Prescriptions for Drafting Assertable Claims

Many patent cases are won and lost on claim drafting issues. In the recent Netcraft case, for instance, the claimed included the step of “providing a communications link through equipment of the third party.” In his three “Prescriptions for Drafting Assertable Claims, Ron Slusky shows how to avoid the drafting mistakes found in that claim. Ron Slusky is the author of Invention Analysis and Claiming: A Patent Lawyer’s Guide (ABA). Slusky’s seminars will be in seven venues this year: Chicago, Boston, Santa Clara, Philadelphia, DC, Dallas and NYC.

1. Claim the Invention in All of Its Commercially Significant Settings

An invention should be claimed in all of its commercially significant “settings” in order to prevent others from taking advantage of the inventor’s teachings while avoiding the patent.

A setting is a context in which the inventive concept is manifest—also sometimes called a “perspective” or “point of view”. For example, a cylinder lock invention may manifest itself in how the lock is constructed; in a unique type of key required to operate the lock; in the key-cutting machine that produces the unique type of key; or possibly even in the key blank. Each of these—the lock, the key, the key cutting machine and the key blank—is a separate setting in which the invention should be claimed because any given party may implement the inventive concept in only one particular setting. For example, manufacturers of key-cutting machines or key blanks will not infringe if only the lock itself was claimed. Other multiple-setting examples:

• a) Encoding a video signal (to reduce the amount of data required to represent it); b) decoding the encoded signal.

• a) Peptide; b) cell capable of producing the peptide; c) manufacturing the peptide.

A setting is not the same as a statutory class. For example, the lock invention could be defined within the key-cutting-machine setting by apparatus claims defining the structure of the machine as well as by method claims defining how the machine operates to cut the key.

2. Maintain the Integrity of the Invention Setting Boundary

Having decided to claim the invention in a particular setting, we should take care to restrict the claim to that setting. If something outside the boundary of the setting makes its way into the claim, parties whose activities would otherwise infringe the claim may no longer do so.

The following claim, for example, is intended to define a video compression invention in its encoding—e.g., integrated circuit encoder—setting.

A method comprising
generating a video signal to be encoded, and
encoding the video signal by performing the steps of …

Here the step of “generating a video signal to be encoded” is outside of the intended setting because the integrated circuit typically does not generate the video signal but, rather, receives it from somewhere else, e.g., separate scanning hardware. This is a point that integrated circuit manufacturers will lose no time in pointing out when the patent owner approaches them to take a license.

The solution is to assume that the input signal already exists at the point in time that the claimed method is carried out, thereby putting the actual generating of the input signal outside the boundaries of the claimed subject matter, and thereby restricting the claimed subject matter to the selected setting:

A method for encoding a video signal, the method comprising the steps of…

3. Draft claims that will be directly infringed by individual (as opposed to co-acting) parties

Contributory infringement, inducement and multiple-party direct infringement are all expensive and difficult to prove—and may not be able to be proved at all, even if the inventor’s teachings are being appropriated. Claims therefore should always be drafted to capture the activities of a) individual—as opposed to co-acting—parties who are b) direct infringers, if there is any way to do it (which there almost always is). That goal is largely achieved when the claims define the invention strictly within the boundaries of its various settings. However, we help ensure that our claims capture the activities of individual direct infringers by drafting and reviewing claims with such parties specifically in mind.

For example, infringement of the following internet-based claim invokes the actions of not only the desirable assertion target—the web server operator—but the individual internet user:   

A method comprising
(a) selecting an icon displayed on a screen [user],
(b) transmitting to a web server a signal indicative of the selected icon [user],
(c) receiving the signal at the web server [web server], and
(d) processing the received signal in such a way that …. [web server]

An internet user and a web server operator are unlikely to be adjudged joint direct infringers; neither controls or directs the actions of the other. (See, e.g., BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373, 84 U.S.P.Q.2d 1545 (Fed. Cir. 2007)). And without direct infringement there can be no contributory infringement or inducement. So everyone escapes liability under such a claim.

The solution is to draft a claim strictly limited to the web server setting and, in so doing, draft a claim that reads exclusively on the activities of the web server operator.

A method comprising
(a) receiving a signal indicative of a user-selected screen-displayed icon, and
(b) processing the received signal in such a way that ….

Copyright © 2007, 2009 American Bar Association. All rights reserved. Adapted with permission.

92 thoughts on “Prescriptions for Drafting Assertable Claims

  1. JAOI & punches–

    “actual inventor” is truculent, obstreperous, belligerent, naive, bellicose, hyperbolic…

    and most likely a 15-year-old posting from his mom’s basement.

    forget about him

  2. Dear Actual Inventor,

    If you don’t mind a couple of personal questions:
    What hat size do you require?
    Are you still taking your Lithium as prescribed?

  3. inviting body punches wrote: “Oh, and I’m not at all surprised that every other attorney contributing to this blog hasn’t even tried to convince you of the potential value of patent attorney services in general.

    For reasons that are obvious to those of us who are attorneys.”

    Yes, the successful attorneys/ litigators don’t have the time or need to waste on such a thread and the rest, having seen you and the self proclaimed Great One get your clocks cleaned, aren’t about to enter a debate in which their defeat is certain.

  4. “Some people ought to know when they have been defeated”
    Russell Crow as Marcus in the Gladiator
    Now here comes the slaughter….

    inviting body punches wrote: “Nice try. You have revealed that you have absolutely no understanding of the system within which you will operate.”

    Umm what system would that be? My computer operating system? Well, I understand it enough to use it and accomplish my objectives, and thats good enough for me. Same goes for writing and successfully prosecuting patent applications and claims.

    inviting body punches wrote: “As a VERY preliminary matter, what do you know about administrative law, where did you get the knowledge, how can you know when to use it, and how will you be able to implement it?”

    Duh??? I am an “Actual Inventor” not an administrative law…anything.

    inviting body punches wrote: “The IAC can give you the help you need”…how would you ever know, since you don’t know what help it is that you need?”

    ROFL! I am long time a customer of the Invention Assistance Center (IAC). The IAC has helped me throughout the years tremendously. I have even become friends with a wise old gentlemen that was a patent examiner for 30 years, now retired, that enjoys helping me, and all “Actual Inventors.” You would love him. He has a thick southern accent and quick wit. And in a folksy style all his own he can help you navigate the system faster and better than all your law books combined. After he is finished helping, you might even get a good story, or some life advice. I suspect he is legendary and anyone that has ever talked to him knows who I am talking about. But hey, the entire IAC staff is helpful. Like I said, they love “Actual Inventors” and despite your lame fear tactics, I suspect any intelligent person will call the IAC and discover this for themselves.

    inviting body punches wrote: “You would hire a litigator if need be. How could you possibly decide when that situation would arise?”

    ROTFLMAO, you can’t be serious with these questions.

    inviting body punches wrote: “Would you hire one for an appeal to the Board?”

    Doubtful.

    inviting body punches wrote: “Would you ever disagree with a PTO final decision?”

    Psst…PTO decisions are not really final, no matter what they tell ya ;-)

    inviting body punches wrote: “How would you ever know if it was legally appropriate, and economically efficient, to launch a challenge?”

    Nothing is legally appropriate, its either legal or illegal. And economically efficient is determined by the money in my bank account, which thankfully I have more of since I can write and prosecute my own applications and claims.

    inviting body punches wrote: “I could go on and on, ….”

    Yes, you could! But not on my dime. Thank God I am an Actual Inventor that learned to write and prosecute my own patent applications and claims, it’s been very rewarding and economically efficient :-)

  5. “Actual inventor”–

    Oh, and I’m not at all surprised that every other attorney contributing to this blog hasn’t even tried to convince you of the potential value of patent attorney services in general.

    For reasons that are obvious to those of us who are attorneys.

  6. “Actual inventor”–

    Nice try. You have revealed that you have absolutely no understanding of the sytem within which you will operate.

    As a VERY preliminary matter, what do you know about administrative law, where did you get the knowledge, how can you know when to use it, and how will you be able to implement it?

    “The IAC can give you the help you need”…how would you ever know, since you don’t know what help it is that you need?

    Bureaucrats and gov’t employees are not working FOR you as an individual. There is no privity of contract, no practice standards. They have no duty toward you.

    You would hire a litigator if need be. How could you possibly decide when that situation would arise? Would you hire one for an appeal to the Board? Would you ever disagree with a PTO final decision? How would you ever know if it was legally appropriate, and economically efficient, to launch a challenge?

    I could go on and on, but I hope that you get the point. No matter what they tell you, the PTO is not there to help you–it is there to help the country by extracting disclosure, and by giving the minimum it can for said disclosure.

    Individual PTO employees are not there to help you–they are there to discharge their duties under statute, regulation, and policy, none of which include a duty from them as an individual to you as an individual.

    And as for “buffaloing”, I have never, ever talked anyone “into” even patenting, let alone hiring a pat atty, but I have talked plenty “out of” patenting.

    My bona fides in this matter are such that I have even helped people resolve billing disputes with large firms doing patent prosecution for them, the resolution of which was that no monies were owing because the firms couldn’t demonstrate that they had done anything of value to the inventor during the time billed. Just as I can identify where value DOES NOT exist, I can also identify where it DOES exist.

    I feel no animosity toward you–in fact, I sympathize with your obvious distrust. I genuinely hope that it goes well for you, because although I am an attorney, I instinctively chafe at the mention of a system that requires or suggests that an individual citizen hire legal counsel for an otherwise administrative interaction with the government.

    Unfortunately for you, that IS the system in which we live. And the PTO is not the only example of where this occurs.

    Good luck.

  7. PS, btw:
    GREAT work from any attorney (from any professional) is about relationships, not money.

  8. Dear Actual Inventor,

    Thank you for your comment and for reading my comments.

    Regarding your reply; touché, well written and I agree with much of your comment.

    However, I still think you are clueless regarding the complexity of patent writing and prosecution – and it appears from your reply that you never had to put your “theories” regarding same to test, i.e., in litigation.

    My advice to you, a fellow inventor, is to avoid litigation on any patent you’ve written.

    I wish you good luck (and the good sense to find a good patent attorney for your next, or pending, inventions (i.e., — the best patent attorney money can buy –).

  9. inviting body punches wrote: “going it alone was the least worthwhile of all the available options. Knowing what I know now, it is the least worthwhile all the more so.”

    Thank you for the opportunity to put an end to the biggest piece of Patent Attorney propaganda every perpetrated on “Actual Inventors.”

    “THE GOING IT ALONE SCARE TACTIC”

    The fact is no inventor ever has to go it alone. First of all, every inventor has the right to have their assigned Patent Examiner write claims for them. Its says so in the MPEP.

    But more important the PTO has The invention Assistance Center staffed with senior patent examiners, some retired, that will help you every step of the way. The staff is friendly, courteous, professional, knowledgeable and know the PTO bureaucracy inside out!

    They can give you the advice and help that can’t be found in the MPEP and that some Patent Attorney, that has never worked a day inside the PTO, could ever hope to know.

    Most important these IAC examiners are own your side and you will have an entire army working for you at NO charge. Heck even the phone call is free!

    1- 800-PTO-9199. or 1-800-786-9199

    Call as much as you like, they LOVE Actual Inventors!

    So to all inventors, don’t ever let some Patent Attorney buffalo you into thinking you can’t do it yourself and are going it alone. You have more help than you ever know or they could ever provide.

    Personally I say let the big publicly traded corporations pay patent attorneys to play their game of lions Vs. hyenas with the PTO Examining staff.

    As we all know now, from the this current economic crisis and bail out mentality, those big corps are not the smartest roles models when it come to handling money. As an “Actual Inventor” you have a business to run and actual money to make.

    Oh and to Mr. inviting body punches, consider yourself gut checked and down for the count!

  10. Just an ordinary inventor(TM) wrote:” If it came to it, I supposed you would litigate against an infringer of your patent pro se.”

    Dear Just an ordinary inventor(TM):

    A patent with a business built around it, is more valuable that simply having an issued patent. I am not a litigator, I am an inventor and business person. I have repeatedly stated in this blog that if challenged in a court of law I would hire the best patent litigator money could buy. But I would also get a discount for the time and money I would have to spend to teach my invention to said litigator.

    You get issued patents like diploma’s . And you pay patent attorneys tons of money to read, write, and think for you. And as a result you never learn to think for yourself. Then you wonder why you spend years and millions, only to lose in court.

    The day you put the time and effort in learning how to write and prosecute your own patent applications is the day you begin to move from being just an ordinary inventor(TM) to an extraordinary inventor.

  11. “Actual Inventor”–

    If you don’t have the equivalent of a legal education and specific patent training, I can only believe that you reached your conclusion through studied ignorance.

    I too was an “actual inventor” before I ever went to law school.

    The single biggest reason that I went to law school was because I realized, when considering how to protect my inventions, that I had nowhere near the understanding required to proceed with any reasonable possibility of success.

    I would have gotten ripped to shreds, as you likely will. Remember, the filing of a patent application is the first step in a (hopefully) long series of events, each of which is predicated upon that first step.

    I am finally getting around to filing my own applications, and am I ever glad I waited until I had finished law school and practiced for several years. My particular process involves patent applications, co-operative research and development agreement with a public university, sponsored research, non-disclosure and confidentiality agreements, state law, national model codes, third-party NIST-licensed code compliance review, PCT filings, and MORE.

    ALL THESE THINGS ARE TIED TOGETHER, INCLUDING THE TIMING AND SPECIFIC CONTENT OF THE PATENT APPLICATION.

    Although your process may not be so involved, the right patent attorneys+other attorneys operating under the right business direction can definitely bring value to the exercise.

    I am not trying to sell you my services, or the services of anyone for that matter. In fact, in your particular situation, you may feel it impossible to find “the right patent attorneys+other attorneys” at this time. My point is that there may be good solutions other than going it alone–wait a while, build capital, build branding/other IP, get some knowledge yourself, partner with somebody, go to law school, the list goes on and on.

    From my perspective years ago, going it alone was the least worthwhile of all the available options.

    Knowing what I know now, it is the least worthwhile all the more so.

    My 2 cents.

  12. Dear Actual Inventor,

    If it came to it, I supposed you would litigate against an infringer of your patent pro se.

  13. Steve M wrote: “I, too am an actual inventor, and I’ve got to say that GP and other great professionals are correct. That is; very, very few of us pro ses can do a good job when it comes to writing worthwhile claims (or drawing a worthwhile spec or handling prosecution, for that matter).”

    Okay, this is a joke post right? No one can seriously be this much of a shameless shill or obvious sock puppet. But just in case you are serious, please speak for yourself.

  14. Mr. fish bones wrote:

    “Mr. Actual Inventor: If you intent is to lose, then, I agree, draft and prosecute the application yourself.”

    Is this Patent Lawyer Logic? Only problem with that logic is Mr. JAOI did the exact opposite, and Mr. JAOI lost!

  15. “Every think about how much money you paid to have those claims drafted and prosecuted by the pros only to lose, and then think, heck I could have done this myself!”

    Mr. Actual Inventor: If you intent is to lose, then, I agree, draft and prosecute the application yourself.

  16. Actual Inventor…why the uncalled for bombast?

    I, too am an actual inventor, and I’ve got to say that GP and other great professionals are correct.

    That is; very, very few of us pro ses can do a good job when it comes to writing worthwhile claims (or drawing a worthwhile spec or handling prosecution, for that matter).

    45 minutes to learn how to write them? Ugh. You’ve got to be kidding.

    Heck, even after 100′s of hours of reading books, articles, patents, apps, file wrappers, board and court decisions, and patent blogs, I’m still learning (isn’t that at least one reason that you’re [and all of us, for that matter] here?).

    As we see here on PatO, even the professionals regularly disagree on how to write them.

    I’ve said it before and I’ll say it again: If I had it to do over again; given the time I’ve spent + what it’s cost me in actual, real “lost” work time (250k+ over these past 8+ years; for “just” two inventions…and I’m not done w/them yet); I’d likely hire a great professional instead.

    As the wise clients who hire them know and appreciate only too well, top patent & IP pros are worth their weight in gold.

  17. The Great Jules WInnfield wrote: “You asked for rediculous evidence and a rediculous guarantee. ask 100 examiners who writes better claims, pro se or attorney. ”

    Are these the same examiners that are so vehemently criticized and on this blog for not being as smart as Patent Attorneys, ala the notorious 6?

    Well, if the examiners are to be your judge you have surely loss the debate. For I have never met a Patent Attorney that could write claims and get them past any Patent Examiner without an objection or flat out rejection.

    Most surely, if your skill is as great you boast it to be, your written claims, providing there is no prior art, would sail past the examiners with their stamp of approval in recognition of your superior draftsmanship and patent intellect.

    :: The Once Great Jules WInnfield Sliced, Diced and Put in a Can ::

  18. Too bad this isn’t a case, it’s an argument on a blog. You asked for rediculous evidence and a rediculous guarantee.

    Here’s your survey: ask 100 examiners who writes better claims, pro se or attorney. Also ask patent practitioners which claims hold up and win more cases in court, pro se or attorney-written claims. Everyone knows what the answer will be. You’ll have to conduct the survey yourself, if there isn’t already one. As for your guarantee, I’m afraid you’re SOL.

  19. The Pope of Patents Wrote: “You didn’t argue “can be shown.” You argued, “has not been shown.”

    Oh God…having been thoroughly routed and without a leg to stand on, you mutter into semantic piecemeal, wordsmithing and attempts at circular arguing.

    Well Mr. Pope, I don’t know what type of patent writer and claims drafter you really are. But you are certainly no debater.

    You have failed to even put together a cogent argument for yourself and your point remains unproven.

    CASE CLOSED

  20. Eh Nann wrote: “I’m curious how the “claims first” crowd approaches the drafting of a provisional patent application. ”

    Well, as an “Actual Inventor” I have already stated I write my spec first. In regards to the provisional, well the provisional should be written the same as the regular including the claims. So all you have to do when it comes to drafting the regular is just switch dates and titles.

    Actual Inventors like to use provisionals to save money and delay prosecution. I am not sure what Patent Attorneys use them for, although I am sure it has something to do with making money.

  21. I’m curious how the “claims first” crowd approaches the drafting of a provisional patent application. Do you draft claims anyway, even though they won’t be filed? Do you draft and file claims? Or do you draft the spec without any claims-drafting step? If the latter, how much harder do you find it than your default approach?

  22. “As far as whether to write the claims first, I’ve already talked about the fact that I tend to prepare the figures, then claims, then spec. And, of course, figures get added and revised during the subsequent steps, and claims get added and revised too. But initially preparing the figures is how I brainstorm the claims. It just works for me. And I think it is more efficient than sitting around thinking about what to claim for 10 hours before setting pen to page, which is what I know a lot of patent attorneys do. I just do my thinking on paper, visually.”

    Interesting response, Broje. I guess I’m not a visual thinker, so that doesn’t work for me.

    I like to make an outline on paper of what I want the claims to cover, then move on to actually drafting the claims. The figures come next, and then the spec. As I’m drafting the claims, I’m making notes of things I want to say about them in the spec, alternative descriptive language I want to include, etc.

    I tend to write lengthy specs, even for relatively simple inventions, and I build in many fallback positions, alternative phrasing for claim language, etc. During prosecution, I never have the issues amending claims of an application I drafted that I have when I have cases transferred to me by some others who use the draft the claims, toss them into the spec with reference numerals and be done with it approach.

  23. “”"”"A brain surgeon can demonstrate objectively that they can perform surgery better than the patient.”"”"

    But they haven’t. You didn’t argue “can be shown.” You argued, “has not been shown.”

    I simply used what you suggested as a rule. If you don’t like your rule, then change it.

    I have zero doubt that it “can be shown” that practitioner-prepared applications have fared validity challenges much better than pro-se applications.

    “”"”Its proven in their record of surgery and the success rate. “”"”

    Any patent practitioner can show you the same.

    “”"”Something you don’t have as a patent writer and claims drafter against Actual Inventors.”"”"

    Wait. You now want to go back to your original rule? Brain surgeons also don’t have this against “actual inventors” or “actual patients” either.

    So which is it? “CAN be shown.” OR “HAVE shown.”

    “”"”The fact is no one performs brain surgery on themselves. In fact, I am pretty sure its illegal to try.”"”"

    Why would it be illegal to try?

  24. Just an ordinary inventor(TM) wrote: “Actual Inventor myass” told you so – that “Actual Inventor” is phony.

    ::shakes head::

    Up until this I actually had respect for your posts. Wait… you are the inventor that claims to have lost that famous patent case right?

    Every think about how much money you paid to have those claims drafted and prosecuted by the pros only to lose, and then think, heck I could have done this myself!

    I mean like, how much worse could you have done?

  25. Mr. Fish bones wrote: You get what you pay for.

    But what you get is not always worth what you pay.

  26. “So your belief is that, without an “objective study” it is impossible to understand why a guy like me who has been doing this many years, written thousands of claims, read hundreds of cases, went to law school, and prosecuted hundreds of applications can do a better job than most inventors, who, if prodigious, might only draft a few dozen claim sets their entire lives.”

    Mr Pope:

    The fact is you are not a subject matter expert ( SME) in all thousands of inventions. And because you are not an SME, you could NEVER be as skilled as the “Actual Inventor” that can read, write and knows the rules and format the PTO requires for claim drafting.

    Face it. What you claim to do is not that complex. There is no depth to it. Thats right in about 45 minutes an “Actual Inventor” will have the skills and tools needed to write claims. But in 45 minutes you will not have the expertise in the invention that the “Actual inventor” has.

    You make the pressumption that the expertise required for brain surgery is analogous to writing patent applications and claims. When you have no facts whatsoever to back that up.

    A brain surgeon can demostrate objectively that they can perform surgery better than the patient. Its proven in their record of surgery and the success rate. Something you don’t have as a patent writer and claims drafter against Actual Inventors. The fact is no one performs brain surgery on themselves. In fact, I am pretty sure its illegal to try. Surely attempting to do so will be cause for being committed to a mental institution.

    But “Actual Inventors” do write, prosecute and file their own patent applications, including claims. Its legal, it’s encouraged, and while you may know how to do it , you have failed to offer any proof you can do it better than “Actual Inventors.”

    You have no comparative record against Actual Inventors.

    You have no objective studies to back your claims.

    You have no actual examples that can be extrapolated to a general population.

    You have even failed to produce a logical analogy.

    Fact is, you have nothing, Mr. Pope but your own boastful ego.

  27. “there also is no objective study that crap stinks”

    Carnivore fecal chemicals suppress feeding by Alpine goats (Capra hircus)

    Journal Journal of Chemical Ecology
    Publisher Springer Netherlands
    ISSN 0098-0331 (Print) 1573-1561 (Online)
    Issue Volume 19, Number 12 / December, 1993
    DOI 10.1007/BF00980594
    Pages 2947-2952

    One of many.

  28. Thanks JAOI.

    Actual Inventor wrote:

    “”"”. . . But what you fail to address Mr. Pope, is the simple fact that you can’t provide any objective studies or stats that demonstrate claims written by Patent Attorneys or agents, are any more effective than claims written by “Actual Inventors”. And until you do all your huffing and puffing is nothing more than smoky conjecture.”"”"

    So your belief is that, without a an “objective study” it is impossible to understand why a guy like me who has been doing this many years, written thousands of claims, read hundreds of cases, went to law school, and prosecuted hundreds of applications can do a better job than most inventors, who, if prodigious, might only draft a few dozen claim sets their entire lives.

    That’s your belief?

    So let’s extend that.

    There’s no objective evidence that says that inventors performing brain surgery do better than actual brain surgeons.

    So, according to your syllogism, that means that we can’t all get behind the statement, “brain surgeons will almost always do a better job of brain surgery than will inventors.”

    That’s your point, right? That, if the other person can’t show “an objective study,” then it’s simply huffing and puffing, right?

    If that’s exemplary of your typical reasoning, you’re in deep crap.

    1. Because there also is no objective study that crap stinks, but most people get that.
    and,
    2. Has it occurred to you that there is no objective study for the same reason that nobody has done an objective study on whether getting shot in the leg hurts? That is, because only the fringiest of the fringe elements have any doubt about what the study would show?

    DOH!

    “”"”"Oh, and last I checked, no one needs a so called “union card” reg number, or anything at all to write, file, and prosecute their own patent application and claims.”"”"
    You’re right! And they don’t need one either for performing brain surgery on themselves.

    “”"”And unless you are on the bench or in a court room trial don’t pretend you are really practicing law.”"”"
    Don’t be so limited. You’re correct that prosecution requires only a limited understanding of patent law. But surely those who run litigations all the way through to settlement are practicing law, no? I mean, the Perry Mason thing is really not practicing law – that’s just attempting to convince 11 people who couldn’t get out of jury duty to see the facts your way.

    “”"”At best what you are doing is writing a paper for someone. Something any average college english major could do, just not as well as the “Actual Inventor”.”"”"

    Like I said, to the extent you are influencing any inventors out there, you are hurting them.

    Not sure why you have such bad pen1s envy . . .

    With regard to English majors – I haven’t met one yet who could change his own oil, so I’m doubting drafting a 20 page document on the, for example, stereochemical variations of a particular compound would not be, shall we say, apropos?

    Why so angry?

  29. ” If an “Actual Inventor” can read and write, an “Actual Inventor” can file, and prosecute their own patent application better than anyone else on the planet.”

    You get what you pay for.

  30. GP wrote: “As I said, properly trained, anybody can write decent claims.
    But few inventors are properly trained. How many inventors understand….”

    Any inventor can pick up a book from the library and understand the basic language and terminology about patent claims in about 30 minutes!

    Any inventor can go to the PTO web site and read patent claims of inventions in their field and get familiar with the format in about 15 minutes.

    And any inventor can hire a Patent Attorney to write the application and claims if thats what they want.

    But stop all this unsubstantiated hype about “Actual Inventors” needing attorneys to write applications and claims because its such complex work and inventors not having the skills blah blah blah. Its not brain surgery, its not even poetry. If an “Actual Inventor” can read and write, an “Actual Inventor” can file, and prosecute their own patent application better than anyone else on the planet.

  31. Dear Mr. Pope:

    “Actual Inventor myass” told you so – that “Actual Inventor” is phony.

    BTW, I very much appreciated your elaborations –
    Exactly why I appreciate great patent practitioners,
    PTO prosecutors and court litigators.

    It is easy for me to tell that you are right up there with the great PTO prosecutors.

  32. GP wrote, “I haven’t met very many people in life who learn things more rapidly than do I. Particularly when it comes to matters of language manipulation/comprehension.”

    Okay, okay your point is made.. You see yourself as the Pope of Patents and believe you are smarter, and richer than every registered patent attorney, agent and inventor out there. Maybe you are. I don’t know and don’t care. But what you fail to address Mr. Pope, is the simple fact that you can’t provide any objective studies or stats that demonstrate claims written by Patent Attorneys or agents, are any more effective than claims written by “Actual Inventors”. And until you do all your huffing and puffing is nothing more than smoky conjecture.

    Oh, and last I checked, no one needs a so called “union card” reg number, or anything at all to write, file, and prosecute their own patent application and claims. And unless you are on the bench or in a court room trial don’t pretend you are really practicing law. At best what you are doing is writing a paper for someone. Something any average college english major could do, just not as well as the “Actual Inventor”.

  33. Now, just to be clear, I think it’s very difficult to find competent patent practitioners.

    By the way, I use the word “practitioner” to mean registered attorneys and agents. It’s a sign of respect for agents.

    In any group of 10 practitioners, I’d say you’ve got 2 excellent, 3 competent, 3 borderline, and 2 floppers.

    Furthermore, the excellent ones tend to be really busy. Which means that most people trying to find a competent practitioner are going to have to work to find one.

    But I want to say that I do understand your point.

    You see patent law as an inside game. It is. You need a union card (Reg Number) to play the game. You don’t have one, and you don’t want to pay somebody who does.

    Believe me, I get it. I paid more in taxes this year than 99% of Americans will earn in their best earning year of their life.

    But I’ll still wire a new light in the garage myself before I call an electrician, because I can’t stand paying out the nose for something I can do myself.

  34. Look, “actual inventor,” you’re giving bad advice, and you’re hurting people as you do it.

    As I said, properly trained, anybody can write decent claims.

    But few inventors are properly trained.

    How many inventors understand preamble differences?

    How many inventors understand the litigation/prosecution reasons for adding dependent claims?

    How many inventors understand claim differentiation?

    How many know and understand the law with regard to claiming numerical ranges?

    How many understand that a species is patentable, potentially, over a genus?

    Or that a genus is not patentable over a species?

    How many understand claim rejoinder after restriction?

    Or the affect of using various previously adjudicated words, such as “about,” in the claims?

    How many understand that use of art terms, sans spec contradiction, usually bind the claims to the understood definition?

    How many understand that use of non-art terms is open to interpretation unless explicitly defined?

    It’s really quite simple, but I’m going to have to be a bit immodest to make my point.

    I haven’t met very many people in life who learn things more rapidly than do I. Particularly when it comes to matters of language manipulation/comprehension.

    I did nothing but prosecute applications for the 1st year of my career. Maybe averaged 1.5 apps a week. By extension, I wrote, maybe, 75 claim sets. Plus a dozen or two amended claim sets in Office Action responses.

    When I go back and look at those claims, I see sets that are passable. That would not stand out among the others filed in and around the same time.

    But I also see claiming deficiencies that are bright as day to me now.

    Writing claims is like playing the guitar; anybody can quickly pick up how to play 3 or 4 chords, and then bang out “Wish You Were Here” or “Smoke on the Water” and sound decent.

    But to really play well – you need a lot of time and practice.

    Your advice to inventors is flat out bad advice.

    END PART I (what’s up with posts not posting?}

  35. “But is there any eternal truth greater than that every woman who is past her physical prime likes to “be perceived as younger in appearance” than she really is?

    No.”

    Again, uh, no. But thanks for making my point for me.

  36. Fish bones writes: “Are you referring to a claim which is so narrow that it can be easily designed around by competitors and is essentially commercially worthless?”

    Okay lets make that part of the Guarantee, so where is the Patent Attorney/Practioner that can guarantee the claims they write will be so strong that the claims will…..

    A, Not be objected to by the PTO, or

    B, Rejected by the PTO, and

    C, Virtually impossible to challenge in a court of Law, and,

    d, Impossible to design around by competitors

    Until we see such a guarantee then all talk from ” patent attorneys and so called practitioners ” that imply that claims written by “Actual Inventors” are somehow not as effective, needs to cease immediately.

  37. Actual Inventor writes: “I for one am still waiting for that Patent Attorney/Practitioner to present a guarantee that if I hire them to write my claims , the claims will be so strong that they will not be rejected by or objected to by the PTO, and be virtually impossible to challenge in a court of law.”

    Are you referring to a claim which is so narrow that it can be easily designed around by competitors and is essentially commercially worthless?

  38. Pope: The “Actual Inventor” must be pulling our chains. No real inventor could be that clueless.

  39. “3rd – The “actual inventor” is advising other inventors to write their own claims. I’ve worked with, maybe, 200 to 300 inventors in my career. The number of them who could write competent claims – zero.”

    Come now Mr. Pope. Let’s us not pretend that because you are a “practitioner” whatever that means, that you have any more skill or certainty when writing patent claims than “Actual Inventors”. Because the simple fact is no Patent Attorney, or so called “practitioner” can present any objective study, or stats that demonstrate their claims are any better than those written by “Actual Inventors.”

    I for one am still waiting for that Patent Attorney/Practitioner to present a guarantee that if I hire them to write my claims , the claims will be so strong that they will not be rejected by or objected to by the PTO, and be virtually impossible to challenge in a court of law.

  40. “”"”It is a fallacy that women like to be treated as younger than they are.”"”"

    What? You’re just playing with semantics a bit here.

    We all understand that nobody likes to be treated “as younger” than they are, because that implies you’re being treated as if you are immature.

    But is there any eternal truth greater than that every woman who is past her physical prime likes to “be perceived as younger in appearance” than she really is?

    No.

  41. 6 says “Young ladies is formal, didn’t you hear?”

    Uh, no. It is a fallacy that women like to be treated as younger than they are. “Young ladies” would almost always be heard as condescending, particularly if you use it to refer to women who are older than you (which probably includes almost everyone posting on this blog – it most certainly includes me). Consider how you would feel being addressed as “young man” in a “formal” situation – would that make you feel empowered or diminished?

  42. “”"”You guys have got to understand, when I come here I’m trying to strike a balance between normal speech and overly formalistic requirements of the professional blogging atmosphere making me sound too square. “”"”

    You don’t sound too square. You sound like a very typical Examiner, who has paycheck envy (I’ll make about 50k this month. How about you?}, who is mad at the world, and who doesn’t either understand basic patent theory or who is so overwrought with his anger for attorneys he refuses to let on that he does.

    Nothing personal, but square’s got nothing to do with it.

  43. “That’s just plain silly. What you suggest would completely eliminate an inventor/patentee’s right (yes right) to choose to license her (or his) invention — that would be the ‘property’ part of ‘intellectual property’ — property law extends a limited bundle of rights to the inventor/patentee (it goes without saying that the right to practice your invention is not included in this limited bundle).
    As a landowner, you can choose to exclude everyone from your backyard BBQ or invite a few friends over –but certainly there’s nothing that requires you to open your backyard to everyone.”

    Hmm, where do you get this “right to license” from in the statute?

    Your property rights to your backyard aren’t limited to a right to excludes others.

    “Eliminating the ability to license would also eliminate one way that an inventor can profit from her (or his) invention…which is the whole idea behind the Constitution’s grant of a monopoly to the inventor “for a limited time.” The founding fathers will let you make all the hay you can but only for a short time.”

    So… wut? Just because it is eliminated doesn’t mean that it shouldn’t be.

    ‘One last thing No. 6…there’s a lot you don’t know about women (or “young ladies” as you so creepily put it). A woman will have already decided her level of interest in you before you even sit down (or saunter over) to deliver one of your (copyrighted?) pick up lines. Take it from me, if she’s determined you’re worth her time, the BEST you can do is not screw it up. ”

    Initial level of interest is of course a great thing, but it isn’t the be all end all. You’re apparently missing the mark by a mile if you think all that you just said even resembles reality. As a starting point in your reformation you should consult with Marius Panzarelli or something like that, you can check him out online. I think I saw him first online when I was 18 and he’ll rarely lead you astray. Things that you may not believe today are true (like me telling you that you just spouted bs) will be revealed to you in time as having been spot on. And seriously, pickup lines? The very best one: Hi, I’m 6, how’s it going? < you will never in a million years beat that in a randomized crowd. You could do better at some specific place, maybe like a ski resort etc.

    Young ladies is formal, didn’t you hear? This is a professional blog!!!11! We can call them the more traditional s(@#’s or cu(du*@#$)(‘s if you prefer. It’s just us guys here, there are not womenz on the interwebz.

    You guys have got to understand, when I come here I’m trying to strike a balance between normal speech and overly formalistic requirements of the professional blogging atmosphere making me sound too square.

  44. 1st – I had a long post fail to post. I assume a glitch in the matrix of Patently-O.

    2nd – Maybe I wasn’t censored. I’ll add a post after this to clarify.

    3rd – The “actual inventor” is advising other inventors to write their own claims. I’ve worked with, maybe, 200 to 300 inventors in my career. The number of them who could write competent claims – zero. Who knows. With a bunch of training, I’m sure they could do as well as many practitioners.

    4th – Somebody wrote -

    “”"”Drafting the claims first is a throwback technique. Its like drafting a broad base claim with successively narrow claims depending from each other. Sure it will produce a workable application rather quickly. But these days, that kind of pedantic approach isn’t going to work if your claims are off a little or are taught in the art.”"”"

    Pedantic? Is that the word you were going for?

    A “workable” approach? What technique do you espouse?

    “”"”I used to think that Pope was worthy of a little respect even if he was censored, like me. But after hearing the garbage on first to file, and now this, I am having my doubts.”"”"

    I am worthy of no respect. You surely have read that I think Patent Law has become a complete joke, and all but a few practitioners who I have met are far too proud of what they do to acknowledge that . . . .

    As for first to file – what can be said?

    If you create something without copying it from someone else, then you invented it, even if you weren’t the first to invent it.

    Guy in China 4,000 years ago invents a bow.
    Guy in Mezo America 3999 years ago invents a bow.

    So Mezo guy is not an inventor?

    When they wrote the Constitution, they could have easily said “first inventor.” They did not.

    102(g) says, “. . . another inventor involved therein establishes . . . that before such person’s invention thereof the invention was made by such other inventor.”

    The section of the statute that is responsible for the “first to invent” status quo, itself makes clear that, regardless of time of invention, all who independently invent are “inventors.”

    What it comes down to is really simple.

    The constitution is silent about 1st inventor. There is no legislative history to support it. The best those against first-to-file can say is that, “i don’t like it.”

    Tough titties.

    I worked on one interference where we spent over a million dollars (and we were the junior party!!).

    What a waste of time, money, and resources.

  45. As an “Actual Inventor” I always write my specification first and in as much detail as possible. With as many alternatives and different setting for making and using the invention as possible. Then writing broad claims, that cover everything in the spec is quick and easy.

    I suspect the reason why many attorneys here write claims first is because they lack any real expertise and in depth knowledge of the invention. Which is why I would advise most inventors to write their own patent apps including the claims but thats another issue.

    As far as the article is concerned it seems to me that as long as there is a contractual relationship between the user/customer and the manufacture and/or provider of the product then there is joint direct infringment.

    For example, doesn’t an ISP control or direct the actions of its users with a TOS agreement? Surely such an agreement opens up the argument for joint direct infringement.

    So all an “Actual Inventor” really has to do is draft claims from a frame of reference that takes into account the possible contractual relationships with the provider/maker and the customer/enduser of the product or service. This way the inventor keeps a wide net for catching infringers.

  46. More eloquently than I ever could, Banned just made my point, that the skills of drafting for the USA, and “pedantic” drafting for the ROW, are incompatible and mutually exclusive. May I ask, up to what extent do readers agree with him?

  47. Drafting the claims first is a throwback technique. Its like drafting a broad base claim with successively narrow claims depending from each other. Sure it will produce a workable application rather quickly. But these days, that kind of pedantic approach isn’t going to work if your claims are off a little or are taught in the art.

    I used to think that Pope was worthy of a little respect even if he was censored, like me. But after hearing the garbage on first to file, and now this, I am having my doubts.

  48. “What I am suggesting is that if one has the right to exclude others from making/selling, then one must necessary exclude “others” aka everyone, or choose not to exclude “others” aka everyone.”

    That’s just plain silly. What you suggest would completely eliminate an inventor/patentee’s right (yes right) to choose to license her (or his) invention — that would be the ‘property’ part of ‘intellectual property’ — property law extends a limited bundle of rights to the inventor/patentee (it goes without saying that the right to practice your invention is not included in this limited bundle).
    As a landowner, you can choose to exclude everyone from your backyard BBQ or invite a few friends over –but certainly there’s nothing that requires you to open your backyard to everyone.

    Eliminating the ability to license would also eliminate one way that an inventor can profit from her (or his) invention…which is the whole idea behind the Constitution’s grant of a monopoly to the inventor “for a limited time.” The founding fathers will let you make all the hay you can but only for a short time.

    One last thing No. 6…there’s a lot you don’t know about women (or “young ladies” as you so creepily put it). A woman will have already decided her level of interest in you before you even sit down (or saunter over) to deliver one of your (copyrighted?) pick up lines. Take it from me, if she’s determined you’re worth her time, the BEST you can do is not screw it up.

  49. “Claims therefore should always be drafted to capture the activities of a) individual—as opposed to co-acting—parties who are b) direct infringers, if there is any way to do it (which there almost always is).”

    This sums up the reason why I firmly believe that patent attorneys who focus primarily on prosecution should begin their careers carrying a roughly equal prosecution/litigation workload. It turns my stomach to see a set of claims drafted so inartfully that it looks like the prosecuting attorney was deliberately trying to prevent the client from ever being able to enforce them. There is some utility to thinking like a litigator when you are drafting claims.

  50. For those uninitiated amongst you here is a helpful resource:

    link to mindprod.com

    There are other books on the topic, but those are some highlights.

    link to amazon.com

    If you are a lawyer and have not been fully briefed on these techniques you’re 35$ away from saving your clients thousands.

    And broje, the next time your junior “parrots” you, pay attention to if he’s really copying you word for word or if he’s restating the same “jist” you said but in a more persuasive way. You are using only one of those methods away from getting those claims allowed without the help of your persuasive assistant.

    Listen to the Kubin argument for example, watch as she leads the charge with straightforward application of nonfacts masquerading as facts. I see this everyday in my work. That is not persuasive. Look then to the experienced persuader(er?) Kevin where he brings up (but forgets to lead with) the possibility that things seem on their face to be as the office maintains, thus establishing that he is a reasoned mind, and then suggesting that he has looked further into the matter and that he has found something worth taking note of that leads to a different conclusion. Then, (after much prodding by myself) eventually he lays the foundation for some arguments he would like to make. His arguments are then at least supported, even if they have big holes in them ready for me to knock them down with. At this point in our discussion I can’t even understand enough of the bio behind what he’s saying to respond in full (yet anyway, I’ll work on it this weekend).

    A good example was today. You’ll hear about examiners having such a hard time allowing things, but for instance just this morning I had a case I wanted to allow. I came in, showed the boss what we were making in the claim, showed him the prior art, showed him the attempts to match some items and how it fails because of various things. No sooner had I finished talking about these things he said, well it sounds like you don’t believe your previous rejection will work any longer, looks good to go. And it was. And I said yes that’s what I’m feeling about it, and shortly thereafter walked out of the room.

    Now if you’ll excuse me, I really do have to get ready to go out tonight. I’m sure there are some young ladies who will be out looking to be persuaded ;)

  51. Alan, if you hadn’t put all that together from his various posts by now you’ve not been paying much attention.

  52. JAOI,

    Question – did you just “out” yourself with this:

    “Here’s how any/every independent inventor can be aggrieved by eBay as I was:

    I sued for infringement. The basted infringer did not make a reasonable offer to settle. Instead, he ate up millions of dollars of litigation expense by going to trial (at which I lost because of the false perceptions created by Cisco and its cartel known as The Coalition for Patent Fairness).
    Had the basted infringer been at risk of an injunction, he’d likely have made a reasonable settlement offer.”

  53. “As to the derail regarding the right to exclude others, surely, 6, you do not propose that the inventor must stand at every position in the assempbly line and personally make, sell, and use every instance of the claimed product herself. ”

    Hopefully it isn’t a “herself” in question (quick name 2 famoour female inventors without using google!), but either way no that’s not what I’m saying. And I’m not trying to derail us, this is just a response to JAOI, everyone else can feel free to stay OT. What I am suggesting is that if one has the right to exclude others from making/selling, then one must necessary exclude “others” aka everyone, or choose not to exclude “others” aka everyone.

    ” Under your logic, she could never sell the product to a customer, because the customer would then be “using” the claimed product and infringing the patent.”

    That’s where patents being out of shape comes into play though, exhaustion n all that.

    ” Nor could the inventor hire others to make the product or sell the product. ”

    Not if he chooses not to exclude others. If he chooses to exclude others though you’d be right.

    Look the only reason I’m putting this forward is because JAOI is taking a uber strick interpretation. Fine, if he wants to take that interpretation then let’s go the whole way with it and not half arse the strictness.

    “The right to exclude others must be interpreted as the right to selectively exclude others, or it is worthless.”

    How so? If I come up with the way to make a faster than light ship (new, non-obvious and AWESOME) and patent it then nobody else in america can make them except me. I’ll have time to make, mmm maybe 1 in my 20 yrs and it’ll go for bazillions. Protip: what you meant to say was it makes many trivial doo dad patents that are routinely issued worthless, and you’re 100% right, so what? Most patents are worthless already. Thus, this doesn’t make us have to interpret the right in any specific way.

    ” I’ve lost count of the number of times a male USPTO Examiner suddenly found my arguments and amendments convincing once parroted by one of my junior male colleagues. ”

    Can we honestly help it if they were persuasive where you were not? Look no further than the extended discussion between myself and Kev Noonan over on patent docs on the In re Kubin decision to see him bring the persuasion. Listen to the oral arguments. Read Kubin’s brief written by the little Rudolph lady herself I believe, then read Kev’s arguments. Can I help that he would have done a much better job on the case?

    To be sure, I’m not saying that a girl cannot draft claims, or cannot argue or cannot blah blah blah. But what I will say is that I personally have found a disturbing trend between what has and has not been a forcefully, well advocated case presented before me.

    None the less it is funny that you get your juniors to parrot your arguments to make them persuasive. I guess it is in the voice. There are some things about arguing that just aren’t based on the merits. You as a lawyer should know this very well.

    “especially the ones from cultures even more patriarchical than our own.”

    Don’t worry, as soon as the recession sits in for the long haul we’ll get things put back straight in this country in not too long :) You know, people say the unemployment is way up. I say we have over employment by about 40%.

  54. “Censored GP” nailed it. Get the claims right. The spec and drawings will follow.

    Sure, you’ll want to flesh out further unclaimed details to give you fall back positions. Sure, you may go back and add to and revise the claims. Typically, however, you can save hours of detailed description drafting time for every hour spent on getting the claims right at the start.

  55. “Girlz? Drafting claims before MY office?”

    6, I’ve just realized that you must be female. Only in that ironic light does your comment become humorous, and I know you have a sense of humor.

    But for us ladies practicing before the Office, the sexism there is no joke. I’ve lost count of the number of times a male USPTO Examiner suddenly found my arguments and amendments convincing once parroted by one of my junior male colleagues. I am contemplating changing my name to something more andogynous and getting a pitch shifter for use on the phone. Maybe then I’ll have more success “developing rapport” with male USPTO Examiners, especially the ones from cultures even more patriarchical than our own.

  56. On the original topic, wow, that is just so basic that we have a euphimism for it: “Don’t claim the battery.” But even if you do wind up trying to assert a claim on a calculator that includes a claim limitation to a battery, and the person you want to sue that makes the calculator does not include the battery, you can still sue a representative customer as a direct infringer, implead the calculator manufacturor as the contibutory infringer, and collect the award entirely from the manufacturer that induced the infringement. In the case where you claim making and receiving the product, that’s just a huge bungle. I would expect every first year patent attorney to know better.

    As to the derail regarding the right to exclude others, surely, 6, you do not propose that the inventor must stand at every position in the assempbly line and personally make, sell, and use every instance of the claimed product herself. Under your logic, she could never sell the product to a customer, because the customer would then be “using” the claimed product and infringing the patent. Nor could the inventor hire others to make the product or sell the product. The right to exclude others must be interpreted as the right to selectively exclude others, or it is worthless. If it were a claim limitation, surely you would read it more broadly, as it does not recite the right to non-selectively exclude others. Can you be a little less ridiculous, please?

    As far as whether to write the claims first, I’ve already talked about the fact that I tend to prepare the figures, then claims, then spec. And, of course, figures get added and revised during the subsequent steps, and claims get added and revised too. But initially preparing the figures is how I brainstorm the claims. It just works for me. And I think it is more efficient than sitting around thinking about what to claim for 10 hours before setting pen to page, which is what I know a lot of patent attorneys do. I just do my thinking on paper, visually.

    Once the claims are drafted, it can be tempting to just drop them into the spec and cobble them into paragraphs with reference numerals added. But I find it helps to sort of “start over,” as doing so can lead to many alternative ways of describing the elements in the drawings, and lead to lots of new language that can be relied on in later amending the claims.

  57. I would welcome an honest discussion of the reasons that utterly crappy computer-implemented claims are still being issued regularly while narrow species claims in biotechnology are being tanked by the PTO using “creative” anticipation arguments.

    I really don’t mind the fact that the latter is happening. But the inconsistency really bugs.

    Theory 1 — the Examiners in the computer and software fields tend to be less capable of doing their job than those in the biotech/chem fields — is still the leading explanation. But I don’t think it explains everything.

    I think there’s something more rotten going on that has everything to do with $$$$$.

  58. “Since it looks like two trends of the courts are to ever-more read the spec into the claims”

    That’s false. The trend is certainly in the other direction, post-Phillips.

  59. Sounds like bad advice:

    “…make sure the inventor avers, in the Oath or Declaration, that the claims cover everything the inventor wants covered.”

    why would anyone knowingly give up claim change flexibility at the onset of prosecution?

  60. “The basted infringer did not make a reasonable offer to settle.”

    Subjective opinion. I’m sure his subjective opinion was that he did make a reasonable offer. Perhaps the situation called for no offer at all. I still cannot see any aggrievement here. Now perhaps if you were losing some sales…

    “After being granted the exclusive Right to his (their) invention, the inventor(s) can do whatever they farking want with his (their) property.”

    But JAOI, surely you realize it is a right only to exclude others. Either you exclude others or you do not, correct? You cannot exclude some others while not excluding other others can you?

    “I maintain that TSM is the best we have and that KSR is crazy-nuts because it invites and condones subjectivity, which is apparently is what you do anyway even with TSM.
    Stop it – please honor your profession and do your job honestly. Shape up and fly right!, plaheeease.”

    Look JAOI, here’s the problem. 103(a). I have to take a gander at that law everytime I determine obviousness. Court decisions are all secondary to what is on its face a subjective determination. TSM, KSR rationals are all means of reviewing the basis on which the subjective opinion was made imo. You don’t really have an issue with KSR. You have an issue with 103. Why you have an issue with 103 is a broad subject relating mostly to its history but I’m not going to go into detail today as I have an allowance to write up.

    As to welcoming people to the club, you may as well invite my sister, aunt, grandmother, dad, uncle, and other uncle (and I’m sure here soon the rest of my fam will jump on the bandwagon) to the club. My grandma’s latest idea is a grease trap on top of your everday home stove. I’m willing to wager I could 102 that in less than an hour. Or do you have to have an issued patent to really be an inventor? I have a tendency to talk them out of filing anything but a provisional since it is big $ and they wouldn’t develop the idea in any meaningful way.

    In short, you’ll probably need to welcome the whole of humanity as everyone invents something at some point, even if they don’t make a big deal bout it.

    Did you see the man who could have saved you from your Ebay plight decades ago?

    link to philip.greenspun.com

  61. MaxIII said “tool to reject, reject, reject was there all along, it seems, but the PTO could never be arsed to pick it up and use it until KSR put the thought in its head.” Historically, the PTO Board’s holding and reasoning in Ex parte Clapp (1985), if anything, was parroted by the supreme court in KSR. The examining corp was trained on Ex parte Clapp and tried to apply it, but got beat up in some subsequent Fed Cir cases in the late 80′s/early 90′s and backed off the fuzzy standard. Not saying who was right, but that’s what happened.

  62. Since it looks like two trends of the courts are to ever-more read the spec into the claims and to invalidate claim scope extending beyond the spec …

    seems increasingly sensible to draft a thorough spec first and make sure the inventor agrees that “yup, my whole thingawhats is fully described there,” and then to draft claims carefully supported by the spec …

    and then go back and make sure the inventor avers, in the Oath or Declaration, that the claims cover everything the inventor wants covered.

  63. Initial claiming these days is becoming irrelevant because the courts keeps changing what is patentable subject matter. Congress is not much better; their focus is appeasement of a relatively few oligopoly interests rather than what will benefit and protect innovation in the US.

  64. JAOI “I have a knack to liven up panel discussions and make them memorable. Please bear in mind — I sometimes slip with a four letter word”

    Don’t worry. Our tasers will have fresh batteries.

  65. Dear Numeral Six,

    Here’s how any/every independent inventor can be aggrieved by eBay as I was:

    I sued for infringement. The basted infringer did not make a reasonable offer to settle. Instead, he ate up millions of dollars of litigation expense by going to trial (at which I lost because of the false perceptions created by Cisco and its cartel known as The Coalition for Patent Fairness).
    Had the basted infringer been at risk of an injunction, he’d likely have made a reasonable settlement offer.

    Re: “Perhaps he can also explain how it might be that since the constitution only grants the exclusive right, how then can licenses be issued? It does not grant the right to pick and choose who can and who cannot make it. You only have the exclusive right. You either exclude people or you don’t.”

    The exclusive Right to the intellectual property is exclusive to the INVENTOR(S).
    After being granted the exclusive Right to his (their) invention, the inventor(s) can do whatever they farking want with his (their) property.

    Re: “Maybe he can also explain how I was able to, repeatedly, and nearly always, turn TSM into a subjective standard on a whim? It being “objective” is a mere facade to those skilled in its use.”

    Apparently, you practice your trade unethically.
    Do you take any form of Oath to be an Examiner?

    In any case, I never said TSM was perfect. Given the near impossible task of objectively determining obviousness (it is like measuring a cloud), I maintain that TSM is the best we have and that KSR is crazy-nuts because it invites and condones subjectivity, which is apparently is what you do anyway even with TSM.
    Stop it – please honor your profession and do your job honestly. Shape up and fly right!, plaheeease.

  66. Dear Max,

    Re:
    “Fellow Inventors, drafters and prosecutors, we might as well all give up and go home now, eh?”

    I didn’t know you were and inventor. Welcome to the club, kindred Seele.

  67. That, if I may say so, is a rare gem of a contribution from 6, that TSM offers no defence against subjective (which means hindsight) attacks under 103. The tool to reject, reject, reject was there all along, it seems, but the PTO could never be arsed to pick it up and use it until KSR put the thought in its head. Fellow Inventors, drafters and prosecutors, we might as well all give up and go home now, eh?

  68. Meeting Jaoi in person might actually allow him a chance to explain how he was aggrieved by Ebay, because he sure hasn’t managed to on here.

    Perhaps he can also explain how it might be that since the constitution only grants the exclusive right, how then can licenses be issued? It does not grant the right to pick and choose who can and who cannot make it. You only have the exclusive right. You either exclude people or you don’t.

    Maybe he can also explain how I was able to, repeatedly, and nearly always, turn TSM into a subjective standard on a whim? It being “objective” is a mere facade to those skilled in its use.

    Overall, he seems likely to be a very enlightening speaker!

  69. I wonder how Mr. Quinn drafted the POS 2007/0055560? There had to be a first step of smoking something.

  70. Two subjects I would like to discuss in a seminar are the Supreme Court eBay and KSR decisions to explain why:

    (A) eBay is unlawful because it discriminates against one class of inventors by denying the Constitutional requirement to grant “the exclusive Right.”

    (B) The post-KSR “reasonably predictable” standard is Just plain bad law, and our country’s top Justices should know better! It is folly to think that what is reasonable to one Juror, Judge or Examiner will be reasonable to another. How the hello can a District Judge or Appellate Judge rule if there is no objective rule (like TSM) to follow? KSR invites (maybe requires is a better word) a subjective result.

  71. Dear Ron Slusky,

    It would be nice to let your customers know the cost is $1175 before you make them fill out your forms.

    $1175 is too rich for my blood.

    If you want to invite me as a guest inventor and/or speaker, please send Professor Crouch an email so that he can forward it to me. I will appear under my real name; I will require my pseudonym and my pet rabbit’s pseudonym remain anonymous.

    I have a knack to liven up panel discussions and make them memorable. Please bear in mind — I sometimes slip with a four letter word (©¿®)™.

  72. Folks, having read all this, might drafting excellence depend on which technical field you are in. Thus:

    Simple ME: we know what the inventor is describing. The problem is to boil it down to the true unadorned inventive concept

    Sophisticated EE: I don’t even know what prototype the inventor is describing, until I have laboriously written it all down, at great length, in my own words

    Chem/Bio: Grasping the invention is easy. What client pays for is for enough different independent claims to cover all the legal angles, intermediates, reach through claims, dosage forms, and so on.

  73. I generally agree with Censored GP:
    1)Draft the claims;
    2)Polish the claims repeatedly;
    3)Draft the spec.

    But I prefer a slight twist on this method:
    1) Draft the claims;
    2) Take the rough edges off the claims;
    3) Draft the spec;
    4) Polish the claims.

    I find that the exercise of drafting the specification will often generate new thoughts on the claims and I like to give the claims their final polish only after I have prepared the specification.

  74. There are several different strategies for drafting application, and each one has its supporters; pick one that works for you and go with it. As long as you remain willing to go back and change earlier-written portions (whether that’s the specification or the claims) to reflect later-developed understanding, you’ll all arrive at the same place.

    Having said that, I don’t agree with Sandvos – how can rigidly drafting the claims first be more efficient? In order to draft the claims, you have to understand all aspects of the invention. The most efficient way to do that is to draft the specification; once you have the specification, the claims fall right out of it.

    I bounce back and forth between sections as I draft an application. I usually start working the inventor’s hodge-podge disclosure into the detailed description; as I develop and understand an element and how it relates to other elements, I incorporate it into a running claim; and as I come to appreciate some difference with the prior art, I flesh out the background. For me, no portion of the application is complete, i.e., fixed and unchangeable, until all are complete because how I ultimately describe something may change how I initially claimed it, and how I ultimately claim something may change how I initially described it.

  75. With all due respect, there is not even any question–the claims have to be drafted before doing anything else. Among other things, that is the quickest most efficient approach with no wasted motions, otherwise, either the client is paying too much for your work, or you are having to write off wasted time.

    In addition, by writing the claims first, one can avoid unnecessary disclosure of related trade secret material. How many times have you seen a software patent with very narrow and specific claims supported by an unnecessarily extensive and detailed disclosure of all the details of the client’s product?

    For once, I find myself in pretty complete agreement with Mr. Slusky on what should be journeyman level claim draft claiming considerations. But the question in my mind is, if you need to be told these things, are you even capable of executing them?

  76. Re Bilski – I have been around long enough to know that following the patent-writing paradigm du jour can lead to odd results. Remember the days of Texas Digital? We are now reading patents that have a glossary of terms in them that were written in response to that thankfully short-lived but havoc-wreaking opinion.

    An application you draft today might not be examined for 2+ years (even with the PTO plowing its way through the backlog) at which time the patent drafting/examination paradigm might look very different than it does today.

    My preference is to draft the best claims that you can to describe and claim the invention, without unnecessarily putting them into rigidly Bilski-friendly form. If the invention falls easily into the Bilski framework then go ahead and draft the claims accordingly. However, if it doesn’t, draft the claims as you would have done pre-Bilski, but have the backup in your spec (yet another reason not to have a narrowly drafted spec) so that you can amend the claims into Bilski form if necessary.

  77. “Patent Girl and 6 are relative noobs and will see the light 20 years from now.”

    Hardly a noob, sorry to say – just one who has had to learn the hard way the drawbacks of having to work with a narrow spec drafted to support a very specific set of claims.

    Maybe I misspoke – although I do not have a specific claim set drafted when I write the figs and spec, I do have an outline at least of the independent claims, and draft the figs and spec based on the outline, going back and forth between the figs/spec and the claim outline to flesh things out before I write actual claims.

    I also should note that I work in very complex technical areas, so often I have to make sure that I have described the invention properly/completely in the spec before I can even begin to write real claims, since I may not fully understand the technology in the first draft and have to get input from the inventors to describe the invention more/better than I can before I can move on to writing the claims.

  78. Couldn’t agree more, bsn. European “new matter” is indeed a nightmare for US patent attorneys. That’s my point. I think it is a particular nightmare for those US attorneys now writing WO specifications that begin at the top of page 1 with the title, continue immediately thereafter on page 1 with the sub-heading “Brief Description of the Drawings” and then finish with a mix of claims, all of which are “supported” by the description, but all of which are untenably broad or uselessly narrow. There is a gulf between US-style drafting, and that which the “First to File” world uses. I would advocate for US manufacturing, job-creating industry, one drafting style (the one you know) for the US courts, and a different one for the PCT cases you write.

    You work with mechanical things, and you think that makes it easier? I think protecting simple mechanical things is far far harder than simply writing I claim….Molecule X.

    You say you write the description with the claims “in mind”? So, you have composed the claims first then, haven’t you?

  79. Come on, Max, European “new matter” is a nightmare.
    I may be in a minority, but I always start at the beginning and draft from there. The background to the invention sets up a description of the invention, which is followed by detailed explanation of what’s in the figures. (I work with mechanical things, which makes this approach easier). The claims fall out from my invention description (which is drafted with the claims in mind). This forces me to consider the advantage being obtained by each claimed feature, and ensures that my claims (both dependent and independent) are properly supported.

  80. From Europe I should like to see Censored and the Girl comment on the role of dependent claims. The way I see it, you do the dependent claims when you have finished the main claim. They are your intermediate generalisations and fall back positions, if claim 1 ultimately proves untenable.

    But then the specn and drawings really do fall out easily. Indeed, they are there to support the claims.

    If you don’t claim it right, before the end of the Paris year, kiss goodbye to optimal patent protection, everywhere in the world except the USA.

    When will clients begin to see again, that drafting is the highest value work there is? I’ll answer my own question. When the US courts and PTO get as sharp on “written description” and “new mattter in a prosecution amendment” as the rest of the world. There is a good reason for that sharpness, namely, a fair balance between inventor and public, and optimal legal certainty, which is what’s needed for investment in innovation in manufacturing.

  81. You have to write the claims first. Then dump the claims into the spec. Expand on each element or step in the spec by writing the variations that apply to each element or step.

    Censored GP has obviously been around for a while and has learned the hard way. Patent Girl and 6 are relative noobs and will see the light 20 years from now.

  82. “PatentGirl”

    Girlz? Drafting claims before MY office? At least she has a better method than 99% of you guys, n that’s embarrassing.

    “but only after doing the figs and spec do I draft an actual claim set. ”

    Be careful using this method! Doing that you might accidentally claim the invention!

  83. “the application will practically draft itself . . if you always remember that the spec only exists to support the claims.”

    The problem with this approach – at least in my experience – is that the spec then supports ONLY the claims as originally drafted, and provides very little support for any amendments that may be necessary during prosecution. Maybe it depends on the technical area involved, or I’ve just had extremely narrow specifications (drafted by someone else) to try to work with. I usually draft the figures first and then the spec – both being drafted with potential claims in mind – but only after doing the figs and spec do I draft an actual claim set.

  84. “2. Maintain the Integrity of the Invention Setting Boundary”

    Or Lord. Just what is not needed – unnecessary complexity in teaching how to draft claims.

    First rule of teaching – use as few new words as possible.

    I remember when I started. I asked a question about claim drafting and some anal retentive partner handed me Landis and said, “you should read this.”

    I read about 4 pages. Then, after I awoke from the unconsciousness induced by that reading, I returned the book and just started looking at issued patents.

    About a year later I understood the basics.

    Here’s what to tell a noob – -

    A patent is nothing more than the claims.

    Consider the invention. Discuss the invention with the Inventor. From that, nail down what the inventive concept is. If it’s not simple, you’ve missed it. Draft your 1st claim. Come as close to the inventive concept as you can, with little extra material. Read your claim. Reread your claim. Spend time considering how you would get around it if you were the competition. Ask a colleague to poke holes in it. Check for language consistently. Underline any part of the claim that will require explicit defining. Write the definitions. Write your dependent claims and any defs required by dependent claims. Finish your claim set.

    Sleep.

    Review your claim set. Poke holes in it. Where is the language waffly? Where have you left the door open to a design around.

    Critically . . .
    Where have you included limitations that are not needed but that reduce the scope of the claims?

    Sleep on it again.

    Review the claim set.

    If you are happy with it, then draft the spec, with the understanding that the only purpose of the spec is to support the claims and to offer alternative positions to the first set of claims.

    I typically spend 25-50% of my time on the claims.

    Use as few figures as possible. If needed, prep the figures after the claims. Then draft spec.

    If you have a complete and polished claim set, and, optionally, a set of figures,

    the application will practically draft itself . . if you always remember that the spec only exists to support the claims.

    no charge.

  85. Fascinating:

    BMC pages 12 – 13:
    “The concerns over a party avoiding infringement by arms-length cooperation can usually be offset by proper claim drafting. A patentee can usually structure a claim to capture infringement by a single party. See Mark A. Lemley et al., Divided Infringement Claims, 33 AIPLA Q.J. 255, 272-75 (2005). In this case, for example, BMC could have drafted its claims to focus on one entity. The steps of the claim might have featured references to a single party’s supplying or receiving each element of the claimed process.”

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