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Incorporation by Reference in U.S. Patents -- Lingering Issues

By Frederick A. Spaeth, Esq.1


The recent Federal Circuit decision Pressure Products v. Greatbatch 2 touched on a lingering issue regarding the practice of incorporation by reference in U.S. patent applications: whether material incorporated into a patent application in this way can be cited as support for means- plus-function claims under 35 U.S.C. 112 6 (discussed below). This issue and others concerning incorporation by practice are addressed in this article.

By virtue of incorporation by reference, a host application refers to information in another document, the source document, for information not in the host application itself.3 Currently, incorporation by reference practice is dictated by 37 C.F.R. 1.57 ("Rule 57"), which was promulgated in 2004 (see 69 Fed. Reg. No. 182, p. 56482, September 21, 2004)(referred to herein as "the Federal Register Notice"). This article briefly reviews Rule 57 and points out conflicts between the Rule and prevailing law in regard to means plus function claims under 35 U.S.C. 112, 6, and between the remedial provisions of the Rule 57 and the purposes behind the rule.4 Finally, some suggestions are offered to the USPTO for clarifying incorporation by refere...

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