I'm planning to do a quick study of "no no words" in patent applications and how their use has changed over time. Examples include "objects of the invention," the "present invention," "must," "prior art," "limitation," ...
Are there other phrases or words that I should include in the study?
Denis, did you ever conclude this study?
Dennis, What is the status of the “No No Words: Words and Terms to Avoid in a Patent Application” study?
Well, Max,as an “Actual Inventor” all I can say is thank God the USA Patent System is not like the EPO, and I pray it never gets that way.
thanks, max.
Leo, EPO-PSA manages to filter out the rubbish, even without recourse to hindsight, by tying the objective problem to just two docs, both written before the date of the claim, namely the app as filed and the prior art starting point D1.
Look at the claim, extract from it the list of technical features it contains. Examine the disclosure of D1. How many of those features are in there. If all, no novelty. If not all, you’re novel.
For obviousness, start again with D1 and establish what technical feature(s) of the claim characterize the claim relative to the disclosure content of D1. Now ask yourself, “What technical effect, alluded to in the app as filed, does one get (and which you don’t get from D1) when one plugs into D1 the extra characterizing feature?
To be fair to the public, you can’t let Applicant win on the basis of a technical effect plucked from the air during prosecution, of which there is no hint in the app as filed. That would be giving a monopoly from date X on the basis of an invention made only after date X.(So, include your “effects” in the app as filed).
To be fair to Applicant, one must allow him/her, confronted with hitherto unknown D1, the chance to bring forward further evidence of non-obviousness relative to D1.
Drafters take note. Today, you might well need to pray in aid of patentability an obscure statement of performance enhancement in your app as filed. Tomorrow, you might even need it inside the USA. After all, EPO-PSA is only closing the gap between what inventors think they have contributed to their technical field and what the law recognises as worthy of reward. It brings back respect for patent law.
“Obvious” or “obviously.”
Interestingly, I find that now I hesitate before even SPEAKING those two words.
“optimized” Many inventors in the biotech field will routinely use this word in their publications/posters/abstracts.
Avoid use to prevent routine optimization i.e. obviousness rejections.
You know, Actual Inventor, you’re absolutely correct. Anyone who finished most of an undergraduate engineering or science degree and then decided to switch to english, and any undergraduate english major who went on to get a graduate degree in engineering or science, can become a patent attorney. And you say you know several such people?
“With no ‘technical effect’ in your app as filed, the PHOSITA is deemed to have been merely ‘looking for an alternative’ to the existing art.”
Max, thanks for the post. But I remain confused. According to the PCT Guiedelines (I know that’s not the EPO), the identification of the objective technical problem is established in “an objective way,” based on the claimed invention, the closest prior art, and the differences between them. If this is truly an objective procedure, does it make any difference what the specification says the applicant wanted to do? In other words, is the examiner constrained to an explicitly stated objective technical problem?
Breadcrumbs,
Given that KSR, its progeny, and its USPTO interpretations seem to have elevated what Judge Rich would have nearly instantly labeled “hindsight” in a prior decade to a currently expected norm on the part of factfinders, what drafting suggestions might help minimize or prevent the use of such hindsight?
Well, I’m gobsmacked Poppa. Such a posting deserves a thoughtful response but I’m here trying to bill hours, so I’m not going to write much.
For Art 52 EPC, our 101, cling to the idea of “technical character”. Software for trading derivatives lacks it, but software that accesses data from memory faster and better does exhibit it.
For Art 56 our 103, think “technical effect”. That is synonymous with “solution to objective technical problem”. In European TSM, a hint or suggestion is needed, in the published prior art, to put together the features of the claim. The PHOSITA is deemed to have been wanting to obtain the “performance enhancement” or “technical effect” or “solve the objective technical problem. With no “technical effect” in your app as filed, the PHOSITA is deemed to have been merely “looking for an alternative” to the existing art. In that case, EPO Exrs behave like 6 and his siblings, and reject your appln. In fact, I think 6 and his siblings caught that nasty habit from the EPO. To defeat them you just have to draft smarter. Poppa, it helps to read the AGREVO Decision of the EPO, T_0939/92, which you can take as a pdf from the EPO website. Now, back to my file.
Poppa Bear,
Is there a concern that obviousness (as in “obvious to try”, or due to design or market considerations) will all too easily follow the path as outlined by the suggested descriptions in a US application?
It seems that the difficulty of eradicating hindsight is being overlooked. It is almost as if the use of hindsight doesn’t matter if the results of such use can find some (marginal ?) justification.
Thanks Max, for proposing one potential incompatibility between US and EPO practice, as follows: “It all seems different, in the USA, namely: Whatever you do, never say on filing day what technical effect is delivered by your claimed combination of technical features.”
A starting point in understanding this potential incompatibility might be in determining what is meant by “technical effect”.
According to the Case Law of the Boards of Appeal of the European Patent Office, Fifth Edition, December 2006, section I.A.1, “an invention may be an invention within the meaning of Art. 52(1) EPC if for example a technical effect is achieved by the invention or if technical considerations are required to carry out the invention”.
Potentially clarifying, in T 914/02, the board stated that having technical character was an implicit requirement of the EPC to be met by an invention within the meaning of Art. 52(1) EPC. The involvement of technical considerations, however, was not sufficient for a method which might exclusively be carried out mentally to have technical character. In fact, other noninventions listed in Art. 52(2) EPC, such as scientific theories, but also computer programs, typically involved technical considerations. Technical character could be provided through the technical implementation of the method, resulting in the method providing a tangible, technical effect, such as the provision of a physical entity as the resulting product, or a non-abstract activity, such as through the use of technical means.
In T 748/03, the board held that the criterion of the purposive exploitation of the effect of objectively identifiable and measurable natural forces as a condition for the technical character of an invention for the purposes of patent law could, in the light of Art. 83 EPC, be defined more clearly as follows: the technical character of an invention was closely linked with the requirement of reproducibility under Art. 83 EPC.
According to the Guidelines for Examination in the European Patent Office, December 2007 edition, Part C, Chapter IV (Patentability), section 2.3.1 (Discoveries):
“If a new property of a known material or article is found out, that is mere discovery and unpatentable because discovery as such has no technical effect and is therefore not an invention within the meaning of Art. 52(1). If, however, that property is put to practical use, then this constitutes an invention which may be patentable. For example, the discovery that a particular known material is able to withstand mechanical shock would not be patentable, but a railway sleeper made from that material could well be patentable. To find a previously unrecognised substance occurring in nature is also mere discovery and therefore unpatentable. However, if a substance found in nature can be shown to produce a technical effect, it may be patentable. An example of such a case is that of a substance occurring in nature which is found to have an antibiotic effect. In addition, if a microorganism is discovered to exist in nature and to produce an antibiotic, the microorganism itself may also be patentable as one aspect of the invention. Similarly, a gene which is discovered to exist in nature may be patentable if a technical effect is revealed, e.g. its use in making a certain polypeptide or in gene therapy.”
Consideration of the immediately following section 2.3.2 (Scientific theories) also seems relevant:
“These are a more generalised form of discoveries, and the same principle as set out in IV, 2.3.1 applies. For example, the physical theory of semiconductivity would not be patentable. However, new semiconductor devices and processes for manufacturing these may be patentable.”
From section 11.5:
“A set of technical features is regarded as a combination of features if the functional interaction between the features achieves a combined technical effect which is different from, e.g. greater than, the sum of the technical effects of the individual features. In other words, the interactions of the individual features must produce a synergistic effect. If no such synergistic effect exists, there is no more than a mere aggregation of features (see T 389/86, OJ 3/1988, 87). For example, the technical effect of an individual transistor is essentially that of an electronic switch. However, transistors interconnected to form a microprocessor synergically interact to achieve technical effects, such as data processing, which are over and above the sum of their respective individual technical effects (see also IV-Annex, 2).”
Slightly off the immediate topic, but related to one of Max’s earlier posting in this thread is this statement from section 11.7.2:
“In the context of the problem-and-solution approach, the technical problem means the aim and task of modifying or adapting the closest prior art to provide the technical effects that the invention provides over the closest prior art. The technical problem thus defined is often referred to as the “objective technical problem”. The objective technical problem derived in this way may not be what the applicant presented as “the problem” in his application. The latter may require reformulation, since the objective technical problem is based on objectively established facts, in particular appearing in the prior art revealed in the course of the proceedings, which may be different from the prior art of which the applicant was actually aware at the time the application was filed. In particular, the prior art cited in the search report may put the invention in an entirely different perspective from that apparent from reading the application only.”
Taking these passages into consideration, we might reasonably interpret “technical effect” to mean a “technical function”, where technical might be defined as a practical application of a scientific principal or theory.
If this understanding is correct (or even close), then it seems that the perceived incompatibility is that EPO best practices require that the specification describe a technical function for a claimed combination of features, and US best practices discourage it.
Yet there seems to be no substantial disadvantage, from a US legal perspective, in describing one or more technical functions that _can_ be achieved by a claimed combination of features. Rather, if any substantial disadvantages are suggested by US caselaw, they seem to flow from describing (and not claiming) a technical function that _must_ be achieved by a claimed combination of features (or even a single feature).
Max, Paul, or other EPO practitioners, in your view, would describing one or more technical functions that _can_ be achieved by a claimed combination of features fulfill the EPO requirements?
US practitioners, see any substantial disadvantages in describing, in a US application, one or more technical functions that _can_ (as opposed to _must_) be achieved by a claimed combination of features?
Well said Jonathan. Somebody above wanted me to give the European point of view. In a nutshell, it is this: In a First to File jurisdiction, you are going to be held to what you announced as your invention back on filing day. An invention is a new and non-obvious technical solution to an objective technical problem. How much of that can one directly and unambiguously derive from the app as filed? That much is what you have, as your reservoir, from which to craft a useful valid patent claim. It all seems different, in the USA, namely: Whatever you do, never say on filing day what technical effect is delivered by your claimed combination of technical features. As far as I am concerned, the two jurisdictions are flat incompatible. Unstoppable force meets immovable object. So, better write one thing for the USA, and a different app entirely for ROW, no? There is one snag though. Just six months after you file your wildly indiscreet PCT, it gets published, to the distress of your US litigators. But, I think the academics on the CAFC are alive to the incompatibility problem, and will chip away at it till it’s solved. Don’t you agree?
Scimed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343 (Fed. Cir. 2001) (“[T]he characterization of the coaxial configuration as part of the ‘present invention’ is strong evidence that the claims should not be read to encompass the opposite structure.”);
I think it was Scimed that started this sensationlistical overreactionaryismistic shenangins regarding “present invention”, so I will start there and we can move through the list.
I submit that Scimed is NOT a case about that turned on the word “present invention”. It was about how the invention was defined to have a particular structuaral feature in all the embodiments and this was a key to getting around prior art.
From the court case:
“The words “all embodiments of the present invention” are broad and unequivocal. It is difficult to imagine how the patents could have been clearer in making the point that the coaxial lumen configuration was a necessary element of every variant of the claimed invention. Moreover, there is no suggestion that the patentee made that statement unaware of the alternative dual lumen configuration, because earlier in the patent the patentee had distinguished the dual lumen configuration used in prior art devices as having disadvantages that the coaxial lumens used in the patented invention had overcome.”
And
“Second, in discussing the disadvantages of certain prior art structures, the written description of each of the patents explains that the prior art catheters with shortened guide wire lumens “suffer from several disadvantages.” The first cited disadvantage is that “such catheters have been one piece polyethylene catheters having dual lumen configurations adjacent their distal regions. Typically, such catheters have larger than necessary shaft sizes and are stiffer in their distal regions than would be desired . . . .” ‘594 patent, col. 3, ll. 3-8; ‘482 patent, col. 3, ll. 5-10; ‘334 patent, col. 3, ll. 10-15. Thus, the SciMed patents distinguish the prior art on the basis of the use of dual lumens and point out the advantages of the coaxial lumens used in the catheters that are the subjects of the SciMed patents.”
The patent was drafted to avoid the prior art. They got their claims allowed and then tried to backdoor in their competitors product into the claim.
It seeemed like a pretty simple to me case and not a reason to say “present invention” is a no-no word.
In fact there are many other cases with “present invention” language that do not suffer problems.
Actual Inventor:
First, no one said that it’s impossible for an English major to get a reg no. However, it was you that said “there are few jobs for English majors they usually go to law school and end up as patent writers, umm.. ‘Patent Professionals.'” Clearly you were making a blanket statement that English majors are “usually” the ones that go on to be “Patent Professionals.” However, the reverse is true, i.e., English majors do not usually go on to be patent professionals.
Second, if you were to name someone you know that’s a registered Patent Attorneys, so what? How is that “outing” them or invading their privacy? If they work for a firm, chances are they already have their bio posted on the firm’s website, which would probably include their B.A. in English (assuming they exist). The more likely truth is, you don’t know anyone that was an English major that is now a patent attorney.
Third, you still haven’t bothered to respond to the challenge of naming some of the patents that you’ve written and prosecuted. Conclusion: 1/2 of what you say is a lie, and the other 1/2 is BS.
Dear Mr./Ms. Actual Clueless:
As you can read from the following pasted text there is no absolute exclusion for someone possessing a English degree, only the requirement that the necessary
scientific and technical training be met. One could surely have that English degree and still find a variety of other ways to meet the technical requirements.
As for me naming someone I know. Thats non sense. I am not invading anyones privacy and outing them to a bunch of anonymous, neurotically charged entities on an internet blog.
And to all you “Actual Clones” if this exchange is any indication of your professional patent prosecuting prowess, you most surely are ripping off “Actual Inventors” because you just got owned.
Case Closed.
—-
From link to uspto.gov
ii. Graduate Degrees: An applicant who has a Master’s or higher level degree in one of the
subject areas listed above, but does not have a Bachelor’s degree in such subject, must
established to the satisfaction of the OED Director that he or she possesses the necessary
scientific and technical training. Possession of the necessary scientific and technical training may
be satisfactorily established in the manner set forth under either Category B or Category C below.
B. CATEGORY B: Bachelor’s Degree in Another Subject. An applicant with a Bachelor’s degree
in a subject other than one of those listed in Category A, must establish to the satisfaction of the
OED Director that he or she possesses scientific and technical training equivalent to that
received at an accredited U.S. college or university for a Bachelor’s degree in one of the
subjects listed in Category A. To establish such equivalence to the satisfaction of the OED
Director, an applicant can satisfy one of the following four options, other training, or other
education listed below. The applicant must submit the necessary documentation and objective
evidence showing satisfaction of one of the options or other means of qualifying.
Let me repost the above link:
link to uspto.gov
the link posted by “Actual…clueless” doesn’t work (maybe because of the trailing period)
Actual Inventor wrote:
“Those attorneys I know, that are English majors, are fully qualified registered Patent Attorneys. So you are still flat out wrong. And thats a fact.”
Prove it. Name one of them. While you’re at it, take a look at the Examination Registration Requirements at link to uspto.gov. Note the section titled “III. SCIENTIFIC AND TECHNICAL TRAINING REQUIREMENTS FOR ADMISSION TO THE EXAMINATION.”
Actual Genius Wrote:
Actual Inventor: You’re becoming tedious. Yes, english majors can become attorneys; no, english majors cannot become patent attorneys because they aren’t qualified to sit for the registration exam. No registration = not a patent attorney, not a patent attorney = can’t file or prosecute patent applications. Look it up, its in the “statues”.
Dear Mr. Actual Genius:
Those attorneys I know, that are English majors, are fully qualified registered Patent Attorneys. So you are still flat out wrong. And thats a fact.
“…why require a limited subset of “technical” degrees?”
Because it hopefully will exclude idi0ts like you Mooney from the profession.
Actual Inventor: You’re becoming tedious. Yes, english majors can become attorneys; no, english majors cannot become patent attorneys because they aren’t qualified to sit for the registration exam. No registration = not a patent attorney, not a patent attorney = can’t file or prosecute patent applications. Look it up, its in the “statues”.
Say, you weren’t an english major, were you?
“”Actual Inventor: English majors can’t become patent attorneys.”
Sure they can. They just can’t become registered as agents.”
Now I am beginning to see the source of Mooney’s delusions.
Hint: if you aren’t registered, you aren’t a “patent attorney” Mooney. No matter how much you wannabe one.
Mr./Ms ok wrote:
I’m not so sure that “English Lit Majors and/or grad students with poetry minors” “end up as patent writers.” And if you want them to proofread, they’d miss that one too- “statue” was spelled correctly, just wasn’t the right word.
Posted by: ok | Feb 10, 2009 at 02:17 PM
Dear Mr./Ms. ok:
Your first misconception has been cleared up. Please read the earlier post. Second, if they miss that word then I would fire them. You see Proof reading is more than mere spell checking. Why pay for spell checking when your word processor can do that? Any proof reader I hire better be able to catch words used out of context as well.
Hello A. Inventor,
Re: “You for got [sic] to write, ‘You are Doomed, Doomed!'”
Say what?
Mr. Actual Genius wrote:
Actual Inventor: English majors can’t become patent attorneys. I assumed a genius like yourself would know that.
Mr. Actual Genius:
In this case you are flat out wrong. I personally know English Majors that went to on to Law school and became successful attorneys. Working as top litigators, and high powered corporate lawyers.
And well, yes, those that couldn’t cut it became patent writers.
Dear Mr. Shaffer:
As an “Actual Inventor” I know there is absolutely nothing wrong with using “business method” in an application.
The Fed Cir. struck down the so called business method exception in State Street and again upheld that action in Bilski Enbanc.
And last I checked there was no exclusion to the words ” business method” in the actual statute.
“Actual Inventor: English majors can’t become patent attorneys.”
Sure they can. They just can’t become registered as agents. But why is that? If “everything under the sun made by man” is patentable (as some commenters are prone to remind us endlessly) then why require a limited subset of “technical” degrees?
It’s illogical, it’s contradictory, and far more discriminatory and confusing than the Bilski decision.
Actual Inventor: why don’t you put your money where your mouth is and tell us which patents you’ve drafted and prosecuted? I’d love to see examples of your work. My guess is that you haven’t any.
Actual Inventor: English majors can’t become patent attorneys. I assumed a genius like yourself would know that.
Perhaps one of the experienced EPO practitioners (Max?) can help answer this question?
What specific suggested best practices are both reasonably well-supported and apparently irreconcilable across practitioner types and/or jurisdictions (e.g., prosecution vs. litigation, US vs. Japan, EU vs. China, etc.)?
Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007) (“[w]hen a patent thus describes the features of the ‘present invention’ as a whole, this description limits the scope of the invention.”)
Honeywell Int’l, Inc. v. ITT Indus., 452 F.3d 1312, 1318-19 (Fed. Cir. 2006) ((“On at least four occasions, the written description refers to the fuel filter as “this invention” or “the present invention”…. The public is entitled to take the patentee at his word [with respect to what] the invention is . . . .”)
Scimed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343 (Fed. Cir. 2001) (“[T]he characterization of the coaxial configuration as part of the ‘present invention’ is strong evidence that the claims should not be read to encompass the opposite structure.”);
Superguide Corp. v. DirecTV Enterprises Inc., 358 F.3d 870, 69 USPQ2d 1865 (Fed. Cir. 2004)(67 PTCJ 348, 2/20/04) (holding that claims were narrowed because description of figures included phrase “according to the present invention.”).
Aguayo v. Universal Instruments Corp., 356 F. Supp.2d 699, 727 (S.D.Tex. 2005), citing Microsoft Corp. v. Multi-Tech Systems, 357 F.3d 1340, 1348, 69 USPQ2d 1815 (Fed. Cir. 2004) (67 PTCJ 321, 2/13/04)(“In light of those clear statements in the specification that the invention (‘the present system’) is directed to communications ‘over a standard telephone line,’ we cannot read the claims . . . to encompass data transmission over a packet-switched network such as the Internet.”)
Cultor Corp. v. A.E. Staley Manufacturing Co., 224 F.3d 1328, 1331, 56 USPQ2d 1208 (Fed. Cir. 2000)(60 PTCJ 591, 9/21/00) (“Whether a claim must, in any particular case, be limited to the specific embodiment presented in the specification, depends in each case on the specificity of the description of the invention and on the prosecution history. These sources are evaluated as they would be understood by persons in the field of the invention.”)
Alloc Inc. v. International Trade Commission, 342 F.3d 1361, 1370, 68 USPQ2d 1161(Fed. Cir. 2003):
This court recognizes that it must interpret the claims in light of the specification, Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed.Cir.1995) (en banc), aff’d 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), yet avoid impermissibly importing limitations from the specification. Comark Communications v. Harris Corp., 156 F.3d 1182, 1186 (Fed.Cir.1998). That balance turns on how the specification characterizes the claimed invention. Sunrace Roots Enter. Co. v. SRAM Corp., 336 F.3d 1298, 1305 (Fed.Cir.2003). In this respect, this court looks to whether the specification refers to a limitation only as a part of less than all possible embodiments or whether the specification read as a whole suggests that the very character of the invention requires the limitation be a part of every embodiment. For example, it is impermissible to read the one and only disclosed embodiment into a claim without other indicia that the patentee so intended to limit the invention. Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed.Cir.2002). On the other hand, where the specification makes clear at various points that the claimed invention is narrower than the claim language might imply, it is entirely permissible and proper to limit the claims. SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1345 (Fed.Cir.2001).
I don’t see what the problem is with “the present invention…”, … I mean if you want you can scrutinize every word in each application as potentially limiting the scope. I think unless you have specific case law providing some proof they rest is based on the patent attorney’s experience/feelings.
I’m not so sure that “English Lit Majors and/or grad students with poetry minors” “end up as patent writers.” And if you want them to proofread, they’d miss that one too- “statue” was spelled correctly, just wasn’t the right word.
Brutal wrote:
For the love of god Actual Inventor, it’s “Statute,” not “statue.”
Thank you. Thats why I hire proof readers for formal docs. Usually English Lit Majors and/or grad students with poetry minors. You can get them for dirt cheap and they do an adeqaute job. Problem is when they graduate, and find there are few jobs for English majors they usually go to law school and end up as patent writers, umm.. “Patent Professionals.”
You for got to write, “You are Doomed, Doomed!”
But then again, you are ” Just an ordinary inventor(TM)”
Can a description of an embodiment that is overly vague e.g. non-specific be non-enabling?
Can another description of a further embodiment that is overly broad accidentally anticipate or make obvious a presently unknown or unconsidered future application?
>>>”present invention”
Scimed v. Advanced Cardiovascular, 242 F.3d 337 (Fed. Cir. 2001)
Astrazeneca v. Mutual Pharmaceutical, ___ F.3d ___ (Fed. Cir. 2004)
In re Curtis, 354 F.3d 1347 (Fed. Cir. 2004)
Cross Medical v. Medtronic, __ F.3d __ (Fed. Cir. 2005)
Honeywell v. ITT, 452 F.3d 1312 (Fed. Cir. 2006)
Anderson Corp. v. Fiber Composites, 474 F.3d 1361 (Fed. Cir. 2007)
Verizon v. Vonage, __ F.3d __ (Fed. Cir. 2007)
Ormco v. Align, __ F.3d__ (Fed. Cir. 2007)
Decisioning.com v. Federated Dept. Stores, __F.3d__ (Fed. Cir. 2008)
Tivo v. Echostar, __F.3d__ (Fed. Cir. 2008)
Ncube Corp. v. Seachange Intl, __F.3d __ (Fed. Cir. 2008)
Netcraft v. Ebay, __F.3d __ (Fed. Cir. 2008)
>>>
What are you talking about? I am not quite sure how these cases speak to “present invention” being a no-no word. Can you please elaborate?
I have a feeling this list was compiled by simply doing a searchon a Fed Cir database with the term “present invention”.
Max, Mr. Hart’s point was to get readers to click on his website “Lauren L. Hart”.
Perhaps Mr. Hart was hoping to get the “Actual Inventor” to click on and wise up so he doesn’t shoot himself in his feet.
Well, I don’t know about “hole” but it’s all too easy Dennis to accumulate too many bores. Lauren, was the point not that you shouldn’t use a “hole” as one of the “islands” when you assemble your bridges and islands claim?
I’m not sure, but I was once told that ‘hole’ or ‘holes’ was a no-no. It was okay to talk about the absence or lack of something, but to state ‘a hole’ was too limiting. If someone disagrees, please explain.
For the love of god Actual Inventor, it’s “Statute,” not “statue.”
“No no words” don’t kill patents. Carelessly used words kill patents.
You are a real piece of work, but good luck anyway — you’re going to need it.
You get what you pay wrote:
“Keep telling that to yourself when you commit a dumb error that a first year associate would get admonished for, which narrowly limits your claims during licensing and your seven figure licensing deal devolves into a $50K “please go away” offer.”
Dear Mr./Ms. You get what you pay:
That type of paper tiger bravado may work at scaring some naive house wife, or first time inventor, but it won’t work with a seasoned inventor that knows how to read the MPEP, knows the statue, and is an expert in the particular case law directly related to his or her particular invention.
And ANY “Actual Inventor” can acquire that knowledge within a short amount of time without spending one penny on a patent attorney, and that’s a fact.
Furthermore, all I have seen from the so called “ professional patent attorneys” that started this sub topic is nothing but pure and utter conjecture and false posturing. Not a one of you has presented any stats, objective studies, or even personal track records to back up any of your baseless assertions that “Actual Inventors” are “doomed, doomed, doomed”(yes someone actually wrote that!) unless they hire patent attorneys to read and write for them.
With that said, I am finished with this topic. As an “Actual Inventor” I have “Actual” work to do and an “Actual Business” to run.
Mooney used to try to form an anti-patent cargo cult on our island. He would burn effigies of patent attorneys and houses in Aspen.
We were very disfond of him and asked him to leave. He kept drinking all of our white wine. Plus, we wanted our grass skirts back.
“present invention”
Scimed v. Advanced Cardiovascular, 242 F.3d 337 (Fed. Cir. 2001)
Astrazeneca v. Mutual Pharmaceutical, ___ F.3d ___ (Fed. Cir. 2004)
In re Curtis, 354 F.3d 1347 (Fed. Cir. 2004)
Cross Medical v. Medtronic, __ F.3d __ (Fed. Cir. 2005)
Honeywell v. ITT, 452 F.3d 1312 (Fed. Cir. 2006)
Anderson Corp. v. Fiber Composites, 474 F.3d 1361 (Fed. Cir. 2007)
Verizon v. Vonage, __ F.3d __ (Fed. Cir. 2007)
Ormco v. Align, __ F.3d__ (Fed. Cir. 2007)
Decisioning.com v. Federated Dept. Stores, __F.3d__ (Fed. Cir. 2008)
Tivo v. Echostar, __F.3d__ (Fed. Cir. 2008)
Ncube Corp. v. Seachange Intl, __F.3d __ (Fed. Cir. 2008)
Netcraft v. Ebay, __F.3d __ (Fed. Cir. 2008)
Actual Inventor:
I’m dying to see some examples of patents you’ve written and prosecuted. It’s clear that you’re very confident in your skills. And as an inventor, surely you agree with an objective peer review. Why don’t you share some of your masterpieces with the group?
“The actual ‘statue’ for patents is very short, clear and easy to understand, very little if any ‘expertise’ is needed, unlike say the tax code.”
Keep telling that to yourself when you commit a dumb error that a first year associate would get admonished for, which narrowly limits your claims during licensing and your seven figure licensing deal devolves into a $50K “please go away” offer.
BTW: If you are overly relying upon the MPEP for guidance on claim drafting, you are already sunk.
The problem with this business is that it takes a long time before lessons really sink in for an individual inventor. It may take 10-15 years before the fruit of really bad claim draftings sinks in. By that time, you’ve followed your first bad application with a slew of bad applications (if you happen to be a prolific inventor) that cannot be saved because you’ve committed the same mistake over and over again. Sure, you may get lucky and not screw up the first one or second one, but it will happen.
Regardless, go ahead and keep doing what you are doing. It is good marketing to provide an example of how much can be lost when a good invention gets marred by poor drafting/prosecution.
Mooney: Since you’re both so much smarter than the rest of us, why don’t you and Actual Inventor get together and start your own blog for geniuses? At least it would spare the rest of us from having to skip over your postings.
Malcom says,
“Grow up, people. Don’t embarass the profession.”
That’s rich!
mysterious, voodoo, one in a million, lucky, unlucky, no way in he ll, make sure she is at least 18 first, Malcolm and/or Mooney,
Based on what “Actual Inventor” wrote, the phrase “pro se” comes to mind quickly as a no-no for patents, at least for the attorney line.
What next? “The seven words you can’t say in a patent application” – this has all the makings of the old George Carlin bit. At least he had solid legal rationale for his list.
The inclusion of most of the no-no words above is more likely the product of over-reaction to hype about speculation over dicta. I submit that in the hands of a skilled drafter, a solid patent application can be prepared using most, if not all, of the so-called no-no words in proper context.
As others have stated – it would be useful to see a rationale for deeming a particular word a ‘no-no,’ preferably one citing a case that is binding authority. More than likely, it was not the mere use of a so-called ‘no-no’ word but an overall limiting context that led to any decision perceived to relegate the word into the book of “Words that Shall Not be Used.”
I further submit that any use of language in a patent application that is unnecessarily limiting, or overly-broad (e.g., in view of the art), or which makes any unnecessary characterizations of our clients’ work, or what has gone before, is the real no-no, and what we all generally work to avoid.
Paul Cotes: “The word “surprisingly” is interesting.
If you represent to the USPTO that you have carried out experiments, and that they have given surprising results, whereas you have not got further than a thought experiment, then you can expect your actions to be questioned, as cited case law shows.”
Yes – I think this is a good point overall for the no-no thread. In the proper context many words are fine. Looney Mooney was saying something about that too.
I think if the patentees in the surprising case (Almirall) produced “surprising” data, even during litigation, this might have effected the outcome. I think it should have.
Other issues:
After reading this thread not so carefully, I am going to switch to “in one ethereal manifestation” instead of “in one embodiment” language to be more precise. And in lieu of “in one aspect” I am using “in one plane of intellectual property multidimensional space”. I never get unity of invention problems with that language.
I rarely use “can” as I find it limiting. Instead I use “can’t” as it is less limiting.
Sometimes in my Markush groups I break them down temporally. For example:
On Mondays selected from the group not consisting of only X, Y, Z. On Tuesdays, selected from the group not consisting of only a, b, c. Somedays it could be novel, somedays not.
“aspect of the invention” — Verizon v. Vonage, ___ F.3d ___ (Fed. Cir. 2007)
“I’ve grown particularly disfond of the words ‘special’ and ‘magic’, especially when used in the claims.”
I’m particularly disfond of the non-word “disfond.” But hey, this is what happens when you tell patent attorneys that they can be lexicographers…
sarg “This is a silly, cargo-cult mentality.”
Indeed. But if dare to point this out, you are ignorant and classless.
4,684,354 Appendage operated toy
1. The method of simulating magical remote control over a device which comprises the steps of:
incorporating into the device a magnetic switch including a pair of longitudnally extending reeds which are held in a closed or open position by an associated auxiliary magnet opposite both of said reeds; and
including a magnet in the tip of a simulated finger which can be placed upon the finger of an operator so that movement of the hand of the operator towards or away from the object causes a change in state of the magnetic switch therein, which change of state is retained until a subsequent pass is made with the hand including the finger appendage with the magnet; thereby to create the effect of magical operation of the device by movement of the hand of the operator with the finger appendage to the vicinity of the device.
I remember when magnets were first discovered in 1981. It was a big deal. Before that, magicians had to use strings and stuff.
This is a silly, cargo-cult mentality.
A patent containing every single one of these “no-no” words could still be a strong patent.
Context is everything.
I’ve grown particularly disfond of the words “special” and “magic”, especially when used in the claims.
My personal pet dislike is over-use of “comprising” as in “The vehicle comprises a steering wheel” (or “A football team comprises a quarterback”). I see it as another example of dictating specification without first engaging the brain. Probably it does the client no harm, just the profession of patent attorney.
The word “surprisingly” is interesting.
If you represent to the USPTO that you have carried out experiments, and that they have given surprising results, whereas you have not got further than a thought experiment, then you can expect your actions to be questioned, as cited case law shows.
However, we spend our lives looking for surprising results. Just make sure we are telling the truth before so informing the USPTO.
Just heard from a 9.475 million dollar/year partner at a massive New York City firm. He never uses the phrase “In yet another” because while travelling to DC to prosecute an application containing that phrase, he lost his foot in a wood chipper.
Although I think this places me into an ever-shrinking minority, I have long been an advocate of the viewpoint that the English language provides an immense variety of choices for expressing ideas. The patent practitioner in drafting and prosecuting a patent application should consider the meaning of the sentences he/she is writing, and the meaning of each of the words. It is important to write what you mean, and to recognize that the USPTO and the courts will assume that you wrote what you meant. Words do not in fact mean whatever you want them to mean. They carry meanings and implications derived from common usage as well as the more specialized usage of patents. It is the responsibility of the practitioner to know what the words he/she is using actually mean.
There is nothing wrong with using limiting language if your intention is to limit. On the other hand, excessively broad language for a narrow invention can be just as fatal.
Rather than casting about thoughtless “slogans” about what words to use and what not, the profession should focus on the judicious and intelligent selection of the words that best describe the invention in hand. The first requirement for the job is, presumably, the ability to read, write, and think in English.
No, no words – never, always, must, required, absolute. I try to stay away from statements about lack of safety in prior devices/methods.
“invention” “business method” “having” “sequential steps of”
…like my previous post that included a generous list of Mooney words like “dog crap” that should be avoided in a patent specification. Of course when Mooney uses them its OK, heck, around here for some reason its sheer poetry.
I demand my post be stricken from the record!
With all due respect, the MPEP only sometimes accurately reflects the law.
When the MPEP quotes a statute, regulation, or case in support of its position, it is often accurate. Nevertheless, to understand such a quote in full context, it might be wise to read the caselaw interpreting any quoted statute or regulation, and any quoted case. Because interpretations of the law can change, it also might be prudent to Shepardize any supposedly supportive caselaw to see if the proposition in question is reasonably treated as “good law”.
When the MPEP makes statements without quoting statutes, regulations, or caselaw, it might be accurate. Yet given that the MPEP sometimes reflects policies of the USPTO that are grounded in desire and/or conjecture, rather than the law as interpreted by the courts, it sometimes is not an accurate reflection of US patent law, and can lead the unwary astray.
That is, in addition to providing accurate legal guidance, the MPEP reasonably can be viewed as a policy document that advocates (sometimes multiple and/or conflicting) legal perspectives that have not necessarily been accepted, or have been rejected, by the courts.
Regrettably, the MPEP rarely signals when its guidance stretches beyond the currently accepted law. Consequently, those who aim to preserve/enhance the value of patented inventions by mitigating legal risk are probably wise to look beyond the bounds of the patent statutes, implementing regulations, and the MPEP for legal counsel.
I’ve learned here to never include the words “Huge computer brain”.
Jaoi, thanks for expressing your concern about my welfare. Indeed, I must agree with you: I do need to get a life. All the same, for somebody like me, who earns his crust helping US patent attorneys to get worthwhile patents for their clients in 600 million citizen Europe, this thread is addictive, because it confirms to me why these same US attorneys react so negatively to European patent law, to EPO Examiners and to advice from their European counsel. And why, despite the duplicated blandishments of Mr Richardson above, the PCT specifications they write are so often disastrously incompetent for use anywhere in the world except within the USA. If readers follow the advice above, it will only get worse. And yet, I am thinking, for Americans to secure effective patent rights outside the USA is going to be ever more important for the US economy, no?
Dear Mr./Ms. Anonymous:
Can you or any patent attorney you know, guarantee the claims you write will get through the PTO without rejection or objection, and then be impossible to challenge in a court of law?
Yes, or No.
Oh, and last I checked patent court case decisions are written in English and easily retrieved on the internet.
So any “ Actual Inventor” can easily read any pertinent case law that relates to their particular invention. There is absolutely no reason an “Actual Inventor” needs to pay a patent attorney to read case law, in order to draft and prosecute their application.
And if you are just a patent attorney, please don’t give out marketing and sales advice to Actual Inventors. Unless you have actually invented something, started a small business, and built it into a success your advice in this area is well, worthless.
The use of word “comprises” should be avoided in specifications.
Also, instead of using “in an embodiment” repeatedly in the specifications, terms like “alternatively” etc can be used to improve the readability of the specifications.
Words like “may” and “can” should be avoided in claims, but they should be used in the specifications to highlight alternate embodiments.
Words/phrases that I like to see: “catastrophic failure,” “hurts like a motherf—er,” “could lead to severe injury or death,”
you get the idea…
Stop the presses, Mooney reports the existence of a “friend,” close acquaintances however deny this possibility and indicate it is merely an ugly rumor.
“”may” is better than “can”?
A friend of a friend told me that a $5.21 million dollar a year partner and a law firm that you definitely heard of never allows any of his associates to use the word “can” in an application after something went terribly wrong with a case in Japan.
Just sayin’.
Actual Inventor:
Perhaps it’s true the statutes and MPEP are easy enough to understand for you to be able to draft your own application. However, you’ll need to know more than just the MPEP and the statutes to draft good applications/claims.
For example, while there is some general discussion of claim construction in MPEP 2111, there are many things that are not covered there, such as the limiting effect of language such as discussed in this thread. A good drafter should be aware of the canons of claim construction. Otherwise, you run a high risk of having worthless claims.
Likewise, your claims can be limited based on arguments made during prosecution. Consequently, it’s extremely important to understand how your words during prosecution can be used against you. Unfortunately, the MPEP and the statutes will provide you no guidance in understanding prosecution history estoppel.
Moreover, as one poster alluded to, if your intention is to provide sales and marketing tools, you should use brochures and websites for things like that. That is, you should separate the functions of your business — use a patent to protect your exclusive legal right (i.e., your license to make money); use advertising tools to advertise your patented product.
Put another way, if you show up at a licensing meeting, and it appears that your patent/claims have been drafted in an amateurish way, I can guarantee you that you will have minimal leverage in negotiating favorable terms. Both validity and alleged infringement can be challenged in many ways, most of which are not covered in the MPEP or the statutes upon which you rely.
In short, don’t be fooled into thinking that you can draft good applications simply by knowing your product and being able to read the MPEP. If you’re intent on going it alone, you should add some case law to your knowledge base.
That said, also note that there’s a reason ALL major corporations use patent attorneys to help draft and prosecute applications. Otherwise, they’d just save their money and get the engineers to do it. A old proverb says “A man who is his own lawyer has a fool for his client.” Believe me, there’s truth in that.
CJ,
You have to disclose the best mode, but you don’t have to – and shouldn’t – identify it as such, i.e., as the “preferred embodiment”.
“obvious” or “obviousness”
Use of the words “preferred embodiment,” “preferably,”…intended to refer to the preferred embodiment should be avoided.
In a compound claim directd to a pharmacophore with multiple Markush groups, how does an applicant comply with the best mode requirement when disclosing compounds with greatest activity?