The following chart does not tell us whether the size of the patent document makes any difference. It only tells us that the average patent has grown considerably over the past twenty years.
To create the chart, I obtained a sample of 10,000 patents issued between January 1977 and December 2007 and counted the number of words in the description of the claimed invention. This excludes claims, title, abstract, references, and other identifying information. To amplify the results, I added two trend-lines. The first trend-line runs from 1977 to 1987 and has essentially no slope — indicating that description size remained steady over those years. The second trend-line runs from 1987 – 2007 and has a clearly positive trend-line indicating that the number of words is increasing over time.
“Any chance of a return to languages other than English?”
Now, that’s silly, isn’t it? Why should ANYTHING be in a language other than English? :^)
Well, yes Bierbelly. But what about those persons (judges) who lay down the precedents that the Examiners in the USPTO are required to follow (and which determine the way a US patent attorneys should file and prosecute, in the best interests of his/her client)? US patents used to be published in German. Any chance of a return to languages other than English?
Max,
We have problems here in the US with examiners’ proficiency in English also. ;^)
Priority considerations are liable to be reduced to a semantic exercise when (as in the EPO) only 9% of Examiners have as their first language the language (English) used by the Applicant to define the invention and to provide a written description containing a disclosure that enables the reader to cultivate the ground fenced off from the public by the claim. Imagine yourself examining in (say) the JPO and Applicant files wholesale prosecution amendments, in Japanese. Is he adding new matter? Do you know? Maybe you would feel safer if Applicant refrains from adding to the word store of his app as filed?? The USA, where English is the single language of the Examiners, the judges and the Statute, has the possibility to show ROW how (less emphasis on semantics) it should be done whenever English is the only language that counts. On a multi-language playing field, however, EPO Rules apply.
Max,
My “positive” experiences with EPO examiners has been with respect to substantive issues, not with respect to procedural issues. We, too, have a prohibition against adding “new matter”, but at least arguably, the USPTO gives a little more consideration as to what the specification actually teaches, and to what those of skill in the art already know, in determining what constitutes “new matter”.
To try and reduce priority considerations to a semantic excercise, when the nature of the invention is scientific (as they all should be) is a recipe for failure for all involved. Computers can not solve all our problems. The human mind and experience should still be tantamount in this excercise, not a keyword search.
Bierbelly, your positive experience of attitudes taken by EPO Examiners might be because 1) no national courts anywhere can tell them what to do or not do 2) they are operating under a civil law (no Binding Precedent, rather “Free Evaluation of Evidence”) mentality and 3)they seek to balance public against inventor interest, in a FTF system where it happens all the time that unconnected Applicants file for protection of more or less the same invention at more or less the same date. Which of those Applicants shall get the 20 year monopoly, and how much territory to give to each? Strictness on “written description” and prohibition on adding new subject matter is the inevitable knife edge to cut the deck between those competing Applicants, when it all hangs on which of them was “First to File”.
Student,
I think MD is engaging in a little hyperbole; suggesting that others on this board will tear into him for his opinions.
Yes, you are correct that claimed subject matter must find basis in the specification as originally filed. “Fully enabled” is not in the code. The specification must provide a written description and enable the skilled artisan to practice the invention. Just how much of a disclosure rises to the level of adequate written description and enablement is an oft-litigated matter, and obviously varies on a case by case basis.
The trend lately (in all patent offices) has been to focus on the semantics of the application, rather than on the science, when considering written description and enablement. I suppose that’s because all of the offices and examiners have less time to really fully consider the nature of the invention, the inventions are becoming more complex, and the search tools are almost entirely keyword driven. It’s getting to the point that I don’t think the PTO needs to hire scientists/engineers anymore, just librarians.
Interestingly enough though, my experience over the last few years is that the EPO examiners provide a much more thoroughly considered (scientifically) patentability report than do the US examiners.
bierbelly,
In his reply to me above, Maxdrei said:
“Student, I shall get into trouble with the US patent attorneys who comment in this thread if I, a patent attorney from outside USA, advise you on what’s achievable in prosecution in USA.”
What kind of “trouble” is he referring to? Yes, I am asking what I think is a simple question. It is my understanding that a claim, any claim, in every U.S. patent, and any possible divisional or continuation of that patent, must be fully disclosed and enabled in that patent’s application as originally filed. Am I correct? If I am correct, how does that wash with Maxdrei’s “trouble”?
Maxdrei,
Please clarify what you mean. You seem to be saying above (12/23) that you, a non-US patent attorney, would get into trouble with US patent attorneys if you were to expose the US patent system that allows US patent attorneys’ scams which achieve securing US patents which claim inventions that are not disclosed and enabled anywhere in the patent application. And you do not want to be the one to blow the whistle and expose US patent attorneys for the dishonest con-artists you know them to be.
Malcolm,
Do you agree with what Maxdrei seems to be saying?
“Now I understand even more of what you are saying, thanks for elaborating. In a nut shell, you, a non-US patent attorney, would get into trouble with US patent attorneys if you were to expose the US patent system that allows US patent attorneys’ scams which achieve securing US patents which claim inventions that are not disclosed and enabled anywhere in the patent application. And you do not want to be the one to blow the whistle and expose US patent attorneys for the dishonest con-artists you know them to be. Boy, who can you trust nowadays.”
What an overly simplistic and biased attitude. In fact, I think the practice that MD is referring to is that sometimes practiced in the US, but not permissible in EP: i.e. amending the claims based upon actual exemplary data, to create a new range not otherwise supported in the spec. For example, I claim a range from 10-100, but prior art arises at 20. I have exemplary data between 30 and 100, so I amend to claim 30-100. Fine in the US, but verbotten in EP, due to their overly semantic approach to what constitutes enablement and written description…since I haven’t previously disclosed that more limited range, I’m not entitled to claim it.
So, which approach does more of a disservice to the inventor?
further, Examiner #6k
Applicants are not “funding the public’s search against you, not YOUR search.” Rather, the PTO is searching to determine whether my client’s application meets the statutory requirements of patentability. If following an examiner’s professional search it doesn’t then all reasons should be clearly set forth as rejections or objections in each Office Action — if it does then a Notice of Allowance should issue.
Examiner #6K
— you contend that a patent applicant must retain the assistance of one skilled in the art in the preparation and presentation of those specific claims in an application — please point me to the section in the statute, rules and/or mpep which makes such a requirement
— I fully understand the difference between 102 and 103 — no further condescension is needed
— if you find in your searching more than one good alternative rejection for my claims please make them
–can you guarantee me that you with your expertise have located, cited and applied the most relevant prior art out there
— I agree that the PTO requirements of its searchers are too restricting with today’s voluminous prior art, and I believe that the fees applicants pay (filing fees, extra claims fees, allowance fees, maintenance fees, etc.,) are adequate to pay examiners to do their job (if studies show that the fees are not adequate they should be raised) Occasionally an examiner will get an application with an unusually large number of claims or cited references, but on the other hand some cases will have few claims and few references, it all evens out, and those with excess claims pay higher fees and those with large numbers of references should IMHO should pay larger fees
Looks like we have only one person to praise the virtues of the attorney’s position:
“I present clams which I believe patently distinguish over the prior art …”
I agree that your job isn’t to search, however, both your job and your applicant’s job is to submit apps which you believe to be an invention. Let me repeat that, submit apps which you believe to be an invention. This involves more than reading 10 ref’s your app supplies and asking him, “do you think this is an invention?”. You need at least a beginner status in your art to even have a clue if you believe you have an invention or not. Don’t try to tell me you think something is an invention if you don’t have a clue if it is or not. If you don’t have a clue, the only thing you “think” is that you don’t have a clue if it’s an invention or not. The PTO is NOT a wall to bounce your ideas off of. This is a major exploitation that is dragging on the system right now. People submitting applications that they don’t have one clue about whether or not it’s an invention. They just say, well I looked at some prior art in that art and now I think it’s an invention. Me and the american people call BS. There are two ways to get around this ignorance problem. Get an expert opinion, or be an expert (search it a bit). Now you believe, or don’t believe that you have an invention. The examiner corps is here to search the invention on behalf of the public interest to prevent bad monopolies, NOT to search for you, to determine if you actually believe you have an invention, or otherwise. You pay for the search on the public’s behalf because you want a legal monopoly. Also, yes, in my art, apps will try to put obvious stuff in quite often, that unless they’re completely off their rocker then they know is obvious, so if you’re not doing it, at least you’re one that doesn’t among many that do.
An examiner’s job is to search, and to…”
I know my job thanks, the only question that comes into play is whether you can finally get on your toes and pretend you have a clue about the art you’re claiming to have knowledge about to the extent to believe you have an actual invention and not random bs.
Once you actually believe you have an invention, submit an app. Until then, we’ll continue to get people with your problem of the art getting better the more searches are completed, and here’s why:
1: Submitted claims that read closely onto one patent that doesn’t really match your invention, but matches the way you chose to word your invention in board terms exactly leading to a 102 rejection. The 102 being hugely more powerful than a “weaker” 103 that hits your invention on the head, until you get down to being more specific in your claims. You got a bum first reference because you claimed in a very broad fashion and the examiner doesn’t have time to guess which way you want to proceed with an application that has 15 pages of spec’s worth of junk to search and find. He may have had the “better” 103 reference at the get go, amongst 10 others that also read on your “invention”. He gave you the “best” art at the time of your overly broad first claim, which is what he is required to do.
2: You submitted a very broad claim that he found a 102 ref (or very decent 103) within 8 hours and sent you an action. Upon your amendment (and subsequent RCE’s) he spends another 5-8 hrs searching and now is much more familiar with YOUR (not his) niche of the art and is now searching like a champ. 102’s start popping up. Guess what happened? That last dead-on 3 word google search he did ruined your day, not the 5 subclasses/15 google searchs he labored over for 14 hours previously.
Pay me to search more, I double-dog dare you. Just remember, when you pay me you’re funding the public’s search against you, not YOUR search. You just happen to be privey to the public’s case against your proposal for a monopoly, until you obtain one. I am the public, and I’m paid by you to protect your public property.
P.S. If you’d like to do your own search so as to not build a case against yourself on the record, google has a nice feature now called “patents”. In addition I hear you can hire searchers.
That’s exactly what I’m insinuating Malcolm. thank you. Now it would be helpful to receive comments from Paul Morgan, on what he is thinking of, when he writes about problem/solution.
Max Max, the simple answer is that in the U.S. Intellectual Property actually matters because we have private capitalism. In the U.S. there are potential consequences for everything you do.
In Europe, and many parts of Asia, it doesn’t really matter what you submit because the means of production is controlled by the government – we call that socialism or non-private (public) capitalism, maybe even outright communism. Since the government controls commerce, patents don’t really matter.
“Had Applicant, in the app as filed, recited something constituting a purposive selection, ie that TAXOL was somehow different from all the others, he would have had his TAXOL claim ratified as valid.”
Well, sure. But that seems quite different to me than a requirement for some sort of problem/solution statement in the specification. What you are alluding, MD, seems to be really a requirement that the inventive property/feature of the claimed composition be recognized at the time of filing rather than drummed up later (i.e., after some bad art is identified).
I write longish applications cause it takes me a lot of words to explain something to a reader who (i) may be picking up the first application they’ve ever seen and/or (ii) reads, writes, and speaks English as a second language, in other words, a lot of Examiners.
For example, I now refer to a method as a “method, process, steps, blocks (in reference to the flow diagram), operation, and the like” because I do not know the [pick a non-English language] word that most closely translates into English. I got sick of 112, 2d para rejections from Examiners who did not understand the technology and/or the English language. I also started including in my own definitions about four years before AWH for the same reason.
MHO, YMMV, etc.
Maxdrei
Now I understand even more of what you are saying, thanks for elaborating. In a nut shell, you, a non-US patent attorney, would get into trouble with US patent attorneys if you were to expose the US patent system that allows US patent attorneys’ scams which achieve securing US patents which claim inventions that are not disclosed and enabled anywhere in the patent application. And you do not want to be the one to blow the whistle and expose US patent attorneys for the dishonest con-artists you know them to be. Boy, who can you trust nowadays.
Student, I shall get into trouble with the US patent attorneys who comment in this thread if I, a patent attorney from outside USA, advise you on what’s achievable in prosecution in USA. All I can say is that what I get from US clients, to file as an amendment at the EPO, being a claim amendment that found favour in the USPTO, is utterly untenable in Europe because it defines the invention at an intermediate level of generality that is not to be derived from the original filing text. Such intermediate generalisations are routinely introduced at the USPTO, which is why Americans write specifications with no intermediate generalisations in them.
Maxdrei
Yesterday up above you said, “ROW says that such claims, lacking basis in the app as filed, are invalid because they are having the effect of adding “subject matter” to the app after its filing date.”
Did I get your meaning right, that in the USA, you can claim an invention that is not disclosed and enabled in the original written application as filed when you file but you can do that after the original filing date? Is that what you were saying or implying?
Malcolm let’s take as an example the TAXOL-coated Angiotech stent litigation in UK. Applicant claimed a wide range of coatings, named TAXOL as one of them, but didn’t say (in the app as filed) that its performance against restenosis was any different from all the other anti-restenosis coatings recited in the app. Then prior art Wolff was cited and Applicant narrowed claim 1 to the coating being of TAXOL. Claim invalid: obvious. Had Applicant, in the app as filed, recited something constituting a purposive selection, ie that TAXOL was somehow different from all the others, he would have had his TAXOL claim ratified as valid. What Paul Morgan alludes to is more a spin-off of FTF than EPO PSA. What is still a “work in progress” is the extent to which you can save a claim, in EPO opposition proceedings, by invoking a problem/solution story unmentioned in the app as filed.
Paul wrote “The above comments about keeping the background section of applications smaller and blander, or non-existant, might improve effective U.S. claim bredth in some U.S. patent litigation, but if that application is also being filed for patent protection in other countries, you may be missing any “problem-solution” statement, which may well be essential over there, and if added after the U.S. filing date might lose priority benefit over there.”
Paul, could you or another practicioner elaborate? In what jurisdictions is this “problem-solution” statement a requirement, is there clear guidance about how specific the “problem-solution” needs to be, and can the specification be amended, e.g., after notice to grant, to include such a statement if needed?
Gideon:
If the purpose of your post was to denigrate an entire class of practitioners, you have succeeded beyond your wildest expectations.
#words per spec changed slope circa 1989.
That’s perfectly explained by word processing.
In 1985ish, your basic IBM clone as still running a single screen courier font from a C prompt.
Not only was the platform not conducive to starting from a template, editing the template, and so on, there had to be a lag while the new system was adopted.
Even in the late 90s I still knew some old turds who insisted upon writing crap out by hand or reading changes into the Flintstone-a-phone. I remember asking a secretary when I started (we still called them “secretaries” then) why she was wearing headphones and typing. “Old George over there uses the Flintstone-a-phone.” “Why?” – “Because he prefers it.” “Why”. [annoyed] – “BECAUSE HE CANT TYPE.”
Of course, I’m thinking, “just learn dude – you’re not dead, you’re just 50.”
Anyway, so figure 1/2 the old codgers are too stoopid/stubborn to use computers. Then figure a 3-4 ramp up. Then figure young pups start coming in and they prefer the keyboard to the Flintstone-a-phone, and, Voila (how the he11 do you spell that? Not in the top 5 on the right click drop down spell check? [old codgers – discover the right click]!), you see a ramp up beginning in about 90, which is when Windows 3.x was released.
At that point you have a visual system that allows you to copy and paste a document and see it on your desktop and rename it and start anew, and cut and paste with the mouse and so on.
Before, you had to be comfortable with C prompt (DOS), be able to type commands to scan directories, use funky command prompt commands. Most folks wouldn’t have taken the time. Almost as easy to hand a secretary an old app with the copiable parts highlighted.
So, I’d say Windows release and 5 year lag on PC ramp up use explains the 90 slope change well.
You
The above comments about keeping the background section of applications smaller and blander, or non-existant, might improve effective U.S. claim bredth in some U.S. patent litigation, but if that application is also being filed for patent protection in other countries, you may be missing any “problem-solution” statement, which may well be essential over there, and if added after the U.S. filing date might lose priority benefit over there.
Examiner#6k
thank you for your service … no communication = no compromise
“FYI the purpose of the patent system is to reward you for what you contribute to the american people, overclaiming what you know your invention rightfully covers is punishable if you’re found guilty. Just fess up already and lets get down to business.”
however, i cannot agree with this statement … what i know and what you know are up for search and examination … that *is* the business of the pto …
society clearly benefits as patents are published and statutorily limited to 20 years … an interesting spike in related applications around the time a clearly potent patent is published bears this out — fact is the “adults” cannot ignore the end game without prejudicing the client if the examination itself is too adversarial — which means longer specs and more contradictory case law which gets pushed back and forth without any progress of the “arts and sciences” — just lawyering up (except one side is paid “way” more than the other which is its own set of issues — so i thank you for your candor and your service!)
by “helping” the applicant — whatever your interpretation — one RCE or 10 OAs to “get it right for the record” — is tethered to the fact that the system should *NOT* be profit driven but “get-it-right”-driven (my preference more attention paid to the MPEP, argued elsewhere, less lawyering up) … it is inventor/applicant funded … (the diversion of funds in 1999 means that applicants have been paying for other non-patent projects, ear marks, etc. for quite a while – so the american people get a two-fer) …
the pto is properly and appropriately the source of optimized search and examination … not litigation …
ironically worrying about some later date typically leads to cases like festo … meaning … less willingness to amend during prosecution and more shell games on both sides (this is a generalization) … either way the beast is hardly starved … more fees, more statistics and little attention paid “value” … numbers numbers everywhere but not …
to all: merry christmas & a happy, healthy new year!
remember contact your senators …
Thank you, Kent ::
ive read the sullivan & harrison work … thanks
“Exec perceived value isn’t easily measured, but here are some things that would point to patents being perceived as more valuable: # of times patents shows up in the press (annualized over a 20 year period); # of patent suits; damages awards. Each of these criteria would, if charted together, show significant increases starting 1990’ish. All of these factors would lead to greater executive mind share. Greater mind share -> greater attention. Greater attention -> longer legal documents.”
and vcs during that period actually downplayed patents in favor of mindshare/messaging … one standard in valuation is when both sides believe they have been screwed … “ive got the pistol so ill take the pesos and that seems fair” (refreshments)
whatever the changes in patent application length it seems to crib the examination process instead of encouraging examiner-applicant negotiation >> ideally benefitting both sides … thus longer apps and less explanation of the prior art so as not to be trapped by a very different “objective” interpretation of the sam art being described …
changes from omnibus claims to more epo-like constructions — driedmax has a clearer perspective on that (maxdrei — merry christmas — and a happy healthy new year!) — seem to increase the unlikely march to a harmonized and “objective” patent instrument … much as each culture weighs ip vis-a-vis other priorities quite differently …
example … ibm announces they have filed a patent for generating patents … there are several overlapping and related areas which enable creation of “ip” that arguably renders the filing obvious — yet it made for a nice PR-puff piece … examples: creating abstracts which take music qualities and compares against known successful works for “similarity” — see Platinum Blue — tools to enable “innovation” by minimizing the learning curve using bandwidth … some talk the inventors tinker and do …
A CAVEAT & QUESTION (not my position) can, as is constantly argued here, a patent be stripped down to a truly objective instrument … imho, what is “objective” (3rd party agreement) very nearly meets the concept of “obvious” (ESPECIALLY in hindsight — “in the way” “transparent” “standing in the way” “within reach”) …
you are right on about the shift from “location” to “attention” or “recognition” … to your last point it explains how contingency arrangements increasingly look like vc term sheets … inventors will still end up with less than 3% of their babies …
Maxdrei
You say, “ROW says that such claims, lacking basis in the app as filed, are invalid because they are having the effect of adding “subject matter” to the app after its filing date.”
Now I think I follow what you are saying. You mean that, in the USA you can claim an invention that is not disclosed and enabled in the original written application as filed but you can only do that after the original filing date. But I don’t quite follow what you mean when you say, “ exclude everybody else not just from laying a finger .”
“Everything but the kitchen sink” Malcolm writes, is what US attorneys have been conditioned to include. Almost right. If claim 1 is the liquid in the sink, and the illustrated embodiment is the diamond somewhere inside the sink, and if the patent is a right to exclude everybody else not just from laying a finger on the diamond but also from putting even just one fingertip into the liquid, what happens when the claim to the whole sinkful can’t withstand prior art attacks? Somebody before you already had his fingertip over the edge of the sink. Now you need in the sink a smaller quantity of more concentrated liquid. From a European (mech eng) viewpoint, US-drafted apps are full of detail that is bordering on mindless/trivial yet always (deliberately??) fail to recite the successive case-specific lines of defence for a patent owner retreating in the face of validity attacks. In another analogy, think of moving up through the mountain-specific location of the height contour lines (ever better performance through successively neater technical features), on the trek from claim 1 to the peak that corresponds to the Best Mode. Europeans map those contours, and Americans don’t. Heaven help ROW when US drafting attorneys cotton on to the benefits of describing the specifics of the contours of enhanced performance, between claim 1 and the illustrated embodiment because, right now, those in Europe faced with such hollow apps just petition successfully for their revocation.
Ironicslip – “one question to your point … how would you separate/delineate/carve-out “intangible value” versus “patent value” alone? …”
On valuation – wwwwwooooowwww there, let’s not get too far ahead of ourselves. Value is worth a blog until itself. I’m only talking about increased value as measured by patents perceived value by the executive teams of corporations (the biggest spenders on IP). Importantly, this isn’t the ultimate answer to patent value, but it does help explain why people spend more time & energy on patent application preparation. Exec perceived value isn’t easily measured, but here are some things that would point to patents being perceived as more valuable: # of times patents shows up in the press (annualized over a 20 year period); # of patent suits; damages awards. Each of these criteria would, if charted together, show significant increases starting 1990’ish. All of these factors would lead to greater executive mind share. Greater mind share -> greater attention. Greater attention -> longer legal documents.
On the value of patents, Pat Sullivan & Suzanne Harrison have done some interesting work on valuation. Not surprisingly patent valuation is very subjective (who is going to use the patents, for what, when?).
I’ve been up to my neck in accountants and valuation experts for the last 6 weeks; it amazes me how far we have to go to get accounting to align with reality on patents. We’re lucky enough to be working with some great folks though.
Kent
Just Some Examiner,
You are not rambling, you are a genius. You should get a bonus.
Merry Christmas and Happy New Year to all
I think D1 practice properly applied would solve most of these problems. Find the closest reference that someone solving the stated problem would use as a starting point. Put something in indepenent form that is not obvious in light of this reference, and get the case allowed. It would prevent the examiner from switching prior art and the applicant from switching inventions. If someone wanted to challenge to validity of the patent they would have to find a better D1 reference or have some **really** good arguments. I think this would lower pendency, a higher presumption of validity, and a higher allowance rate. The statute could be changed to shield the applicant (and attorney) from inequitable conduct or lost Festo equivalents for characterizing the invention’s stated goal. But it’s a Saturday night and I’m just rambling.
“Meanwhile, in USA, the well-educated patent attorney writes the app with no such definition, no background and no embodiments, and takes pride in never disclosing “What the invention is”.”
Very close. The last line should be “never disclosing precisely what any of the theoretically hundreds or thousands of distinct inventions are.”
What happened is this: the PTO set the bar for obviousness really low. This encouraged people to fill their patents up with everything including the kitchen sink so that they could get around the strict TSM test and get SOME some patent every time.
“”why not just omit the background section altogether? there is no statutory requirement for it.”
True enough. But the next thing you know the Fed Cir is going to come down with some decision that somehow disparages a specification without any background whatsoever.
Hello Student. What I mean is that inventions made after the app is filed shouldn’t derive legal protection, when the validity of the claim falls to be determined as from the filing date of the app. USA allows an Applicant, during prosecution, to write valid new claims that are intermediate (somewhere between the scope of claim 1 originally filed and the Best Mode of the illustrated embodiment) generalisations, and of which there is no counterpart in the app as filed. ROW says that such claims, lacking basis in the app as filed, are invalid because they are having the effect of adding “subject matter” to the app after its filing date. In a nutshell, in ROW a “layers of the onion” (plenty of announcements of progressively better technical performance, as your technical feature definition of the invention progressively approaches your Best Mode, with as fine a step length as you can achieve) approach to drafting is lauded whereas, in USA, exactly that approach is seen as doing your client harm. Whereas a US app has a gaping hole, between the broadest definition and the Best Mode, a European specn has here its most important section, namely, the cascade of intermediate generalisations (and what performance enhancements they deliver). In the end, it’s a “Public Policy” thing. Does it make sense for the national economy of the USA, to allow Applicants during prosecution the amount of freedom to amend (to an undisclosed intermediate scope) that US law currently allows. From the current writhings of Congress, SCOTUS the CAFC and the USPTO we see that informed opinion in USA thinks: NO.
Maxdrei
I don’t quite follow. please elaborate what you mean.
Examiner #6k,
First, you seem like an Examiner that it would be good to work with. I wish we could meet in an informal setting so I could show you some rejections that some of your colleagues have sent (on the level of: kitchen sink + giraffe = new microprocessor) to hear your opinion.
I liked the model OA you sent at 5:50pm on 21 december. Everyone’s life would improve if that is how it all OAs were formulated.
In fact, that is exactly how EP office actions often look: the nearest prior art is presented with little explanation. The Applicant responds by deleting all the dependents that are disclosed in that reference and amending the independent claim in the way the Applicant wants in order to avoid that cited reference. Everyone saves time, money and aggravation.
Unfortunately, it seems that the US system is not built for this style, if for no other reason than that Examiners don’t have time to find the most relevant art and get rewarded for forcing the Applicant to file an RCE.
“word processing, why I write 5 page + OA’s when I could type it like this:”
Examiner #6K, you’re about 31 years too late (Office action from 1976):
link to pics.livejournal.com
I’m sure the USPTO’s words per action has gone up more than applicants’ words per application (and most of the USPTO’s increase is merely due to form, not technical or legal complexity).
How much more surreal can this get? Everywhere on planet earth except USA, the party that asks the public on date X to grant him a 20 year monopoly from date X (that he’s going to use against the public) has at least to provide on that date X words that define a protected area, and a disclosure that enables over that area. Meanwhile, in USA, the well-educated patent attorney writes the app with no such definition, no background and no embodiments, and takes pride in never disclosing “What the invention is”. It becomes more and more clear: write document A for the US jurisdiction and an entirely different document B for the rest of the world. The wonder is that apps for ROW can be so much more compact than those for USA.
I’ll go even one further, Bozo. Don’t discuss embodiments of the invention. Discuss examples.
Kayton’s been preaching for at least 10 years that you should keep the background to a minimum – anything you say there can and will be used against you by the CAFC. And of course, never ever refer to objectives of the invention, or advantages, and don’t say “the invention is”, just discuss embodiments of the invention.
my first secretary had an electric typewriter with no memory. she said that I got one draft application and one final. My applications were very short. Now with cutting, pasting and editing and revisions being so easy with word processing, my applications are many times longer. I also want to make sure that I comply with written description, enablement, best mode, support for mpf claims, alternative embodiments, etc — which if my old memory serves me right, were not that big of a concern back in the electric typewriter days — all of which make for longer patent applications. Comments from any of you other old timers?
Examiner#6k
I present clams which I believe patently distinguish over the prior art of which I am aware and as I understand it, and I cite that prior art. Maybe I read the art too narrowly or didn’t appreciate the significance of certain portions of the art, and I hope that the examiners note that and point it out in their rejections so I can better distinguish over the art. And often they will find better art than I was aware of, but with the search tools they have and their experience in searching in their technical areas I am not surprised. In fact, that is what they are at least in part getting paid to do (with the PTO fees the applicants pay. But I don’t knowingly withhold, hide or mischaracterize art as you appear to be contending nor do I present claims which I don’t believe are at least arguably patentable over the art I am aware of. My job is not to search though.
An examiner’s job is to search, and to present and apply his best prior art in his first office action. All too often newly-cited references seem to get more pertinent as the number of actions increases, and my client often contends that the examiner is hiding his best prior art in his back pocket to be applied in later actions, though I have no proof of it.
“why not just omit the background section altogether? there is no statutory requirement for it.”
Typically it seems that apps like to try to distinquish themselves over the prior art they talk about so that they’ve made a good faith showing of why they think they have an invention and not just random bs, also it assists in the search so they’ll get a better search usually. It’s also a courtesy, which despite the way I might talk here, and others do as well, we’re pretty courteous in the patent world for the most part during biz. Unfortunately, it is much diminished from the courtesy of not making your app out to be something it’s not that seemed to be the standard before the 80’s from what I can tell.
Really all they usually do is give me some ammo for free, although in all honesty, in 90% of the apps I have they could just toss 80%+ of the dependent claims subject matter in the prior art section and do me a favor. But that’s rarely the case, though when they do prosecution is usually very fast and neat. Only problem is for them, if I find their actual invention then they have almost no bs to fall back on to get a patent. Everyone wants faster examination, but they don’t want to just say what the entire deal is with the art that they know of up front. GG patent system that encourages the bare minimum. Imo, a funny system that would be nice would be every reference found by anyone other than you that reads directly on your claims lessens your patent coverage years by 1. Hah, start watching the most relevant art flow on in and see well defined claims start pouring out in record nums.
FYI the purpose of the patent system is to reward you for what you contribute to the american people, overclaiming what you know your invention rightfully covers is punishable if you’re found guilty. Just fess up already and lets get down to business.
Examiner #6k
–when you get smacked back don’t take it personal– I don’t, but just because an examiner issues a second rejection or a tenth rejection doesn’t mean that he is correct
“Dead on. After KSR, any “problem” discussed in the background will now provide the required reason to combine/modify the prior art. (And you know damn well examiners will be checking the backgrounds now to find any such reason.) After Liebel, you must be very careful in disparaging the prior art. All things considered, a bland background section is not a bad idea for US practice.”
Or you could, I don’t know, invent something and claim it, and only it, and not worry about bs like that. Also, I’ve been using those motivations for a little while before KSR and nobody has challenged them other than trying to say, no, that’s not what they meant. When indeed, they did say what I say they said and they have no invention. Hello RCE, or next case please, move along here, nothing invented to see here. I was told when I got here I was playing with the big boys now, not the children I grew up with.
Want to know why everyone blames the applicants/attorneys (except themselves) for the backlog? Because they’re very seldom willing to just admit straight up what they did and that it has now been shown to be entirely obvious, because oh wait, they made their corner at a 90 degree angle not an 89 degree angle. Nevermind that it’s irrelevant and has no special function or whatever else bs that comes our way that day.
Get out of my american patent system thanks, you’re cluttering up the waters for inventors. Give it your best shot if you really want to, but when you get smacked back don’t take it personal, it’s not that someone’s telling you that you can’t your item necessarily, just that you can’t stop others from making it.
Dinner is on you,
Examiner #6k
why not just omit the background section altogether? there is no statutory requirement for it.
“Up above someone asked about the background. KSR combined with that jacketless syringe case earlier this year is all I need to justify reducing my background section to a perfunctory statement re the general subject area and ‘people like improvements’ or something like that.”
Dead on. After KSR, any “problem” discussed in the background will now provide the required reason to combine/modify the prior art. (And you know damn well examiners will be checking the backgrounds now to find any such reason.) After Liebel, you must be very careful in disparaging the prior art. All things considered, a bland background section is not a bad idea for US practice.
Very nice chart, this is exactly the explaination I’ve been looking for since I started to work here about what’s the major ill of the patent system. I guess they’re probably right above, thank the word processing. This is why you used to see patents that made sense and you could tell what was invented, what it was doing, and what was encompassed without spending 10 hours to look it over. Now in my art you get 7 min, 11+ avg, 150 max instead of 3 max (including claims). This was also when the production sys was put into place, and the origin of examiner qq. I guess we should start crying about bill gates and hp not the production sys right?
word processing, why I write 5 page + OA’s when I could type it like this:
Hi,
1-10, 102b patent 3000001 shows it, Fig. 10
bye
Love,
examiner #6k
p.s. call soon n lets get allowance k?! 571-276000
(I could make this a FP even… hmmm)
Lets talk about a smaller backlog amirite?
“Why the f_ck does it matter anyway. Why can’t we get statistics that matter.”
———-
From Snopes
link to snopes.com
“One of the largest studies examined seasonal trends in more than 3,670 suicides and about 3,300 psychiatric admissions to the Veterans Affairs Medical Center in Durham NC. It found no increase in suicides or psychiatric admissions around the Christmas and New Year Holidays.”
Why the f_ck does it matter anyway. Why can’t we get statistics that matter.
“The “written description” requirement, which many believe is on questionable legal and theoretical ground, is responsible for such nonsense as in at least biotech patents and apps”
Of course, that requirement itself arose from the fact that for a long time the “art” of biotech patenting involved submitting your disclosure then adjusting the claims to omit the prior art. What remained was deemed patentable because (until recently) biotechnology was so gosh darned “unpredictable” that, e.g., nobody — NOBODY — could have predicted that lysine could be substituted for histidine in an oral formulation and still taste great to dogs.
Two observations:
(1) I am not sure the “trend lines” are exact. At least one can argue that by eyeballing it, I would say that there is no significant increase up until the mid 1990’s, and then there is a significant jump in patent size. Dennis, could you do a regression test?
(2) The “written description” requirement, which many believe is on questionable legal and theoretical ground, is responsible for such nonsense as in at least biotech patents and apps where practitioners copy and paste lengthy paragraphs “describing” a DNA molecule having “at least 100, at least 99, at least 98, at least 97, at least 96, at least 95…nucleotides.” They do the same for temperature, pH, salt concentration, etc., about anything that has a range.
The fear on these practitioners’ part is that if only the 100 nucleotide sequence is provided, there would NOT be sufficient written description of a fragment half in size.
I don’t know how many trees have been wasted on such non-sense.
Up above someone asked about the background. KSR combined with that jacketless syringe case earlier this year is all I need to justify reducing my background section to a perfunctory statement re the general subject area and “people like improvements” or something like that.
The PTO reported 419,760 patent applications filed last year, so assuming Dennis has taken a random sample, applicants have used 2,938,320,000 (3 billion) words to describe their inventions this year. Now, if you want to see an exponential curve, take a look at the number of patent applications over time…. link to patentdemand.blogspot.com
….. It is impossible for the USPTO to do their job effectively – so the number of applications must be limited.
Dennis,
Get a real job! If you’ve got that much time, you’re not working hard enough.
;^)
In addition to the increase in complexity of technology being patented noted above, another reason for increased specifications is the need to avoid the litigation dangers of the hostile attitute towards “incorporation by reference” exhibited by some panel decisions of the CAFC in recent years. Also, some other panel decisions requiring more detailed enablements or best mode disclosures, even though patent specifications are supposed to be written to be understood by persons skilled in the subject art [not judges or others lacking such specialized technical education and common understanding].
It used to be that the rule was a claim was construed to cover everything within the literal scope of the claim language. Perhaps more importantly, originally filed claims were deemed to constitute their own written description.
Over recent years there have developed reasons to believe that features of one’s preferred embodiment will be interpreted effectively as claim limitations, and also that broad claim scope can render a patent valid for lack of written description.
I am not sure this is responsible for the amount of increase in words (that probably has more to do with word processing software and the like), but it does mean that modernday patent applications should include a lot more stuff.
Conclusion: start charging by the word!
axharr …
value in the eyes! quickie : what is the value of bandwidth?
clearly you understand SarBox and the nature of reporting intangibles … do you think most folks expense or capitalize the assets? it would seem that many companies shift patent holdings, if not all ip, to offshore entities providing further confusion on just how to value in the context of securities disclosure …
and the trend to contingency arrangements for patent monetization (not just trolls) increasingly takes the form of llcs or spe’s to carry the assets sharing in both licensing and equity/preferred equity/debt upside …
improvements in liquidity (“trolls”) and movement to large holdings of patyents (ie intven) cannot help but scream for a closer look at disclosure in that context? how do you value an instrument that can be both equity and debt depending on how it is structured vis-a-vis licensing or more importantly – pre licensing? bowie bonds? (hope note)
Patent valuation … makes me smile …
Even with Sarbanes Oxley, there are some regions of the corporate balance sheet that leave room for *hmm* adjustment.
Such as intangible assets. Goodwill … estimated future licensing revenues … and patent portfolios.
One reason for the growth in patent value since the early ’80s *may* be that patent valuations are hard to do accurately (some would say _impossible_ to do for the bulk of an unlicensed portfolio) and therefore easy to adjust as needed during a tough quarter … say, when a corporation needs to meet a per-share target of book value due to bond obligations. Bear in mind that some real pie-in-the-sky folks have tagged “intellectual property assets” as constituting up to 80% of stated corporate value …
really anonymous … have to agree ven if my own grammar above is distorted … long day in the salt mines in alexandria i suppose … i would add that as general practice (in light of festo and the whole dictionary versus lexicographer debate) more applicants have added “subsections” for term definitions — great advantage if competitors buy into the term language being chosen …
James Brewer
“Please inform. What is it about background section and case law that would emphasize a significantly reduced section?”
I’ll leave specific case law alone but there was definitely a shift away from avoiding “applicant admitted prior art” — not sure that really mattered … applicants who provided characterizations until say 1999 can hardly be said to have properly characterized the admitted art anyway …
the number of embodiments has expanded even if duplicative in nature, in a number of areas … my guess, again in light of festo, embodiments are preferred to hard and fast definitions …
Kent Richardson
“I’d like to see year of priority as the basis for the analysis. It’s a more consistent metric to use when looking for trends. Specifically, correlating law changes with filing dates seems to make more sense than issuance date. There isn’t much I can do about a pending case, but a new case is a different matter entirely.”
agreed!
one question to your point … how would you separate/delineate/carve-out “intangible value” versus “patent value” alone? clearly some folks “got it” early on without patent emphasis … acquisitive companies seem to have their own internal metrics/dynamics for adding/subtracting pieces of their ip portfolio successfully or not … the lack of much m&a activity in the patent intensive fields (perhaps excepting cisco) until the end of the dot-com boom has been studied in that context …
Does anyone think it is an eerie coincidence that the increase started just 5 years after the CAFC was created?
It’s word processing software, as others have suggested, that started the curve. In particular, I imagine that the fear of failing to include an “important” feature (whose “importance” could only be discovered years later in a malpractice action) combined with the relative ease of adding disclosure using word processing was a large factor. After all, inserting a paragraph here or there or anywhere [or with a fox or in a box] was now simple with word processing software.
The trend continued as the caselaw made it even more important to provide alternative embodiments (1) to enable the full breadth of the claims or provide sufficient “written description” and (2) to avoid a narrow claim construction.
It was also in the mid-to late 1980s that the preferred form of the specification was changed to the following from a much less rigorous and informal arrangement… I remember as an Examiner cases would get bounced back for not having the Brief Description of the Drawing… the (newly preferred) Brief Summary was also often just duplicative of the claim text, so effectively after the 1980s you are adding a claim wording count to the patent specification that wasn’t there previously:
(a) TITLE OF THE INVENTION.
(b) CROSS-REFERENCE TO RELATED APPLICATIONS.
(c) BACKGROUND OF THE INVENTION.
(1) Field of the Invention.
(2) Description of Related Art including information disclosed under 37 CFR 1.97.
(d) BRIEF SUMMARY OF THE INVENTION.
(e) BRIEF DESCRIPTION OF THE DRAWING.
(f) DESCRIPTION OF THE PREFERRED EMBODIMENTS.
(g) CLAIM(S).
(h) ABSTRACT OF THE DISCLOSURE.
“Looking at the trend, over 20 years of increased patent size, patents have increased in value as a business asset.”
Kent,
I like your observation if only because it matches the time scale of the change. The increase began during the Reagan’s presidency. He was a strong proponent of the patent system. I remember from that time Larry Kastriner, head of IP for Union Carbide, commenting that with improved enforceability, there was never a better time to be in the patent business.
I think it was in 1983 that the basic filing fee for a patent application was increased from $70 to $340. Additional claim fees were also dramatically increased. I’m not sure if there was also a dramatic increase in the issue fee and the maintenance fees, but there may have been. Pendency at that time was probably around 3 years on average, which would correlate somewhat to the beginning of the increase in the number of words in the average specification in 1987. Perhaps the drastic increase in the filing fee spurred applicants to start putting more subject matter in one application, rather than filing multiple applications as they may have in the past.
Please inform. What is it about background section and case law that would emphasize a significantly reduced section?
I’d add to MM’s comments that although commercial databases with the text of patents were available earlier, the internet and free sources for patent text (like the text of US patents since 1976) only started to really take off with the masses in the 1990’s (think AOL), which may also partly explain the lag. And I agree with “A friend” that it would be interesting to see the breakdown by art units.
I’d like to see year of priority as the basis for the analysis. It’s a more consistent metric to use when looking for trends. Specifically, correlating law changes with filing dates seems to make more sense than issuance date. There isn’t much I can do about a pending case, but a new case is a different matter entirely.
Looking at the trend, over 20 years of increased patent size, patents have increased in value as a business asset. On average, something that is more valuable gets more attention. Usually, when a document gets more attention, more detail gets added to it, not removed (sad comment on our ability to edit). Also, as pointed out, word processing has made it easier to add, move/manipulate larger amounts of text.
Kent
… little point … the higher the forward reference the more likely a new examiner follows the lead of the primary instyead of focusing on allowable subject matter in light of better training in search …
“The earlier ramp-up most likely reflects the increased filings of high tech patent applications (biotech, software, etc.). However, recent increases are most likely driven by court decisions requiring the practitioner to disclose more equivalent embodiments and anticipate all possible future design-arounds (only a slight, sarcastic exaggeration). The dimininishment of the DOE is most probably a significant factor.”
but, one would hope grammar, syntax, word choice, word economy and terminology empty terms to “avoid’ novelty & obviousness (hey, shrunk & white is the perfect antedote); more examiners look for in haec verba support and literal reference back to the spec (eg, summaries that read as the claims do and cross references that create a large cut and paste mentality).
the increased shift of burden of proof to the applicant for establishing priority dates (festo not only doe-lite and ignorance of ) for more literal subject matter support … early communications with the applicant helps flesh out interpretations and reduces estoppel …
would like to see those patents with over 100 forward references (1 out of 1000 applications is a stat that has been mentioned) and 1st office action allowances (more common with simple claim scope negotiation probably more common when search and clasification as well as more experienced examiners understood the pto is in the examination business not the litigation business) and a relationship with successfully litigated patents …
but money hits the basic economic issue … turnover in the office and in the ranks of practitioners begs the question … what is the real work and how is it characterized and …
“My first thought was word processing as well, but why the 20 year lag time?”
You not only need a word processor but, for firm-based practice, you need a whole computer network and access to a healthy source of electronic source material.
I think that explains the lag time.
By the way, has the median grown as well?
My first thought was word processing as well, but why the 20 year lag time?
These results are not particularly meaningful, although it is an interesting study… more useful info might be gained if it were possible to determine allowance rates and/or validity rates based on size of the specification.
I do agree with the client perception of bigger is better, although most of the size increase is the boilerplate also mentioned above.
Lastly, keep up the good work, this blog is certainly one of the best in patent practice.
There is also the well-known psychological impact of higher attorney fees. Attorneys are more expensive than ever. Clients expect a document of a certain size.
Of course the explanation is Word processing. At least 50% of the garbage in most patent explanation is worthless boilerplate that reiterates known techniques, sometimes stuff that is 20, 30 or more years old.
One would imagine that informed attorneys are trimmming their background sections close to non-existence by now. But what about all those uninformed attorneys?
The earlier ramp-up most likely reflects the increased filings of high tech patent applications (biotech, software, etc.). However, recent increases are most likely driven by court decisions requiring the practitioner to disclose more equivalent embodiments and anticipate all possible future design-arounds (only a slight, sarcastic exaggeration). The dimininishment of the DOE is most probably a significant factor.
“So inventions (or at least the description of inventions) are getting more complicated.”
Yes, you could tell that very easily if you counted the words of patents issuing between 1820 and 1850 and compared them with those of the 1920s or the 1980s. The words should be increasing, and I suspect the rate of increase should probably be exponential, not linear as the curve fitting suggests.
I would bet word processing software (and the associated cutting and pasting) is responsible for the increase in specification size. Wordperfect 4.2 was released in 1986 and was widely adopted by the legal (and patent) community then due to its advanced features.