Always incorporate!

In a recent federal court case it became obvious that only an inventor's expressly made description of an invention is relied upon by the public. So, what if there are certain portions of the application that are not expressly used by the inventor as the application process proceeds?

In Dunnhumby, the inventor filed a first patent application. Then he filed a second patent application based on the first. He failed to expressly include the first in the second. Later, he sued for infringement of his software patent.

The inventor wanted his custom definition for the word "Query" from his first application to apply in his second. The court refused to do so, advising that the file information in the application's folder is "intrinsic" to the patent. Anything else is extrinsic and not something the public would have necessarily known.

To circumvent this, always include a specific incorporation by reference in any patent applications that are subsequent to a prior application for the same invention.