就由大家所熟知的Phillips v. AWH Corp一案來看，美國法院指出，專利權的適當範圍應該基於整個說明書的解釋來確認。這與USPTO的最大合理解釋範圍(最廣義合理解釋-請見前期的文章)是有所不同的，不過這與歐洲大多數國家對專利權範圍的解釋非常類似，因此，任何錯誤或誤譯的英文專利說明書也都會直接影響了美國和歐洲的專利權範圍和界限。
有時候專利從業人員會基於法院的判決而提出專利禁語的概念，例如有些人會主張不應該使用「或者(or)」，而應該要使用「及/或(and/or)」，因為在Kustom Signals, Inc. v. Applied Concepts, Inc.ㄧ案中指出，「或者(or)」並不等於「及/或(and/or)」，請求項只有能涵蓋這兩種態樣中之一者，而不是同時包括兩者。然而僅僅依據這個判例，就把「或者(or)」以及「及/或(and/or)」視為專利禁語，似乎是過於草率。舉例來說，在技術性/物理性/自然性/暫時性的選擇限制條件係為必要的情況下，採用「及/或(and/or)」來描述替代性選擇方案可能反而會幫倒忙，這可能會導致該發明並未被正確地揭露而因此為不明確或是無法據以實現之核駁基礎的問題。我個人一貫的主張，用字要精準才能避免產生非必要之撰寫規則。所以在上述的情況下，撰寫人在撰寫專利時就應該要仔細思考為什麼使用「或者(or)」而不是「及/或(and/or)」，因為對任何人來說，即使是在提出申請當時，「或者(or)」是顯然無法以「及/或(and/or)」來取代的，反之亦然。該判例之所以在使用「或者(or)」的字義時，衍生針對於「及/或(and/or)」的涵義之爭論，是源自於用字缺乏精確性，而不在於「或者(or)」這個字本身的涵意。
Patent Profanity – an absolute truth? Stefano John NAIP Education & Training Group / European Patent Attorney
It has been said that there are certain words that should never appear in a patent specification. These words should be considered “profane” and placed in a “blacklist” so that their presence can be checked in applications that are about to be filed. Some companies, even US companies which have demonstrated to know the patent business inside out, adopt strict practices to avoid such words.
I would argue that this is not necessary, or at least such a practice should not to be enforced all the time.
In light of a well-known case, Phillips v. AWH Corp., US courts have stated that the proper scope of patent claims should be interpreted in light of the entire patent specification. This is at odds with the even larger interpretation on claim scope given by the USPTO (broadest reasonable interpretation – see previous article), but is very similar to what most European countries practice in claim scope interpretation. Thus, any mistake/mistranslation in the English patent specification can directly affect the scope and boundaries of the patent rights in the US and Europe.
Some patent practitioners avoid using certain words in any part of the patent specification so as to not restrict the claim scope. Generally, the words to be not used are absolutes, such as "necessary," "essential," "key," "every," "must," "never," "only," "absolutely”. It makes sense, because if one then wished to argue that the claim should be interpreted to include “the use of X” as one of many known possible alternatives known to a person skilled in the art, then one cannot if the patent specification contains the phrase “never use X”. That is why many patent practitioners use words such as “may”, “can” and “preferred” instead - because the words are not absolute, but only optional.
I would argue that this approach is simplistic and not helpful. I would argue that every word has to be interpreted in context, and therefore even absolute words may have their value in context. For example, in the above list of exemplary absolute terms, one can find “every”. If the patent specification contained the following statement “In a preferred embodiment of the invention, every different section of the invention comprises X”, one would be motivated to say that the phrase should be avoided or removed because the embodiment it comprises is limited by the absolute “every”. Please note however that it remains a preferred embodiment only because it is clearly curtailed by the section “in a preferred embodiment”. It thus becomes a fall-back position without restricting the scope of the claim. Thus, if there was some unknown advantage in every section of invention comprising X, and one wanted basis for amending to this as a fall-back position in front of prior art, then the lack of such a phrase in the specification would not allow you to claim it. Hence, being careful about not using a patent profane word “every” has limited the possibilities to amend the claims without achieving anything positive.
Obviously one cannot argue the complete opposite of something that is plainly stated as such in the specification. For example, one cannot argue that one should interpret that the invention does not require X when it is stated that the invention requires X. But this problem does not arise from avoiding absolutes, but from not being consistent. It is thus important to be consistent in patent drafting. It is thus good practice to use the same words and maintain a consistent structure to the entire application (specification and claims).
Sometimes patent practitioners introduce the concept of patent profanities in light of decisions made – for example some claim that one should never use “or” and always use “and/or” because in Kustom Signals, Inc. v. Applied Concepts, Inc., it was decided that "or" is not "and/or" and the claim only covered a choice between either one of two alternatives, not both. Attributing the use of “or” and “and/or” as profane in patent specification in light of this decision seems also reductive. For example, in cases where the alternatives are necessary by technological/physical/natural/temporal limitations, the use of “and/or” to describe the alternatives may be problematic instead of helpful – it could create a basis for arguing that the invention has not been disclosed correctly and thus is not clear or not enabled. I would argue that, together with being consistent, the way to avoid creating unnecessary rules in drafting is to use words precisely. Thus in the above circumstance, the drafter of the patent should have considered at the time of drafting why use “or” instead of “and/or” because it is clear to anybody, even at the time of filing, that “or” can never replace “and/or” and vice versa. Arguing after that “and/or” was meant when “or” was used is due to the lack of precision in choosing ones words and not in the meaning of “or”.
To follow on from the above, I would argue that the list of patent profane terms is not a negative concept in itself. It should just be used with caution. I would argue it is a much better tool to be used to check that one has drafted the specification in a coherent and precise manner. Hence, every time an absolute term, which some would consider “patent profane”, appears in a newly drafted specification, I would argue that it might be better practice to consider why it has been used and if it needs to be there (and thus if the limitation is necessary) - not just to avoid using the term automatically.
Author:
Stefano John, European Patent Attorney
Experiences：
European Patent Attorney, Bryers
Trainee European Patent Attorney, Bugnion SpA
Trainee European Patent Attorney, Notabartolo & Gervasi
Internship, EPO
