Incorporation by Reference

Think eating your cake and having it too. That’s incorporation by reference.

You want to include as much disclosure in your application as you reasonably can without annoying the examiner and judge who may eventually decide the fate of this application. The more disclosure, the more likely the claims will be interpreted broadly and will be held to infringe. The more disclosure, the less likely an application and eventual patent will be found wanting under the first paragraph of 35 USC 112.

More is indeed better, up to a point, and here’s where incorporation by reference comes in. You can incorporate by reference any amount of disclosure, thousands of pages if you like, from other US patents and publications. It’s treated legally as if all of those pages were there to be read, instead of available for look up.
And of course that’s the lower limit. You want the examiner and judge to have everything important at their fingertips when they review your application and patent. You don’t want to send them to look up part of your disclosure somewhere else. But for those “you might need all this someday” incorporation by reference is a cool solution. It’s wise to use those specific words to make sure it’s treated as part of the specification.

Incorporation by reference can happen automatically as set forth in 27 CFR 1.57. This happens when you have a patent application in which a portion of the disclosure was inadvertently omitted, but it was in an earlier application from which the latter application has priority.

It’s just a cool thing

Advertisement