Use of Incorporation By Reference in Patents: A Shortcut Tool and Possible Consequences

In drafting a U.S. patent application, the patent applicant may refer to a prior publication to aid in describing the background or some other facet of his or her invention. The applicant may incorporate this prior public information expressly into the specification of his or her application, or as a shortcut may incorporate this information by explicit reference. This seemingly innocuous shortcut may be a useful tool for the patent applicant or patentee; however, patent infringement litigants — whether plaintiff or defendant — should be keenly aware not to overlook subject matter that has been incorporated by reference either in the patent at issue or in relevant prior art when validity of the patent is challenged.

24 minute read February 27, 2007 at 01:38 PM

By

Kevin W. King And Kar Yee Tse