Patent Application Boilerplate Language Not Sufficient to Show Enabling Disclosure by Michael Goltry, Registered Patent Attorney (480-991-3537; firstname.lastname@example.org)
Unlike early patent applications, most patent applications now include closing “boilerplate language” designed to broaden the scope of patent coverage. Here is an example:
Persons having ordinary skill in the art will recognize certain modifications, permutations, additions and sub-combinations therefore. It is therefore intended that the following appended claims hereinafter introduced are interpreted to include all such modifications, permutations, additions and sub-combinations are within their true spirit and scope.
Really? What does this mean? Well, it doesn’t mean anything. Here’s why.
35 U.S.C. 112(a) states:
- IN GENERAL – The 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.
Section 112 sets forth the enablement requirement that the specification describe how to make and how to use the invention defined by the claim(s) of the particular patent application or patent. The purpose of the enablement requirement is to ensure that the invention is communicated to the public in a meaningful way.
Boilerplate language, like the example above, is nebulous and inherently not full, clear, concise, and exact, in direct opposition to the requirements of section 112. Accordingly, boilerplate language is useless disclosure language. When the specification of a patent application fails to describe the claimed invention in full, clear, concise, and exact terms, boilerplate “catch-all” language will not save it. See Knowles Elecs. LLC v. Cirrus Logic, Inc., 883 F.3d 1358, 1367−68 (Fed. Cir. 2018) (finding lack of adequate written description where only general soldering was disclosed in a specification, but claims disclosed a specific means of soldering).
Furthermore, 35 U.S.C. 103 states:
- A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
One may argue that the boilerplate language above is designed to punctuate what could be obvious variations of the invention disclosed in a particular specification. However, section 103 cannot be redefined with boilerplate language. An obviousness determination is complex analysis that could never be based on inherently vague boilerplate language.
Although boilerplate language like the example above will likely be used as a matter of standard practice at the close of a patent specification, it isn’t necessary.