Sunday, March 28, 2010

Does submitting a product brochure risk prosecution history estoppel?

In an ideal world, you want to help the Examiner to understand the invention, so that you can quickly obtain a patent on the inventive features. But the reality is that the Examiner is not the only one you're prosecuting in front of. The doctrines of prosecution history disclaimer and prosecution history estoppel give an accused infringer ammunition to attempt to limit the scope of the claims. Thus, many patent prosecutors are very careful when making arguments that distinguish the claims from the prior art.

That's why I was surprised to see a response in which the Applicant submitted a product brochure to the Examiner and made the following statement:

    First, in order to aid in the Examiner's better understanding of the present invention, enclosed herewith are brochures of the "Voyager" electronic device which depicts the technical features and advantages of the present invention.

When I ran across this file history, here's what occurred to me: could an accused infringer attempt to construe the claims to include these features from the brochure? Product brochures are often full of details and product advantages — two things that I don't want to be read into the claims. I don't think that a court should, or even would, read such features into the claims. But why give the accused infringer something to argue about?

I note that the practitioner did limit the actual arguments to the claim language, rather than arguing outside the claims, so that might reduce the risk. But I'd think very carefully before submitting a product brochure to help distinguish over the art.


  1. Would you be less worried if the product brochure submission were accompanied by a statement that the product described therein "is one example embodiment of the invention" or "is a non-limiting embodiment of the invention"?

  2. My gut says that Yes, such a statement further reduces the risk of claim limitations being imported from the brochure.

    Don't know of any case law on point. There are plenty of Fed. Cir. cases where patentee referred to "the invention" in the *specification*, and that was a factor in narrowing the claims. Here, we're talking about referring to "the invention" versus "embodiments" while arguing. Personally, I consistently refer to "claim X" in my arguments, rather than using "invention" or "embodiments".

    But if you're going to refer to something other than claims in your argument, I think "embodiment" is better than "invention".