An Appeal to the New Patent Office Director: Repeal the Single Sentence Rule

Guest Post by Stephen Schott of Volpe & Koenig 

[File Attachment: PDF Version of this Article (135 KB)]

Like all elementary school graduates, I learned that a single sentence should be short. One source suggests that a well-written work should average 20 to 25 word sentences.[1] With that as the guide, sentences averaging 50 words would raise the ire of a 3rd grade teacher. Those averaging 100 words would drive a sane person mad. And a 250 plus word sentence would drive even Proust to distraction.

 

But sentences of such prodigious lengths are commonplace in patent law. The offending sentences are patent claims.[2] These claims are a U.S. patent’s most important feature. It is here that the inventor, or more likely the inventor’s attorney, sets forth the “metes and bounds” that define the invention. The claims serve as property lines: Cross into those lines with your product and you infringe the patent.

 

With such importance placed on claims, you would expect them to be quite readable. You would at least expect them to have been the subject of the “plain English” movement, perhaps best summed up by Albert Einstein when discussing science: “Most of the fundamental ideas of science are essentially simple, and may, as a rule, be expressed in language comprehensible to everyone.” But the claims—despite the substantial time spent drafting and interpreting them—are not a place where the discerning reader finds linguistic respite.

 

Why do patent attorneys write claims this way? The simple answer is that even in a plain English advocate’s hands, patent claims are doomed to obfuscation by the very authorities that require them. The U.S. Patent and Trademark Office (USPTO) almost insists that claims be unreadable. In the USPTO’s own words: “Each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations.”[3] Thus, the plain English drafter can painstakingly weed every occurrence of “utilize.” And excise “said,” replacing it properly with “the.” And even strike “of the” in favor of possessives. But after all this careful work, the drafter may be left with an impenetrable sentence of a length not seen since Matthew begatted Jesus’s lineage back to Abraham.

 

The consequence of the USPTO’s “single sentence rule” requires the patent drafter to cram several paragraphs of description into a single sentence. The rule forces claim drafters to convert otherwise sensible sentences into multiple clauses beginning “wherein,” such as: “wherein the stringed instrument includes a vibrato bridge movable to vary the tension of each of said one or more strings wherein each of said one or more strings is connected at one end to the actuating means and wherein the actuating means is carried by the vibrato bridge.”3 In a patent attorney’s hands, the above clause contains reasonable usage. In the hands of any other person, that clause—part of the lengthier entirety of the claim—justifiably drives them apoplectic.

 

Your next question will probably be: “Why doesn’t someone do something about this clearly outdated rule?” Alfred A. Fressola, patent attorney, inventor, and principled-writer did. During his application’s prosecution, Mr. Fressola, equal parts aware of and perturbed by the USPTO’s single sentence rule, wrote a claim in verboten multi-sentence form. Upon examination, the USPTO examiner formally objected to the claim but also admitted that it was “clearer” than a similar single sentence variant.

 

Armed with the examiner’s admission and the knowledge that he was on the side of right-writing English peoples, Mr. Fressola petitioned the then-Commissioner of the USPTO, Harry F. Manbeck, Jr., to review the examiner’s objection to his multi-sentence claim. In denying Mr. Fressola’s petition, the Commissioner quoted the Manual of Patent Examination and Procedure (MPEP) and further drew on the weight of 150-plus years of singe sentence tradition. In doing so, he concluded that the single sentence nightmare is “the proper and only way of drafting a claim in compliance with the statutory requirement of 35 USC 112, paragraph 2.”4

 

In addition to 150 years of single sentence history, the Commissioner stated that “the courts do not appear to have had any difficulty dealing with long claims.”5 The Commissioner went on to argue that “[t]he single sentence requirement promotes clarity and precision…by eliminating…multiple complete sentences.”[4] With such defenses of run-on sentences, it’s no wonder Mr. Fressola (according to him, to his partners’ bemusement) appealed the Commissioner’s decision from the USPTO to the U.S. District Court for the District of Columbia.

 

The D.C. Circuit gave Mr. Fressola’s case short shrift, deciding that the single sentence requirement was nothing more than a formal—not a substantial—requirement, and thus properly administered by the USPTO. Mr. Fressola—still the inventor here as well as defender of English and patent attorney—tired of his appeals on this point and eventually secured US Patent 5,617,332.[5]

 

It is a rare situation that someone would take the time to appeal the single sentence rule, allowing their patent application to languish for years in the administrative and court processes while challenging a clearly written—if wrong—requirement. But kudos to Mr. Fressola for being in the unique position to take up the challenge and follow it through.

 

Mr. Fressola’s position that Section 112 is best-served not by tradition, but by clarity in writing that “particularly” and “distinctly” describes the invention, makes sense. With the arrival of a new USPTO Director, David Kappos, I hope that Mr. Fressola’s sensible position becomes the rule. Writing claims in multiple sentences, while perhaps flaunting 150-plus years of claim-drafting tradition, promotes clarity. It further complies with the statutory requirement that claims be “particular” and “distinct.” That such claims would differ from the international one-sentence norm would only place the United States at the forefront of a sensible change in patent claim-drafting rules. Not only would the patent bar be happier for it, but so would the examiners who are charged with interpreting needlessly unreadable claims, as well as the judges and juries who examine claims in excruciating detail.

 




[1] Garner, Bryan. Garner’s Modern American Usage, 3rd Ed. 2009.

[2] To spare you some frustration, I have not included the entire text of one of these monstrosities in this article and for that, I accept your thanks.  

[3] Manual of Patent Examination and Procedure (MPEP) Section 608.01(m) (the MPEP is guidebook that provides the procedure to be used by examiners when they examine patent applications).

[4] Section 112  requires that “[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” The Commissioner stated that courts “do not have difficulty” parsing long claims, and as proof, noted a civil action involving a 268-word claim.  

[5] I beg to differ: I have often heard judges beg on their own and on their juries’ behalves for patent attorneys to take mercy on them and not overcomplicate things with dense writing.

[6] Mr. Fressola unsuccessfully appealed another aspect of his patent application, an omnibus claim, to the Court of Appeals for the Federal Circuit.

62 thoughts on “An Appeal to the New Patent Office Director: Repeal the Single Sentence Rule

  1. “strike “of the” in favor of possessives”

    Possessives in a patent document are for m0r0ns who, mentally, never made it past the third grade.

  2. Here’s a provocative thought:

    Whether one defines the scope of protection in a single sentence, or in more than one sentence, clarity is prejudiced whenever Applicants perceive that advantage accrues, over the life of the patent, to those who get through to issue with ambiguous claims. Compare a long-haired cat. When it’s wet, it appears tiny. It’s hard to hit with a validity attack. But when it’s dry, and attacking an infringing dog, its hairs stand on end and it appeares twice its normal size.

    When drafters of ambiguous claims are exposed to more risk than reward, claims will get clearer. But not until then.

  3. “Specifically, is there any reason why a claim consisting of multiple, complete sentences is any less clear or precise than a single-sentence claim?”

    “More puncuation and more words make it more complex.”

    Well, in THAT case there should also be a word limit. No claims longer than 20 words. That would eliminate pretty much all patents short of a few works of genius, though, wouldn’t it? That doesn’t seem reasonable. The single-sentence rule is just an old absurdity designed to confuse people and make it unreasonable for anyone to read patents.

    “I don’t see claims ever being understandable by the general public.”

    Well, in THAT case patents have to be abolished. Any person in any field *must* be able to understand the claims of a patent in their field in order for patents to satisfy the due process clause of the US Constitution. From what Bruce Hayden says, this will never happen. That means, as far as I’m concerned, that patents shouldn’t exist.

    I’m more optimistic than that. Surely you can write patent claims readable by people of ordinary skill in the relevant art? If you can’t, you shouldn’t get a patent, period, end of story.

  4. Nice explanation of the problems with the single sentence rule. However, when deciding to abolish something, you should at least consider the potential problems of the alternative.

    Of PRIMARY importance in claims is clarity, NOT readability. Claims don’t look like normal English because normal English is NOT CLEAR.

    I think this is a REALLY DUMB IDEA. Now, get back to work!

  5. Some judicial thoughts.

    “It does not help that the traditional rule, incorporated in Patent and Trademark Office (PTO) guidance, is that each claim must be drafted without internal terminal punctuation – that is, in one sentence – even if the sentence runs on for many lines and contains multiple ideas and phrases. The writing of English this is not.”

    See S. Jay Plager, Challenges for Intellectual Property Law in the Twenty-First Century: Indeterminacy and Other Problems, 2001 U. Ill. L. Rev. 69, 72 (2001).

  6. On the other hand, eliminating the one sentence rule might eliminate some of the dumb-foolery that we see during prosecution when someone screws up the placement of periods.

    I have several times gotten back Office Actions where the examiner strictly applied the rule. For example, they may just run the claim into the next one and see what happens. Of course, the next claim won’t be there, and so you may get an objection because there is a hole in your claim numbering. Or a claim may now be dependent upon two different claims, or even itself. And if there is an extra period in the middle of a claim, they will ignore the remainder of the claim, and remark that the ignored remainder is not in proper form of a claim. That sort of thing.

    I do wonder whether examiners sometimes have contests to think up the best rejections based on overly strict interpretation of this rule.

    But then, I will pick up an Office Action, look at the claims, and note that a period is missing, and hasn’t been noticed through three or four previous Office Actions. Some of the examiners obviously take the other approach – they know where the claims are supposed to end, and just work with them that way.

  7. One reason that I would be loathe to get rid of the one sentence rule is that I have been working on Word macros that do the stuff that patent attorneys do with their claims during prosecution. Each amendment cycle, I accept all the previous revisions, turn revisions on in Word, and then at the end, before filing an amendment, turn the Word revisions into USPTO revisions. And, in order to collect paragraphs into claims, I key off of the trailing periods (I do need special handling then for canceled (or “cancelled”) claims that don’t always have trailing periods).

    Notably, the USPTO is now doing the hanging indent thing and some indentions when publishing issued patents. I am not sure whether they are keying off of semicolons or the applicants’ formatting, but it does make it a lot easier to read than in the past.

    I don’t see claims ever being understandable by the general public. We just spend too much time arguing with examiners about single words (last night – argued that “configured” in a software case was not a field of use limitation, but changed it to “programmed” to make it clearer). In an environment where mixing up “the” and “a” is often fatal, and you had better not have two of something if you are talking about just one of them, adding extra words to make claims readable is just not feasible.

  8. Rodrigo – appreciate the discussion on the EP. Yes in this case the applicant did receive a non-unity objection from the ED (there were in fact 4 very similar claims). But the applicant argued strenuously against that objection and all claims were allowed to remain in the case. I think their primary argument was that the claims had the same special technical features.

    Bartmans, thank you also for your clarifications.

  9. well, counting the comments this seems to be more important than many of the commenters state; Anyway, I don’t see a single sentence rule in the code; There’s only a limitation to the number of periods in a claim, which is not the same as a limitation of the number of sentences;
    But more to the point:
    - yes, I believe there would be very good reason to a removal of the “one period” rule in exchange for a “maximum word count” rule:
    o if it doesn’t fit a certain number of words / syllables(e.g. the length of a sonnet) it’s most likely not an invention covered by the “public interest in disclosure of major findings”
    o within a certain size limit the drafter should have the freedom to do the claim in the _best_ way, regardless of grammar;
    Finally: The Markush grouping should be banned or – even nicer – the claim count for billing should be based on the number of distinct embodiments spanned by the Markush group (i.e. A and/or B and/or C and/or D counts as 15 claims…) Now make another multiple choice claim depended on it (e.g. one or more of E, F, G, H) and finally the USPTO will have sufficient funds for a most meticulous and fast examination procedure.

  10. It should be made clear that under the EPC the ‘characterized in that’ language is not necessary – although Rule 43 EPC seems to call for that. Rule 43 only says ‘wherever appropriate’ and it is basically up to the choice of the drafter to use a two-part or a one-part claim.
    Further, when using a two-part claim, the applicant does not concede that the preamble is prior art. That has already since long been recognized in the EPC case law (see e.g. T99/85)

  11. I think my next to last post was censored.

    However, I do not understand anyone opposing the abolition of this arcane and unnecessary rule. It would be much easier for both drafters and readers if claims were written in multiple short declarative sentences. These multiple sentence claims would generate a lot less confusion and allow for a lot less unintentional ambiguity in claims.

  12. Jerkface,

    Yes, attorneys using multiple sentences could surely continue using unnecessarily long and complex sentences. However, continuing the single sentence rule guarantees they will.

  13. “Here the EPO applies the “problem-solution approach”. Ask MaxDrei how it works…”

    No, don’t. Please don’t.

    Only kidding Max.

    (seriously – DON’T)

  14. @duh, what?: Well the proprietor will always deny having admitted *anything* by the way in which he drafted the patent. The prosecution history is mostly immaterial in European litigation, anyway. But even if this was to be construed in this way, it wouldn’t necessarily affect the patent’s validity. Here’s why:
    Take existing prior art A, and existing prior art B. The combination of A+B has never been disclosed together before, so it is novel.
    According to European practice, the pre-characterising portion of the independent claim must comprise all features already found in the *closest* prior art. Now, in our particular case, which one of A or B is the “closest” prior art? Clearly, in this case the drafter wasn’t certain, so he chose this curious “belts and braces” approach: claiming both “A characterised by B” and “B characterised by A” (something which, BTW, should not have been allowed by the examiner, since it goes against Rule 43(2) EPC, which bars having two independent claims with identical subject-matter).
    Regarding validity, the question will be: even if A and B were admittedly known *separatedly*, was it obvious for the skilled person to combine them? Here the EPO applies the “problem-solution approach”. Ask MaxDrei how it works…

  15. Rodrigo wrote, “Well, here in Europe. . . . . . I can remember at least one case in which the drafter had somehow lost the thread of the sentence halfway through the claim…)”

    I recall reviewing a granted EPO having 2 independent claims, 1 and 10. In claim 10, the pre-characterizing portion was exactly the post-characterizing portion of claim 1, and the post-characterizing portion of claim 10 was exactly the pre-characterizing portion of claim 1.

    Does that mean the proprietor is admitting that all elements of their claims 1, 10 are within the prior art?

    Proprietor was a major (as in Forbes 50) company, by the way.

  16. AAndy write:
    “Question for those who don’t want to see the one-sentence rule changed: Other than the long-standing tradition and the fact that you’re already comfortable drafting claims using only one sentence, is there a positive justification for a single-sentence rule?”

    Yes. It’s more rope. At least the single sentence rule places SOME kind of a limit on a claim, and forces the drafter to focus carefully. Just imagine how long (and unclear) claims would become if applicants could use multiple sentences. And if you don’t believe me, look at Dennis Crouch’s blog entry some time ago studying the ballooning of the length of specifications after the advent of word processors.

  17. Jerkface,

    But 6 understood what I wrote. At least he said he did. I think. We were both pretty smashed at the time.

  18. Why is the one-sentence rule a good thing?

    Well, here in Europe, there actually isn’t a one-sentence rule, at least not in the European Patent Convention. And yet, any half-decent patent attorney will always write his claims in a single sentence.

    Why? Well, partly for tradition’s sake, sure, but mostly because a claim, just like a sentence, only has a single subject. While long single-sentence claims may be a bit difficult to digest for those unaccustomed to them, multiple sentences would have multiple subjects, and a great deal more scope for real ambiguity.

    (This said, I can remember at least one case in which the drafter had somehow lost the thread of the sentence halfway through the claim…)

  19. I’m particularly fond of the appeal to Einstein. Einstein wrote a book called “Relativity: The Special and the General Theory–A Clear Explanation that Anyone Can Understand”. Surely one so dedicated to the plain English movement would be a paragon of clarity and concision when communicating to a lay audience. That was the entire point of the book, after all.

    The second page of the book has this doozy of a sentence:

    “If, in pursuance of our habit of thought, we now supplement the propositions of Euclidean geometry by the single proposition that two points on a practically rigid body always correspond to the same distance (line-interval), independently of any changes in position to which we may subject the body, the propositions of Euclidean geometry then resolve themselves into propositions on the possible relative position of practically rigid bodies.”

    I’m sure all of us have read patent claims that are much more straightforward than this particular sentence of Einstein’s, which I doubt would be anyone’s yardstick for “language comprehensible to everyone.”

  20. In the electrical or mechanical arts a good claim at least at the time of filing is no more than three lines of typescript.

    It is not always possible to achieve this, but it is a worthwhile objective.

    So you do not use multi-sentences because your claim should be concise and to the point.

    Chemists, however, go on and on and on and on and on and on and on …..

    In some of the more extreme Markush cases a question to be put to the expert witnesses goes like this. Assume that a skilled chemist and evaluation team can make one compound per day (a pretty good rate of work in many chemical arts). Now assume that the team is going to work systematically through all the variants in the Markush group. Firstly, on the Turing test, does the team ever stop? If so and if completion of their work is today, will they have had to start (a) during the reign of one of the Roman emperors, and if so which? (b) during the era of the dinosaurs? (c) before complex cells evolved? (d) before the Earth came into existence? or (e) before the Big Bang?

  21. “given the use semicolons and en dashes – like this – I don’t see any reason to change”

    Those should be em dashes (and not en dashes). Though it is difficult to tell this difference between them with this font. Also note there should be no spaces before or after the em dash.

    The above should be (leaving out the rest of the sentence to save space):

    “given the use semicolons and en dashes—like this—I don’t see any reason to change”

    Though, it looks much better with a good proportional font in Microsoft Word.

  22. Gerry,

    I appreciate your post noting my misuse of flaunt/flout, which I mistyped in some misjoining use of flout and taunt. A pox on my house–I stand singed, corrected, and grateful.

    Steve (the communist)

  23. To be broad, patent claims should be terse
    Make them longer and you make them worse
    But a far, far worse fate -
    I don’t ‘aggerate -
    Would be patent claims written in verse.

    A one-sentence claim; now who cares?
    A bunch of guys sitting on chairs
    or on a long pew
    at the school law review?
    USPTO, it won’t dare.

  24. Sometimes two or more sentences can hang together. Like when they’re building toward expressing a single thought. Other times they don’t hang together and instead express entirely different thoughts. I have ice cream and you don’t. With multi-sentence claims you run into the latter problem. And you still won’t have ice cream.

  25. “What is this guy? A communist?”

    I don’t get it. What does proposing to repeal the single-sentence rule have anything to do with being a communist? Last I check he’s an attorney, just like you, at a reputable firm.

    The name calling on this forum is just as cryptic as the claims.

    I doubt the abolition of the rule would help, but a little more effort by the drafters to make the claims simpler, more concise and straight forward, would help to make them easier to understand by all involved.

  26. Speaking about diagramming sentences, 6 – where’s your homework? Your diagramming of 112 paragraph 1 is way overdue.

    Nice skirt today btw.

  27. What is this guy? A communist?

    The single sentence rule is a good rule. It forces discipline and precision into the claim.

    Patent claim drafting is an extremely rigorous and sometimes breathtakingly beautiful use of language. It requires a broad and supple vocabulary, and an outstanding command of English grammar. It is possibly the most challenging of all forms of legal drafting.

    In an era when so few people in our society write well, a well drafted, properly structured patent claim is a thing of rare and special elegance, of magnificence even. A thing to admire.

    If you are having trouble with the single sentence rule, maybe it’s because you don’t draft claims well. Badly drafted claims usually arise from underlying thinking that lacks the logical structure on which a good claim is built.

    Given that claim drafting is the defining core skill in this business, perhaps a dislike of the single sentence rule is how your own id is telling you that maybe this calling isn’t for you. Maybe you need to listen to that inner voice.

    No, we do not need to “dumb-down” patent claim drafting. We should not abolish the single sentence rule.

    Move on.

  28. Replacing semicolons with periods does not magically render an incomprehensible claim transparent — clear claims can be written either way; so, to argue that punctuation is the key to clarity is ignoring the substance of the issue completely.

  29. For the patent with the longest claim, See ELAN & WYETH’s Patent No. 6,953,802. By my count, that claim has over 17,000 words.

    link to google.com

    Often, longer claims tend to be narrower in scope than shorter claims. Here, however, the length of the claim is due to extensive use of Markush groups.

  30. How about the following?

    “A system comprising:
    a backplane;
    a line unit comprising …;
    a bandwidth extender comprising…; and
    a LAN service unit not included in the line unit and including a LAN interface, a data traffic communications interface to a bandwidth extender, and a second data traffic communications interface to the data traffic communications connections of the backplane, the LAN service unit operable to communicate a first portion of data traffic destined for or originating from the line unit between the LAN interface and the data traffic communications interface to the bandwidth extender and to communicate a second portion of data traffic destined for or originating from the line unit between the LAN interface and the data traffic communications interface to the data traffic communications connections of the backplane.”

    Comprende?

    .
    .
    .

    Rather than letting you lose anymore hairs, allow me to transcribe:

    A system has a backplane which connects three different types of cards: a line unit, a bandwidth extender, and a LAN service unit.

    A LAN service unit comprises 3 different interfaces:
    - interface 1 to LAN,
    - interface 2 to bandwidth extender, and
    - interface 3 to backplane.

    The LAN service unit communicates data between interfaces 1 and 2, and further communicates data between interfaces 1 and 3.

    Voila!

    Which claim language would you rather work with?

  31. Stephen:

    Gee, your post is a nice historical footnote on patent practice through the ages. Best one I’ve seen since David W. Maxey’s article at 80 J. Pat. & Trademark Off. Soc’y 155 titled INVENTING HISTORY: THE HOLDER OF THE FIRST U.S. PATENT. That article was about whether Samuel Hopkins, inventor of an improved method for making potash, was a resident of Vermont or (as we in the City of Brotherly Love prefer to believe) Philadelphia.

    However, I’ve always told clients to consider a patent claim as being more like a computer program than an English-language text.

    And, sorry, but as long as it’s fair game to bash the writer’s language in this post, I have to remind you that “flaunting” means “exhibiting ostentatiously or shamelessly” whereas you obviously meant “flouting” which of course means “showing contempt for.”

  32. Einstein was at one time an Examiner himself, if there’s anyone left who didn’t already know that. I don’t suppose he was talking about patent claims in the above quote, but like other Examiners that we might know of, it is no surprise he comes down on the side of simplicity and clarity. Laudable goals in themselves, but anyone who has to draft claims knows that these goals conflict somewhat with the very important goal of writing the broadest possible claims that don’t read on the prior art. 6, for example, would rather we didn’t do that, but we are duty bound to as long as there are such things as patents. It is that, and not the single sentence rule, which makes claims hard to read, and it’s an inherent difficulty that isn’t easily overcome, but which those like Examiners who merely have to read the claims don’t concern themselves with.

  33. Hey Thresholding, interesting contribution. Will you tell me more about this “refusing” in your:

    “…foreign attorneys’ refusal to allow their US counterparts to draft and file claims written in proper English”

    with all apostrophe marks positioned exactly right.

    What could be prompting such self-harm? Are they worried about how many of your hours the process of translating (out of EFL and into proper English) might take.

    Examiners, does Threshold’s “proper” English make the subject matter of the claim any easier for you to grasp?

  34. “Specifically, is there any reason why a claim consisting of multiple, complete sentences is any less clear or precise than a single-sentence claim?”

    As a patent examiner, I spend an extraordinary amount of time proof reading the lingual atrocities that agents and attorneys submit when limited to a single sentence. My brain explodes at the thought of what could be called a patent claim if they were allowed multiple sentences.

    (I have no delusions that patent examiners are any better at playing magnetic poetry with the written word – but please let’s agree to keep it simple where the game is already simple.)

  35. I move that we change from the single sentence format to a format selected from the group consisting of: iambic pentameter, haiku, limerick, gangsta rap, leetspeak.

  36. “One sentence claims are a tradition; given the use semicolons and en dashes – like this – I don’t see any reason to change; moreover, given all the problems the PTO faces, why waste anybody’s time on trivial matters?, it is time to get real Steve!”

    These are em dashes.

  37. “The worst thing about our patent system today is the failure of applicants to claim what they regard as their invention”

    You mean, failing to very narrowly claim, down to each nut and bolt, the exact embodiment disclosed to the attorney?

    Are you still harping on that one, 6?

    Btw, Oldtimer, Bilski is going to be overturned. SCOTUS doesn’t like bright line rules, which is why they overturned the TSM test with KSR. The same thing will happen to the machine or transformation test.

  38. Three cheers for Alfred Fressola.

    Still, the confusion created by the single-sentence requirement pales in comparison to the confusion resulting from attorneys’ attempts at extremely broad claims and foreign attorneys’ refusal to allow their US counterparts to draft and file claims written in proper English.

  39. “In any case, your lack of comprehension of the proper application of the English language aside, your article is just plain bad.”

    That’s damning criticism coming from you, 6. The king of the triple negative.

    I can’t even imagine what it must be like to attempt to decipher one of your Office Actions. Your writing is so poor that sometimes I think you’re actually trying to write that badly. And then I realize that nobody could deliberately write as incoherently as you do.

  40. 6,

    “I would have expected to see NAL’s name at the top.”

    Your expectation, as usual, is based in some fantasy land. The only reason for me to post on this non-issue is to note that the most “vocal” person on this topic is you.

    Now isn’t that a surprise?

    This is hardly an issue of Law that I am concerned with. I’ll leave the joy of arranging the deck chairs to you.

    /sarcasm off

  41. “And finally Don’t, don’t think for one minute that I don’t think that your job as a drafter is hard. ”

    Sorry should have a not before hard. That’s what I get for trying to put a quadruple negative into the sentence by putting don’t into the sentence to play with his name.

  42. “It’s an odd context for the word to be sure, just like “ands” would be a strange word to see except when you’re telling a 2nd grader that they’ve used too many “ands” in their essay.”

    Maybe you should consider telling the 2nd grader that they have included the word “and” too many times in their essay/sentence instead of making up the word “ands” for shorthand.

    In any case, your lack of comprehension of the proper application of the English language aside, your article is just plain bad.

    And to be completely honest I feel trolled after having read and responded to it.

    Thanks for stopping by for comments though.

    My participation in this discussion is at an end.

  43. “One sentence claims are a tradition; given the use semicolons and en dashes – like this – I don’t see any reason to change; moreover, given all the problems the PTO faces, why waste anybody’s time on trivial matters?, it is time to get real Steve!

    That’s right Steve.

    lol steve.

    “How do you know the applicant doesn’t understand the claim the attorney drafted?”

    Because the (presumed) attorney who posted right above me just admitted it.

    “Have you ever drafted an application and had the inventor(s) review it, including the claims? ”

    If you mean “have you ever drafted an CLAIM and had…” then yes I have.

    Don’t think for one minute that it isn’t plain to see that a big swath of you attorneys don’t know how to do your job but go about your daily business doing it wrong. Look at Znutar, he probably does it right from what he posts, but then look at the author of the topic. He obviously does it wrong, or would do it wrong if the prosecuted/drafted. His clients apparently can’t understand his claims.

    And finally Don’t, don’t think for one minute that I don’t think that your job as a drafter is hard. Never the less it is impossible to defend attorneys breaking the lawl en masse because it is mentally taxing to comply with it.

    “Is this article a joke? What a waste of brainpower, much less ink. I can’t even be bothered to read this drivel. It’s as if you’re standing on the deck of the Titanic as it raises skyward for the final drop, fretting that you left your watch in your cabin.

    Next up, a highly critical analysis of March-in Rights under 35 U.S.C. 203 . . .

    I loled.

  44. “Specifically, is there any reason why a claim consisting of multiple, complete sentences is any less clear or precise than a single-sentence claim?”

    More puncuation and more words make it more complex.

  45. Question for those who don’t want to see the one-sentence rule changed:

    Other than the long-standing tradition and the fact that you’re already comfortable drafting claims using only one sentence, is there a positive justification for a single-sentence rule?

    Specifically, is there any reason why a claim consisting of multiple, complete sentences is any less clear or precise than a single-sentence claim?

  46. Dear Steve,

    Re: “…just like “ands” would be a strange word to see except when you’re telling a 2nd grader that they’ve [sic] used too many “ands” in their [sic] essay.”

    Just tell the kid he used the word “and” too many times in his essay.

  47. Mike and JohnA,

    Good answers, but I guess my interpretation of the way claims are set up is based upon who should be reading them. Applicants representatives (attorneys and agents), examiners, searchers, and potentially infringing PHOSITA employers. While I feel for poor ol’ individual inventors, no one in the current system cares if they are not adequately being put on notice of infringement since they have no money anyway (a wee bit cynical).

    I’ve trained plenty of people to read claims and never had any issues with the single sentence format. The reader learns to just go one clause at a time as such:

    Read clause 1 – do we do that? – yes – read the next clause.
    Read clause 2 – do we do that? – yes – read the next clause. Repeat until…

    Read clause x – do we do that? – no – irrelevant patent.

    I guess I’m not swayed by Mr. Schott’s justifications which sound like arguments for the sake of arguing (or a debate class assignment).

  48. I can defend begatted–it struck me every time I proofed this. “Begatted” is proper in that context even though it’s a nonword. It would be an improper past tense because “begat” is the past tense of beget. In that sentence, it’s used as the past tense of the verb begat’s usage. It’s an odd context for the word to be sure, just like “ands” would be a strange word to see except when you’re telling a 2nd grader that they’ve used too many “ands” in their essay. (I often wish words like “ands” were proper in Scrabble by the way and feel I could justify them with that example but my wife thinks otherwise.)

    A clearer call-out might have wrapped “begat” in quotes but that seemed sloppy.

  49. Hmm, let’s see . . . KSR has rendered invalid vast swaths of the existing pool of patents and rendered unpatentable a huge swath of the pool of pending applications. Bilsky is likely going to tear out another huge chunk of patents and applications as being ineligible for patent protection on a subject matter basis. Ebay kills injunctions. And meanwhile, we’re supposed to be concerned about the one sentence rule????

    Is this article a joke? What a waste of brainpower, much less ink. I can’t even be bothered to read this drivel. It’s as if you’re standing on the deck of the Titanic as it raises skyward for the final drop, fretting that you left your watch in your cabin.

    Next up, a highly critical analysis of March-in Rights under 35 U.S.C. 203 . . .

  50. One sentence claims are a tradition; given the use semicolons and en dashes – like this – I don’t see any reason to change; moreover, given all the problems the PTO faces, why waste anybody’s time on trivial matters?, it is time to get real Steve!

  51. I don’t seem to have any trouble drafting claims that inventors can understand. I often review the claims with the inventors and draft exemplary claims during the disclosure meeting. Your method has these four steps, right? Formatting, as noted above, makes a big difference.

    If you’re trying to cram several paragraphs of description into a claim, as the article suggests, then perhaps you’re claiming too narrowly.

    Anyway, silly as the one sentence rule may be, we are in conformity with the rest of the world with it, it’s pretty well established, and there are much bigger fish to fry in the PTO. I thought the title of the article was actually a reference to a rule of examination that one will not answer an attorney’s argument with more than one sentence.

  52. “Your next question will probably be:”

    No, my next question is: Why don’t we ensure that applicant’s claim what they regard as their invention instead of taking the attorney’s, and the applicant’s coerced, word for it?

  53. “begatted”

    That is definitely no properly used, and it is not a word so far as I know. It’s just begat, and your sentence needs to change to accomodate the word.

    In any case, this is outrageous nonsense. I would have expected to see NAL’s name at the top. In fact I was astonished not to see it.

    “single sentence claims fly in the face of overall readability and clarity”

    I disagree. Allowing people to use multiple sentences would result in even more nightmarish claims. At least that is my take on it.

    Because an attorney chooses to draft claims that his client can’t understand is not the USPTO’s problem. That is the client’s problem and he should demand that the attorney properly claim what he regards as his invention.

    The worst thing about our patent system today is the failure of applicants to claim what they regard as their invention. Something you just implicitly let slip in your comment John A.

    If they did I imagine that examining would be a joke, so easy I would cry from laughter.

  54. PSDIP: If you ask an inventor what part of the application they don’t read or understand, I guarantee that it’s the claims because they are so dense to anyone but the non-patent attorney.

    Yet those same inventors sign a Declaration that attests to their invention being shown and described in the application. It’s a real problem and the USPTO can correct the problem with a flick of the switch.

  55. PSDIP -
    But that’s neither support for or refutation of the point of the article: single sentence claims fly in the face of overall readability and clarity. It’s even more so when presented to someone that does not “regularly.. spend 8-10 hours per day reading claims.”

  56. Reading and understanding a single sentence claim is not that difficult if the drafter separates the clauses (or steps or ingredients or parts, etc.) being claimed with returns (or enters). Claims only become indecipherable when they are drafted as a single sentence with no separation of the distinct clauses.

    I mention this as somebody who regularly has to spend 8-10 hours per day reading claims and only claims. No abstracts, very little specification peeking, hardly a picture, and virtually no human interaction to break up the monotony while performing clearance searches! (Makes my job sound like such a joy…)

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