Use of the word “invention” when drafting a patent application is a natural tendency but a disfavored practice because it may narrow patent protection. In the past when patents repeatedly state that an “invention” is “X,” courts have sometimes gone to great lengths to construe the claims such that “X” is required, thereby narrowing the scope of patent protection.
The importance of not using the term “invention” is exemplified in the case of Pacing Technologies, LLC. v. Garmin International, Inc.45 in which Pacing technologies (patent owner) sued Garmin for patent infringement on a device that recorded a user’s pace while running, walking, or cycling. The claims at issue did not expressly require the device to emit a sensible tempo (e.g., light, sound, etc.,). However, because the patent used the word “invention and associated the invention with a sensible tempo, the Federal Circuit went to great lengths to interpret the claim language as implicitly requiring a sensible tempo for patent infringement to be established. In particular, the patent owner listed several “objects of the invention,” stating the device was “adapted to producing a sensible tempo.” Therefore, the court read the specification as a clear disavowal of all versions of the invention that did not include a “sensible tempo” and concluded that the claimed invention must include the “sensible tempo” feature.
Garmin (the defendant) had included a type of pacing feature in its products. Garmin’s watch displayed a runner’s target pace and immediately next to that, the actual pace of the wearer was displayed as well. The wearer could visually compare the two pace numbers (i.e., target and actual paces) to quickly determine whether he or she is faster or slower than the target pace. However, Garmin did not incorporate an audible indication into its watch, and thus no “sensible tempo. Since the Federal Circuit ruled that Pacing Technologies’ patent required a “sensible tempo,” they found Garmin’s product did not infringe on Pacing Technologies’ patent and Garmin was not liable for patent infringement.
Broad characterizations of an invention as a whole in the patent application may not be beneficial. It is generally better to highlight one unique aspect of the device or method rather than to describe the invention as unique due to a given feature. For example, a unique type of engine (e.g., rotary engine) that happens to be in a car is distinct from a car that is unique because it has a rotary engine. In the case of the former, the rotary engine is the invention and any device including a rotary engine would infringe on its patent. In the case of the latter, the car is the invention and any device that is not a car, regardless of the incorporation of a rotary engine, would not infringe on the patent. Refocusing the invention’s definition from the car to the engine broadens the patent’s specification and its claims.
As has been shown, it is best not to use of the word “invention” in the patent specification. In most instances, the word “invention” can be replaced with the terms “device,” “method,” “system,” “apparatus,” or “one aspect of the device or method,” and retain the same essential meaning. In this way, the statements in the patent specification are more flexible since they would not describe objects of the invention, which could inadvertently narrow the definition of the invention.