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May 12, 2010


It's impossible to overstate the value of asking yourself, "How could I design around this claim?" when drafting or amending a claim. It's also impossible, sometimes, to get it right under the constraints of amendment and reexam practice. In this case, "not detecting" was an excessively narrowing limitation -- but the two-page description of the invention provided no more moderate language.

Dear James,

I completely agree with you. Drafting patent applications and claims requires one to walk a fine-line between adequately describing the invention on one hand, including providing the most expansive list of alternatives as the invention will permit in order to avoid both as-of-yet unknown prior art and future design arounds, while on the other hand avoiding excessively long specifications. It is no wonder that application drafting is one of the most challenging aspects of intellectual property law, and possibly fraught with the most danger. As you indicate, "not detecting" was excessively narrowing, but I am not sure from reading the patent that the invention itself would have tolerated a more moderate alternative. Thank you for your comment.


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