can”—can have an outsized impact on the scope and enforceability of a patent. Inventors and patent practitioners should remain vigilant about these linguistic pitfalls and draft specifications and claims with intentional, flexible language to preserve the broadest possible protection for their inventions.
As IP Watchdog and other intellectual property resources often emphasize, the quality of patent drafting can be as important as the underlying invention itself in determining the ultimate value of a patent portfolio.
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