Incorporation by Reference Doctrine
Whether a host document incorporates material by reference is purely a question of law, and invalidity by anticipation requires that the four corners of a single, prior art document describe every element of the claimed invention, either expressly or inherently, such that a person of ordinary skill.
Case CategoriesWhether a host document incorporates material by reference is purely a question of law, and invalidity by anticipation requires that the four corners of a single, prior art document describe every element of the claimed invention, either expressly or inherently, such that a person of ordinary skill in the art could practice the invention without undue experimentation. Material not explicitly contained in the single, prior art document may still be considered for purposes of anticipation if that material is incorporated by reference into the document. Proper incorporation by reference requires that the host document identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents . However, a statement of priority was found NOT to act as an incorporation by reference.
Cases addressing the incorporation by reference doctrine fall into three categories.
1) First are cases in which a host document's reference to another document was not sufficient to incorporate the other document by reference. A host document's "footnote citation, without comment," to another reference did not qualify as an incorporation of any or all of the information from the [other reference] under the standard set forth in Advanced Display Systems . At most, the footnote citation could provide a justification for combining the references for obviousness purposes.
2) Second are cases in which a host document describes and incorporates specific subject matter by reference . The Federal Circuit addressed whether a host prior art document effectively incorporated another document Choi by reference. Two paragraphs in the host document were at issue.
a. The first referenced specific subject matter: "The tie-bar nuts can be secured . . . by any appropriate mechanism, such as the pineapple and toothed-ring mechanism described in Choi at ? 35.
b. The second was more general: All cross-referenced patents and applications referred to in this specification are hereby incorporated by reference, quoting host document at ? 49.
The two paragraphs work in concert to incorporate at least some portions of the reference and that it was not necessary to decide whether the second paragraph, in fact, incorporates the rest of Choi, i.e., in its entirety. The Court held that specific subject matter was incorporated.
Case Categories3) The third category includes cases in which the court confronted wholesale incorporation--whether a host document incorporates the entirety of another document by reference. If the host document limits the statement of incorporation to particular details of another document, the Federal Circuit has limited the incorporated material to those particular details. When the host prior art document stated that further details relating to the construction and deployment of a most preferred skein are found in other documents, the relevant disclosures of each of which are included by reference thereto as if fully set forth herein. The court was not persuaded that this language incorporates by reference the entire disclosures of the other documents because the plain language limits the incorporation to only relevant disclosures of the patents, indicating that the disclosures are not being incorporated in their entirety quoting host document at 2:30-36 .
The Federal CircuitThe Federal Circuit has found a blanket statement incorporating an entire document by reference sufficient. The host patent application stated that the disclosures of the two applications are hereby incorporated by reference quoting host document. The application later contained a narrower passage: Relevant portions the disclosures are hereby incorporated by reference. The court held that the broad and unequivocal language in the first incorporation passage incorporates the entire disclosures of the two applications rather than just the limited portions described in the narrower passage. As for the effect of the narrower passage, the court explained that while it may seem redundant, nothing prevents a patent drafter from later incorporating again certain relevant portions of an application so as to direct the reader to the exact portion of the incorporated document the drafter believes relevant .
The incorporation by reference doctrine does not vary across different applications of the doctrine. The Federal Circuit treats incorporation by reference as a question of law and a separate inquiry from the fact issue of anticipation. It is true that the patent applicant's burden of satisfying the written description requirement was different than the burden of showing anticipation by clear and convincing evidence, but the clear and convincing standard does not apply to whether a prior art document incorporates another by reference.
By preventing the clear and convincing standard from roaming outside its fact-related reservation, courts can increase the likelihood that discoveries or inventions will not receive legal protection where none is due. If a disclosure was incorporated by the broad and unequivocal language that the disclosures of the reference is hereby incorporated by reference9.
37 CFR 1.57Under 37 CFR 1.57, Incorporation by Reference must:
o Express a clear intent to incorporate by reference by using the root words incorporate and reference (e.g., "incorporate by reference") and
o Clearly identify the referenced patent, application or publication
o Essential material may be incorporated by reference, but only by way of an incorporation by reference to a U.S. patent or U.S. patent application publication, which patent or patent application publication does not itself incorporate such essential material by reference
o Provides written description, enablement and/or best mode of the invention
o Describes the claimed invention as required by 35 USC 112, 2nd paragraph
o Describes the structure, material or acts corresponding to a means or step + plus function as required by 35 USC, 6th paragraph
o Essential material present in the specification as filed may be canceled and replaced by an incorporation by reference to a US patent or published application
o Non -Essential material can be incorporated from
o U.S. patents or published applications
o Foreign patents or published applications
o Prior and concurrently-owned US applications
o Non-patent publications
o However, hyperlink or other browser executable code is NOT permitted
o Non-essential subject matter may become essential subject matter and vice versa depending on specific claim amendments
o Accordingly, previously proper incorporations by reference may become improper or vice versa
o Improper incorporations by reference can only be cured by amendment to insert material previously incorporated by reference
o Amendment must be accompanied by a statement that material added has been previously incorporated by reference and that amendment contains no new matter
o Correction of improper incorporation by reference must be timely and no later than
o Time period set when notified by PTO in office action
o Close of prosecution defined by Rule 1.114(b) or abandonment when not notified by PTO
o Petitions under 37 CFR 1.183 to suspend time period requirement are not effective
o If abandoned, petition to revive under 37 CFR 1.137 must be filed
o After issue, correction must be made by reissue - certificate of correction is not effective
o Corrections to comply with 37 CFR 1.57 (b)(1) only permitted
o If application as filed clearly conveys an intent to incorporate the material by reference
o Mere reference to material does not convey an intent to incorporate the material by reference