April 27, 2011

Incorporation by reference does not expand claim scope

By Gregory A. Stobbs, Principal

In those heady days of yesteryear, when the patent filing fee was $35 and prior art was printed on crumbling paper, patent attorneys relished the word “means.” They drank coffee from a “cup means,” wrote letters with a “pen means,” and played golf with “club means.” Somehow the word “means” seemed to convert mundane coffee cups, Bic pens and golf clubs into broad intellectual property concepts. Then in 1982 we got the court of appeals for the federal circuit, and the new court began popping our beloved “means” claims like so many soap bubbles.

Undaunted, the next generation of patent attorneys moved on to a more clever scheme known as incorporation by reference. Because claims are supposed to be construed in light of the specification, why not stuff the specification with copious incorporations by reference. With enough padding the claims could arguably cover just about every variation you could come up with. “When in doubt, incorporate by reference and let the litigators duke it out.” That was the mantra.

I am sorry to report that the present generation of patent attorneys may to need to start looking for something else, for incorporation by reference seems to have run its course.

In Fifth Generation Computer Corp. v. IBM, the federal circuit court of appeals has rejected the patentee’s argument that its claims should be construed beyond the four corners of the claim language to cover structures taught in the specification only through incorporation by reference. Incorporation by reference is still proper, as a way to teach the invention, the court indicated. However, when the claim language is clear, incorporation by reference cannot be used to broaden the claim scope:

“In light of such clear claim language, it is inappropriate to look to the incorporated references to arrive at a stretched reading of those claim limitations.”

State your invention in the claim and stop relying on incorporation-by-reference padding. Easier said than done, but that was the court’s message.

Of course, incorporation by reference still has its place: providing an enabling disclosure, for example. Therefore, in that spirit I hereby incorporate by reference everything wise that has ever been written on the subject of patent law.

You read it here first; er, …, I mean, second.