What can Patent Applicants do to Improve Patent Quality?

By Dennis Crouch

Patent “quality” has many different meanings. The primary focus of the PTO under Director Dave Kappos is on the timely issuance of “right sized,” valid patents. I would add an additional important focus of ensuring that the scope and coverage of each patent is relatively easy to determine. These measures of patent quality fit within broader goals of the patent system — incentivizing innovation and disclosure of those innovations within a competitive marketplace. The patent rules are intended work as something of a feedback system at varying levels of granularity, guiding innovators and applicants in ways that hopefully push us toward those ultimate goals.

I tend to model the patenting process is something of a negotiation between the PTO an the patent applicant. The PTO possesses the authority to grant or deny patent applications, but every word found in the patent is written or approved by the patent applicant. Obviously, the patent applicant’s role in this process is deep and substantial. A patent’s conception begins with words drafted by the patent applicant, not the examiner; amendments are made by the patent applicant, not the examiner, and, after approval by the patent examiner, is the patent applicant must approve the final issuance of a patent (with the payment of a fee).

For many years, I have argued that meaningful change in the state of patent law and patent quality could be implemented in incentives that push applicants toward filing quality patent applications – claiming valid subject matter and drafting claims with well-defined scope. The USPTO agrees and has now published a notice on its project to “focus[] on potential practices that applicants can employ at the drafting stage of a patent application in order to facilitate examination and bring more certainty to the scope of issued patents.” Email comments to QualityApplications_Comments@uspto.gov by March 15, 2013.

The PTO’s current ideas on this front focus on ways to clarify the meaning of terms used in the claims and the resulting scope of the claims. Some of the initial ideas presented are traditional define-your-terms notions while others suggest that new mechanisms of information connectivity may offer solutions.

On these fronts, the PTO lists the following ideas and requests comments:

  1. Clarifying the Scope of the Claims
    1. Presenting claims in a multi-part format by way of a standardized template that places each claim component in separate, clearly marked, and designated fields. For instance, a template may facilitate drafting and review of claims by separately delineating each claim component into separate fields for the preamble, transitional phrase, and each particular claim limitation.
    2. Identifying corresponding support in the specification for each of the claim limitations utilizing, for example, a claim chart or the standardized template described above. This practice could be particularly beneficial where claims are amended or where a continuing application (continuation, divisional, continuation-in-part) is filed.
    3. Indicating whether examples in the specification are intended to be limiting or merely illustrative.
    4. Identifying whether the claim preamble is intended to be a limitation on claim scope.
    5. Expressly identifying clauses within particular claim limitations for which the inventor intends to invoke 35 U.S.C. 112(f) and pointing out where in the specification corresponding structures, materials, or acts are disclosed that are linked to the identified 35 U.S.C. 112(f) claim limitations.
    6. Using textual and graphical notation systems known in the art to disclose algorithms in support of computer-implemented claim limitations, such as C-like pseudo-code or XML-like schemas for textual notation and Unified Modeling Language (UML) for graphical notation.
  2. Clarifying the Meaning of Claim Terms in the Specification
    1. Indicating whether terms of degree—such as substantially, approximately, about, essentially—have a lay or technical meaning and explaining the scope of such terms.
    2. Including in the specification a glossary of potentially ambiguous, distinctive, and specialized terms used in the specification and/or claims, particularly for inventions related to certain technologies, such as software.
    3. Designating, at the time of filing the application, a default dictionary or dictionaries (e.g., a technical dictionary and a non-technical dictionary) to be used in ascertaining the meaning of the claim terms.

As we all move forward with this process (over the years…), I am confident that we will begin to think of patents less and less like “documents” that printed and read, but more like digital information maps that provides a network of information about inventions. Part of this potential comes from linking claim terms to descriptions found elsewhere and direct mark-up that ties original text to post application changes and notations.

None of these changes would make patent quality easy – but they would likely help move us in the right direction.

185 thoughts on “What can Patent Applicants do to Improve Patent Quality?

  1. “Better things to do? Isn’t what you just described a patent prosecutor’s entire job?”

    Hardly … you worry about getting a patent first. Ambiguous claims = easy/bady rejections by the USPTO. If you want to monkey around with the claims, you do so in a continuation application.

    The vast majority of clients appreciate issued patents FAR MORE than they appreciate ambiguous language that MAY make it harder on a potential licensee some untold years in the future.

  2. anon, lets take a few examples:

    1.  The invention is a picture frame.  Nails, screws and similar things are known means for attaching the wood beams together.  The claim recites the plurality of know apparatus functionally, as 

     - a fastener;
     - means for fastening;
     - adapted to fasten;

    and the like.  I see no vice in these.

    2.  The invention is  now glue to fasten the wood beams together.  The picture frame is old.

    A claim that reads word for word the same as the claim in 1 would literally cover the invention, but also the prior art.  It would not particularly point out the invention.

    Now if we could distinguish the prior art by arguing the specification, the glue, the claim would issue.  But the claim itself would still not tell us what the invention is.  It would not fulfill its proper role of identifying the invention within the borders of the claim.

    2. Same as 2, but the claim fastening means is "adapted to fasten such that there is no freedom of movement between the two intersecting beams.  The nails, screws and the like, all allowed some freed of movement about the axis of the shaft of the nail or screw.

    The problem with this claim is that it does not claim "glue," the a result.  If others invented other means for attaching that achieved the same result without using glue, the claim would cover it.  The claim itself does not include any of the novel means or methods actually invented.  It falls squarely withing the prohibition of Morse.

  3. “I don’t believe my remarks were addressed to processes.”

    Then exactly what class are you talking about?

  4. “The best part is that he perpetually self-defeats with his “9-0 baby” jig.”

    Yes, I recall MM on here crowing as soon as the Prometheus decision came down, and Ned proclaiming him as brilliant or something like that. I even think Max was jumping on the his usual suck up bandwagon hoping he cold be one of the gang. But apparently none of them read the decision first or they would have realized the Court took the claims as a whole, 9-0

    Integration 9-0.

    Dissection zero.

    Right in MM’s face.

    So when Federal Circuit Judges like Linn write in Alice that:

    “…. ignoring claim limitations in order to abstract a process down to a fundamental truth is legally impermissible”

    It has so much power and authority. Proust(?) looked so weak in her losing dissent claiming Linn had ignored Prometheus.

    When it was Linn that was following Diehr, same as Prometheus did.

    Same for all those shill attorneys paid to write amicus briefs with the same losing argument.

    Like MM is so found of saying…Supreme Court precedent 9-0, and it’s not going to be overturned baby!

  5. “Perhaps his circle mate MM can post that link to how the Office understands the Prometheus decision.

    (you know, the link that exalts the integration theory and makes no mention of the [oldstep]+[newthought] fallacy)”

    Oh yes, that is for certain. MM is such an intellectual coward and weakling that he will never even address, let alone apply the Court’s “Integration Analysis” to any real claims.

  6. “You draw an artifical distinction based on a canard which implicitly requires dissection.”

    I believe this the primary reason Ned ( MM too) and others with an anti-patent agenda can’t apply the Court’s “Integration Analysis” to any claims.

    They can see that “Integration” is the antithesis of dissection, and therefore buttresses Diehr’s claims as a whole mandate.

    And without dissection they are stripped off the instrument they need to eviscerate claims they do not like.

  7. Ned:”All one has to do is add a number of nominal elements to surround the claim to a result. The Office never seems to “get it,” and the patent issues.”

    Ned, I honestly do not understand the point you are trying to make with this function Vs Result dichotomy you have created.

    Are you saying that a process claim can’t include functional steps?

    Are you saying that a process claim should only include functional steps?

    Are you saying that a process claim can’t claim a result?

    Please clarify your position.

    Thank you.

  8. Ned: “Clearly, as well, the Federal Circuit is clueless.”

    Well, now that depends on which case/panel you are referring to. Certainly Rader and Linn get it in Research Corp and Alice respectively. They understand Diehr controls what is patent eligible subject matter, and take the claims as a whole, with no dissection.

    And the Supreme Court has twice now upheld Diehr, especially at “claims as a whole” and agreed unanimously that the reason Diehrs claims were patent eligible subject matter was because the claims were “integrated”.

    Are you beginning to understand now?

  9. “I don’t understand how you can make that leap, 101.”

    Okay, I am going to try and help you understand. You do not have to make the leap because the Supreme Court has given you a very steady, stable, bridge called “integration”.

    First we begin with Diehr quoting one of your favorite cases…

    “It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection. See, e.g., Funk Bros. Seed <450 U.S. 188> Co. v. Kalo Co., 333 U.S. 127, 76 USPQ 280 (1948);Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45 (1923); Cochrane v. Deener,94 U.S. 780 (1876); O’Reilly v. Morse,15 How. 62 (1853); andLe Roy v. Tatham, 14 How. 156 (1852).”

    Next Diehr says:

    “In determining the eligibility of respondents’ claimed process for patent protection under §101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. The “novelty” of any element or steps in a process, or even of the <450 U.S. 189> process itself, is of no relevance in determining whether the subject matter of a claim falls within the §101 categories of possibly patentable subject matter.”12

    Finally in Prometheus Diehr’s claims are interpreted as:

    In Diehr, the overall process was patent eligible because of the way the additional steps of the process “integrated” the equation into the process as “a whole”. 450 U. S., at 187. These additional steps transformed the process into an “inventive application” of the formula. ) [MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC 566 U. S. (2012) 3 Syllabus] (Emphasis Added) Please note the added emphasis of the quotation marks.

    And that my friend is how you get to eligible subject matter without taking a leap. Simply walk across the bridge of integration.

  10. add a number of nominal elements

    Very much misses the point about integration (sigh).

    Have you not been paying attention?

  11. that old elements of a claim cannot be claimed functionally

    That is most decidely not the law. You draw an artifical distinction based on a canard which implicitly requires dissection.

    However, I suspect your third party interests prevent you from an honest appreciation of current law. You should realize how tortured your logic becomes when faced with the inevitable. how very unconvincing you become. The need to claim that you don’t understand…

    It’s a shame really.

  12. Funny, he does not understand.

    Perhaps his circle mate MM can post that link to how the Office understands the Prometheus decision.

    (you know, the link that exalts the integration theory and makes no mention of the [oldstep]+[newthought] fallacy)

  13. 101,

    That would require dissection and the (canard) treatment of some type of “point of novelty,” in isolation of anything else in a claim, as well as the baseless legal insertion that functional claiming must be bad, very bad.

  14. No.
    Typically when you claim a result you claim an article or machine or a composition in terms of what it does or the result it produces.

    But there is a difference between the process of making the hammer and the result it produces.

  15. Ned: “I don’t understand how you can make that leap, 101.”

    Tell it to the Supreme Court. I don’t have a problem with it. Maybe you do. But it’s still the law.

  16. Good evasion too.

    Since you so boldly made the assertion you should now responsibly and honestly answer the question.

  17. Last, the problem with claiming an invention functionally is as old as the hills. They claim a result.

    This is not to say that old elements of a claim cannot be claimed functionally. They can.

    Sent from iPhone

  18. Whats your beef with functional claiming Ned? Why is it “low quality” to claim something functionally? We are in the computer age now. Often the invention is in the function and not a particular implementation.

  19. “One cannot have a patent on a principle in the abstract.”

    But one can have a patent on an “inventive application” of a principle.

    Thus you have not reconciled the old cases with Diehr, as was done in Prometheus.

    Understand?

  20. 101, we agree that this is a 112 problem. The problem is that so many patents issue with claims just such as this, because the vice is easy to cover up. All one has to do is add a number of nominal elements to surround the claim to a result. The Office never seems to “get it,” and the patent issues.

    Clearly, as well, the Federal Circuit is clueless. Claim a result? No problem, just cover that up in claim construction.

    But the SC does get it. There is a remarkable difference between the two courts on the requirements for claims in terms “particularly point out and distinctly claim.”

  21. If the claim recites a series of steps that produce a new result, and the steps are disclosed, the claimed method clearly is eligible.

    It think you miss the point, 101.

    The point is that the claim does not claim the steps at all, just the new result.

  22. 101, I think what the SC had in mind something like a broad range of equivalents for pioneering inventions.  But the claim still could not conver the future "independent" inventions of other that did not drawn on the patent, but nevertheless accomplished the same work.

  23. And let’s not forget his odd views on the Chakrabarty case.

    I am afraid that Ned has too severely compromised his views on case law given his third party interests. He has shown himself unable to separate himself from an interested (and biased) viewpoint – at least regarding 101 matters. On some other matters, Ned has been able to be more forthcoming in discussions.

  24. “And that problem goes to the heart of the most vexing problem we have today in patent law: over broad, functional claims that claim a result. They are inherently indefinite.”

    If performing the steps in the claims ( irregardless of breadth) produces the new and useful result described in the specification, how exactly would that make the claims indefinite?

  25. “That is, unless you deny that those cases exist.”

    Since the Court told us in Bilski that it’s precedents stand for no more than the principles in Diehr, my question is; how do you reconcile those cases with Diehr?

    And specifically how do you reconcile those cases with Diehrs mandate of claims as a whole/no dissection, and integration?

    Or do you just deny the Diehr case exist?

  26. Ned: “I invent the cure for one cancer. I claim the cure for that cancer without any details as to what the cure is. Naturally, the claim covers my invention. It also covers ever other cure for the same cancer.”

    That’s simply a 112 problem. And easily fixed while drafting the application.

    So what would be your point?

  27. “If one invents on way of accomplishing a thing, one cannot patent all ways of accomplishing that thing.”

    So now pioneering inventions are no longer patent eligible?

    That would amount to “retarding” the progress of the useful arts!

  28. anon, I think they do stand for what I say they do.

    If one invents on way of accomplishing a thing, one cannot patent all ways of accomplishing that thing. But that is what happens when one claims a machine, an article or a composition by describing the the result it achieves, by what it does, rather than what it is.

    The cases I cite all have this as a central theme.

    BTW, answer me this, anon, do you see any vice in a claim that covers all ways of communicating intelligible symbols at a distance using electro magnetism? What a about glue by comparing its qualities to a known glue? What about a filament composed of grains that prevent sagging? What about a sensor that counts the number of tubing collars by whatever means? What about a ice carving machine… without the slightest detail of how that machine is constructed?

    I invent the cure for one cancer. I claim the cure for that cancer without any details as to what the cure is. Naturally, the claim covers my invention. It also covers ever other cure for the same cancer.

    Your continued opposition to this principle of patent law is what gives one pause, anon. This proposition of law handed down to us by Story and by the Supreme Court in any number of cases is quite simple to understand.

    Perhaps, like Rich, you find no vice in such claims as they all could be construed to cover only the disclosed means and methods. But even if that were true, anon, there still would be a problem, would there not?

    And that problem goes to the heart of the most vexing problem we have today in patent law: over broad, functional claims that claim a result. They are inherently indefinite.

  29. Ned,

    Your false logic is that because those cases exist, they must mean what you say they mean.

    They don’t.

    Stop with the canards already.

  30. a device configured to perform a recited function….

    If that is the claimed invention, then it surely runs afoul of O’Reilly v. Morse and its progeny that includes Perkins Glue, GE v. Wabash Appliance and Halliburton Oil v. Walker.

    That is, unless you deny that those cases exist.

  31. Improve (blogging) quality:

    Do not perpetuate canards like “Point of Novelty.”

    Treat “configured to” as established in the art: structural (LOL, Ned you can even ask MM, as he has volunteered this admission).

    Reference numbers… Meh, a minor nit.

  32. Improve quality:

    1. Do not permit functional or equivalent generic terms at the point of novelty. Suggest that elements that are defined functionally be placed before a colon and be deemed part of the prior art.

    2. Treat “configured to” as functional.

    3. Require reference numerals.

  33. MM:The idea of having tiered rules (or merely multiple rules for different situations) is old as the hills.

    Is it a fact that the above is the idea/concept of the invention? ( Remember only the “Actual Inventor” can tell you that.)

    And did the inventors claim the disembodied idea or did they claim an application of the idea?

    Remember what Alice told you…

    “As the Supreme Court has recently acknowledged, “too broad an interpretation of [the exceptions to § 101] could eviscerate patent law. For all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Prometheus, 132 S. Ct. at 1293. Any claim can be stripped down, or simplified, removing all of its concrete limitations, until at its core, something that could be characterized as an abstract idea is revealed. But nothing in the Supreme Court’s precedent, nor in ours, allows a court to go hunting for abstractions by ignoring the concrete, palpable, tangible, and otherwise not abstract invention the patentee actually claims. It is fundamentally improper to paraphrase a claim in overly simplistic generalities in assessing whether the claim falls under the limited “abstract ideas” exception to patent eligibility under 35 U.S.C. § 101. Patent eligibility must be evaluated based on what the claims recite, not merely on the ideas upon which they are premised. In assessing patent eligibility, a court must consider the asserted claim as a whole. Diehr, 540 U.S. at 188.
    It is inappropriate to dissect the claim into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.”
    CLS BANK v. ALICE CORPORATION 20 Id. at 188-89.2

  34. What MM, and people like him must understand is that because they may not like or value a particular art or technology has no effect on patent eligibility. Such n approach would surely eviscerate patent law.

  35. “Did it really take three people to come up with the concept of controlling credit card access with a computer?”

    It’s not the concept but the “application” and thanks to Prometheus, the “integration” of the concept that matters. Also see Diehr, 450 U.S. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”); Research Corp., 627 F.3d at 868 (holding that a process is patent eligible subject matter when it “presents functional and palpable application in the field of computer technology.”); Alappat, 33 F.3d at 1544-45 (holding that claims directed to a specially-programmed computer—a “specific machine to produce a useful, concrete, and tangible result”—are directed to patent eligible subject matter).

  36. MM: “This is a classic attempt to claim an abstraction ”

    Oh really? Let’s see. In Diehr the overall process was patent eligible because of the way the additional steps of the process “integrated” the equation into the process as a whole. 450 U. S., at 187. These additional steps transformed the process into an inventive application of the formula. ) [MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC 566 U. S. (2012) 3 Syllabus] (Emphasis Added)

    Using the Courts line of 101 cases as the lens thru which to determine when claims are “integrated” it is apparent that a new and useful process claim in general has a clear presumption of “Integration” and the presumption remains valid, and requires no further analysis under 101 unless the claims as a whole recite;

    1. A bare Court created judicial exception, (derived implicitly from the Congressional Statute of 101) or

    The first element of the claim is a bare Court created judicial exception (derived implicitly from the Congressional Statute of 101) followed by additional steps or claims that apply the judicial exception. In the case of the latter, analysis for extra-solution activity, (pre or post ) occurs to determine if the claims are integrated or instead pre-empt the judicial exception. We can look to the Court’s definitions of “abstract” to help us with this claim.

    “[a] principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.”Bilski II, 130 S. Ct. at 3230 (quoting Le Roy v. Tatham, 55 U.S. (14 How.) 156, 175 (1852)).

    1.We know the claim “as a whole” is not a fundamental truth; an original cause; a motive.

    “a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011),

    2. We know the claim “as a whole” can’t be performed entirely within the mind.

    3. We know It has not been proven the claim “as a whole” preempts an unapplied concept.

    Therefore, in keeping with Supreme Court precedent and line of 101 cases, the claims “as a whole” maintain their presumption of “Integration” and are not abstract.

    Now whether the claims fail at 102 or 103 requires a different set of questions and analysis, but I can assure you simply “mocking” the claims will not suffice as an effective argument in any [C]ourt. Any questions? I am here to help.

    ——————————————————————
    1. A method for establishing a multiple-tier transaction rule based at least partially upon geographic location using a handheld electronic device comprising:

    using the handheld electronic device to define the multiple-tier transaction rule by:

    defining a first geographic limit and selecting a first control action to be implemented if a transaction initiated by a subsidiary financial account linked to a primary account belonging to the user of the handheld electronic device violates the first geographic limit;

    defining a second geographic limit and selecting a second control action to be implemented if the transaction initiated by a subsidiary financial account violates the second geographic limit;

    defining a third geographic limit and selecting a third control action to be implemented if the transaction initiated by a subsidiary financial account violates the third geographic limit; and

    defining a fourth geographic limit and selecting a fourth control action to be implemented if the transaction initiated by a subsidiary financial account violates the fourth geographic limit, wherein the first, second, third, and fourth geographic limits are different from one another, and wherein the first, second, third, and fourth control actions are different from one another; and communicating the multiple-tier transaction rule to an external server controlled by a financial entity that manages the primary account and subsidiary account, wherein the communication of the multiple-tier transaction rule causes the external server to apply the multiple-tier transaction rule to the subsidiary account.

  37. MD: I’m reminded of telephone systems in law firms which assign to different levels of employees different degrees to which they can dial telephone numbers outside the firm.

    You should be reminded of that. The idea of having tiered rules (or merely multiple rules for different situations) is old as the hills.

    Yes, friends, it’s been true for most of our entire lives that computers can be instructed to control all kinds of activities “automatically”. Merely describing another context in which such control can be implemented is not “inventing.” And make no mistake: nothing more or less than that is being claimed here. Instead of a “financial transaction”, these “rules” could relate to any other activity that requires electronic access. Throw in a couple robots or humans “equipped with devices capable of receiving electronically transmitted information” and you can expand that to non-electronic activities. Where’s the “inventing”?

    Even if companies can’t get the broad claims, then they’ll just try to get claims covering the “rules” that are being “implemented”. So now we’re patenting “rules” for deciding when someone can and cannot do something … using an old computer. Oh, right: it’s a small computer now. Nobody could have predicted that computers would get smaller and portable back in 2009.

    Heckuva job, Kappos.

    A hand-held device though. There’s a thought.

    An incredibly, nearly impossibly shallow thought but surprise! a thought that is driving an incredible number of patent applications these days. A hand-held device!! What will they think up next??????

    Flashback to 10-15 years ago when patents were being filed (and granted) on all sorts of ancient, obvious activities like buying something on credit from a merchant that knows who you are (so you don’t need to tell him a secret word and confirm that you really wanted to buy that thing before you he takes your money) … USING A COMPUTER! Or claiming a prize based on a raffle number associated with a purchased item … USING A COMPUTER!

    It’s hard to imagine how primitive our world would be had those patents not been available. What other possible incentive would exist to implement such brilliant inventions which were technologically light years ahead of their time?

    I’m curious about the three inventors on this patent. Did it really take three people to come up with the concept of controlling credit card access with a computer? Was one of them in a meeting saying “Hey, I just thought of something. You can set rules to control access to your credit card with a hand-held device.” And then the other one suddenly piped up “Dude, think about this: you can set rules for YOUR KIDS with a hand-held device.” And the first “inventor” says, “DUDE! That is so intense.” And then the third inventor is all “Dudes, you can set rules based on stuff like where the card can be used.” And the other two guys are like “DUDE! You are so on this patent application with us!!!”

    America is the best. I’m thinking at least ten jobs are created when this patent is granted, minimum.

  38. My “good system of note-taking” is the specification. I give some background, I give a summary of the invention, and then I give a detailed description. If that written description does not inform all later comers of the key features of the invention, then I have failed at my job.

  39. I’m reminded of telephone systems in law firms which assign to different levels of employees different degrees to which they can dial telephone numbers outside the firm. I, as partner, can dial any number in New Zealand, my assisting attorney if it is a client, my paralegal and secretary not. When it comes to numbers/clients in Europe and when it comes to domestic numbers/clients, access is not so heavily restricted.

    A hand-held device though. There’s a thought. I wonder, is a PC keyboard a hand-held device?

  40. Case in point
    US 20130018792

    1. A method for establishing a multiple-tier transaction rule based at least partially upon geographic location using a handheld electronic device comprising: using the handheld electronic device to define the multiple-tier transaction rule by: defining a first geographic limit and selecting a first control action to be implemented if a transaction initiated by a subsidiary financial account linked to a primary account belonging to the user of the handheld electronic device violates the first geographic limit; defining a second geographic limit and selecting a second control action to be implemented if the transaction initiated by a subsidiary financial account violates the second geographic limit; defining a third geographic limit and selecting a third control action to be implemented if the transaction initiated by a subsidiary financial account violates the third geographic limit; and defining a fourth geographic limit and selecting a fourth control action to be implemented if the transaction initiated by a subsidiary financial account violates the fourth geographic limit, wherein the first, second, third, and fourth geographic limits are different from one another, and wherein the first, second, third, and fourth control actions are different from one another; and communicating the multiple-tier transaction rule to an external server controlled by a financial entity that manages the primary account and subsidiary account, wherein the communication of the multiple-tier transaction rule causes the external server to apply the multiple-tier transaction rule to the subsidiary account.

    This is a classic attempt to claim an abstraction (a method for “establishing a rule” – try to believe it) in the form of a flowchart. There’s lots of words. It looks sorta complicated at first glance.

    Note first the lame attempt to “limit” the claim by the recitation of “hand-held device,” as if the recitation of this ancient “device” somehow makes a difference with respect to the computer-implemented and non-computer implemented art that renders this p.o.s. obvious.

    Note second the equally lame attempt to “limit” the claim by the recitation of the activity (“financial transaction”) that is prohibited by the “rule” that is “established” by the method.

    What we’re looking at is an attempt to claim a method of “establishing a rule” that allows an owner (e.g., a parent) of a subsidiary account (e.g., a shared credit card account) to control access of that subsidiary account by a particular user (e.g., a child). In other words, “Hey, Junior, I don’t want you to use that credit card I gave you when you go to Ft. Lauderdale.” That’s the invention.

    Oh but wait! This is “multiple tiered”! That means there are additional rules. “Hey Junior, I don’t want to use that credit card when you go to Ft. Lauderdale or Daytona Beach.” (what possible difference could this make for patentability, whether there is 1 such rule or 2 or 3? )

    Oh but wait! There are different rules depending on where you go. “You can use the $100 on the card to take your Grandma in Tallahassee out to dinner”. (what possible difference could this make for patentability?)

    Oh but wait! The financial institute is involved. “Junior, I called the bank and they aren’t going to let you use that card anywhere in Florida except in that restaurant in Tallahassee”. (what possible difference could this make for patentability?)

    Oh but wait! The rule doesn’t rely on communicating to people with voices. It’s done using a POWERFUL COMPUTER BRAIN. But using a computer to control access is ancient. How can that matter?

    Oh but wait! This brain FITS IN THE PALM OF YOUR HAND! No, that can’t be the answer. Hand-held devices were ancient when this application was filed back in the dark, dark ages of 2009 long before kids had shared credit card accounts with their parents and before anybody dreamed of controlling what the kid could do with that account.

    Oh but wait! This PALM-SIZED POWERFUL COMPUTER BRAIN is capable of taking into account geographic information! That must be it. Computers weren’t capable of doing that in 2009 and these guys figured out a solution to that problem. That must be it. Right?

  41. your post indicated a real man, INCLUDING a real man’s mental furniture and that the quote you just now add indicates that the legal “man skilled in the art” is precisely not a real man, as real men carry withthem real imagination and have some inventive capacity.

    Also, sometimes that real man likes to smell like a different-smelling man.

    I’m on a horse. He seems thirsty.

  42. most patent prosecutors have got better things to do than to draft ambiguous claim language that makes it harder for them to get the application allowed.

    Right. And they have better things to do than to draft crystal clear claim language that will never get allowed. Any other strawmen you want to discuss?

    The point (again) is that the skilled prosecutor learns to draft claims that appear to be narrow, thereby obtaining the patent with a minimum of prosecution history, but understands how those same claims can be interpreted more broadly if the patentee desires to do so. Of course, narrower and less ambiguous and more plainly valid claims can be presented in another application should there be an actual client product to protect.

    Do patent prosecutors have “better things to do” than the above? Maybe. But I think this is on the short list of required skills.

    I worked in an office with over 100 IP attorneys (litigation/prosecution/trademark/everything). Your belief about how much information gets shared is idealistic.

    I think your office just didn’t have a robust system for communicating information between practice groups. You know, you can get MCLE credit and often times a free lunch when you attend a qualifying presentation.

    these suggestions would put getting a patent out of the range of all but the very well heeled

    The cost might go up a little bit, but not much. I don’t think it would have a noticeable effect on who’s filing patents. We know that almost all patent applications filed these days are filed by “the very well-heeled”. Who else has the money to gamble with? We’re in the middle of a nasty recession. Only the richest people in this country are making more than they did back in 2008. You think it’s poor and middle class people who suddenly decided to invest in patent applications when the housing market collapsed? Really?

  43. Great first step – now take the second and recognize that your post indicated a real man, INCLUDING a real man’s mental furniture and that the quote you just now add indicates that the legal “man skilled in the art” is precisely not a real man, as real men carry withthem real imagination and have some inventive capacity.

    Rather than getting p1ssy (and undeservedly so, I might add), you might want to take a step back and realize that you misspoke.

    The automaton point I raised has clear, unmistakable, and substantive legal impact. Your reaction to my post highlight the “you” problem that You need to overcome (the Leopold Disease).

  44. There was nothing in my post requesting gratitude from readers – and provoke you into a worthwhile post is exactly what I did. Quite the contrary, my posts helping you understand at done in a selfless manner. And while at times it may seem that I am being cruel to be kind (in the right measure), you do deserve credit, and that is what I did provide to you as well.

    The proper response, Max, is “Thank you.” I think it’s wonderful that anon has (selflessly) helped you to understand the EPO conception of the “man skilled in the art.”

  45. the UK Court of Appeal’s definition of the PHOSITA.

    The one passenger on the Clapham omnibus who could be called upon to repair it?

  46. Readers, I thought you might enjoy the UK Court of Appeal’s definition of the PHOSITA. So here it is. Below it is a link to the IPKat blog, out of which I copied the passage from the Rockwater judgement:

    “The “man skilled in the art” is invoked at many critical points of patent law. The claims of a patent must be understood as if read by that notional man – in the hackneyed but convenient phrase the “court must don the mantle of the skilled man.” Likewise many questions of validity (obviousness, and sufficiency for instance) depend upon trying to view matters as he would see them. He indeed has statutory recognition – Arts. 56, 83 and 100 of the EPC expressly refer to “the person skilled in the art.”

    It is settled that this man, if real, would be very boring – a nerd. Lord Reid put it this way in Technograph v Mills & Rockley [1972] RPC 346 at p.355 : “… the hypothetical addressee is a skilled technician who is well acquainted with workshop technique and who has carefully read the relevant literature. He is supposed to have an unlimited capacity to assimilate the contents of, it may be, scores of specifications but to be incapable of scintilla of invention. When dealing with obviousness, unlike novelty, it is permissible to make a “mosaic” out of the relevant documents, but it must be a mosaic which can be put together by an unimaginative man with no inventive capacity.”

    And now the Link:

    link to ipkitten.blogspot.de

  47. Most attorneys have got better things to do than to fine tune claim language to make it harder on some potential licensee 6 years down the road.

    Better things to do? Isn’t what you just described a patent prosecutor’s entire job?

  48. I don’t need those.

    There’s been a debate over at Karen Hazzah’s blog (allthingspros) about the level of ordinary skill in the art, and whether examiners should be required to resolve this factual inquiry during examination, and of course provide evidence to support their findings.

    From just going back and reading some cases, in particular Standard Oil v. American Cyanamid, it seems to me that resolving the factual inquiry of the scope and content of the prior art answers the question of what PHOSITA knows, and resolving the factual inquiry of the level of ordinary skill in the art answers the question of what one of ordinary skill in the art can do with that knowledge.

    I’ve said in previous posts that my biggest disappointment with the KSR decision was SCOTUS’s failure to actually address the statutory language of section 103(a) and provide some guidance/insight/clarity/direction to what it actually means. Instead what we get is “one of ordinary skill is one of ordinary creativity.” Thanks for the gobbledygook, SCOTUS.

    I have gotten responses to my previous posts from the academic types on this site that tell me that KSR is crystal clear. I don’t see it that way, but I’ll muddle along as best I can.

  49. “I gather that US drafting is this way because American litigators require it so.”
    Hardly. Most patent prosectors don’t care about litigation.

    FYI — you get what you ask for.

  50. Funny you should say that Alun because my problem is getting to issue with stuff that was drafted in the USA, written in what the writer supposes to be English, with varying degrees of success. What I get to work on is a hopelessly broad statement of invention followed by an interminably lengthy detailed description of one or more pinpoint specific embodiments within the envelope. Between the balloon and the pinpoint there is sod-all in the way of useful intermediate generalisations of what the perceived inventive concept was thought to be, and what degree of performance enhancement is delivered by each successive focussing step.

    So, when the EPO finds art prejudicial to patentability of the main claim (as it invariably does) I am in no shape to focus down to something of useful scope intermediate between unpatentable claim 1 and the illustrated embodiment. A bit of a shame for the Applicant, actually.

    I gather that US drafting is this way because American litigators require it so. I gather they so require it because it works better in court. OK, the CAFC knows best, I suppose.

  51. “Duck.”
    You missed the main point … most patent prosecutors have got better things to do than to draft ambiguous claim language that makes it harder for them to get the application allowed. Maybe some people with lots of money to spend do it, but it isn’t pervasive in the least. BTW — I worked in an office with over 100 IP attorneys (litigation/prosecution/trademark/everything). Your belief about how much information gets shared is idealistic. Most attorneys have got better things to do than to fine tune claim language to make it harder on some potential licensee 6 years down the road.

    “Can you move the goalpost any further?”
    Move the goalpost? One involves legal analysis … the includes what? data processing?? Not comparable.

    “spits out a sequence listing that doesn’t need to be proofread”
    wow … proofreading … very intensive work.

    “What sort of ‘legal analysis’ do you have to do to determine your OWN intent.”
    As I said, you need to do a Markman-type analysis on the claim language/specification. This isn’t normally done … if it is done, it is time consuming (hence, expensive).

  52. It is a fiction that this process is non-adverserial. If it were true, then some of these ideas might be more popular.

    That said, I beleive the applications I draft are high quality, but they are written based on the applicant’s needs, not the examiners’.

    The bigger problem I have is that I prosecute mostly foreign origin apps drafted by someone else who plans to file in a country other than the US and then translated into English with varying degrees of success.

  53. Do not be surprised if, when he runs out of challenges, his next sally to prolong the thread will be to tell you (as he did yesterday) that readers should all be grateful to him, for his sterling work in provoking me (despite my being “inane”) into providing readers with useful insights.

    Runs out of challenges? You are ASSuming too much (namely, that you present a challenge).

    There was nothing in my post requesting gratitude from readers – and provoke you into a worthwhile post is exactly what I did. Quite the contrary, my posts helping you understand at done in a selfless manner. And while at times it may seem that I am being cruel to be kind (in the right measure), you do deserve credit, and that is what I did provide to you as well.

    You are just suffering from the Leopold disease, and you just are not appreciating the help and learning opportunities that I provide to you.

    Well, you can lead a horse to water…

  54. You kind of have to be a patent litigator to know what a patent litigator wants.

    LOL. Many of us have litigated patents and prosecuted them. Also, many of us work side by side with patent litigators and attend meetings where patent litigators discuss the issues that arise during litigation. Also, our clients are involved in litigation or anticipating litigation or licensing and tell us what they’d prefer. Also, most of us can read. Also, you’ve already admitted that you know what litigators want. Now you seem to want to backtrack and at the same time you gleefully point out your admission, again. What. The. Duck.

    As for this:

    “Preparing an electronic sequence listings for biotechnology applications. Have you ever prepared one?”

    Oh please. You don’t have to do any legal analysis on that. It is mere “data” … can’t you get some computer to automatically do that?

    LOL! Can you move the goalpost any further?

    What sort of “legal analysis” do you have to do to determine your OWN intent? And by the way: of course a computer is helpful for preparing a sequence listing (just as they are helpful for preparing claim charts and the like) but I’m not aware of any software that reads your application and spits out a sequence listing that doesn’t need to be proofread. Then again, I wouldn’t be surprised if you argued that proofreading applications is the PTO’s job.

    Getting a patent is very costly as it is now

    Hmm. Really? Tell me: how much money equals “very costly”?

  55. “If you don’t believe that tortuously ambiguous and difficult-to-construe claims exist, just say so.”
    Thanks for not answering the question. I understand you excel at that.

    “Thank you for admitting that finally.”
    Finally???? I wrote ” Litigators like squishy language” on January 15th at 3:52PM, which is in my first response to you.

    “Maybe you also realize that some prosecutors draft patent cases with the understanding that the patent may be litigated. Do you suppose that such a prosecutor might attempt to obtain a patent that the litigator will like?”
    The vast majority don’t. You kind of have to be a patent litigator to know what a patent litigator wants. Being a patent litigator means you have no life and no time to do patent prosecution. This means most patent prosecutors don’t know the type of language that works best for litigation. Also, patent prosecutors usually don’t have unlimited budgets to work with. What you are suggesting is far too time consuming to be given any priority by the average patent drafter.

    “invalidating a patent for indefiniteness is nearly impossible”
    Invalidating an overly-broad patent is easy.

    “the patentee threatens to ‘cut’ the alleged infringer who may have had no idea that he/she was doing anything ‘wrong’”
    Cry me a river… it happens all the time … even with “perfect” claims.

    “Then you dropped to $10,000. Let’s say that’s a realistic number, just for arguments sake. That’s chicken feed for most people?”
    If you are getting sued or even being threatened, it is chicken feed. Nobody is seriously going to sue anybody unless they are expect a return over well over a couple million dollars because it’ll take at least a million to go to trial. Only idiots sue somebody when the realistic return of their lawsuit is $50K – it’s a bad business decision.

    “it’s almost always immediately apparent to the accused what they are accused of doing (or not doing) and how that behavior relates to the law, which is intuitively grasped by most adults”
    In your perfect world it is. The law is complicated – come to grips with it.

    “Preparing an electronic sequence listings for biotechnology applications. Have you ever prepared one?”
    Oh please. You don’t have to do any legal analysis on that. It is mere “data” … can’t you get some computer to automatically do that?

    “the point of the rules is to minimize the amount of money that accused members of the public need to spend wondering if they need a Markman hearing”
    Rules? What rules? You mean the suggestions? So you are asking that we do for each of 100 patents that would only be done for 2 patents (assuming 2% of patents get litigated). Actually, that number is higher because we would be doing it for all patent applications (a higher number than issue patents). Wow … some cost savings there. Also, a Markman hearing is not done for all of the claim language. I’m sorry, it is UNREASONABLE to treat every patent application as a mini-litigation. Getting a patent is very costly as it is now … these suggestions would put getting a patent out of the range of all but the very well heeled … not going to happen. That’s the real world – not your fantasy land.

  56. You think so IANAE? Well, OK. I’m grateful for that insight. Mind you, given the propensity of even highly-educated Americans casually to use nouns as verbs I’m not completely confident that your comment is meant ironically, or is a play on words.

    Be that as it may, if you had written “Nobody incites you like he does”, I would have been inclined promptly to tell you that I agree. Except that might encourage him.

  57. readers should all be grateful to him, for his sterling work in provoking me (despite my being “inane”) into providing readers with useful insights.

    Nobody insights you like he does.

  58. Here we go again. Once again a peremptory demand from anon to “please explain”, and addressed to somebody who, in the same breath, he judges to be “inane”.

    One might wonder, if somebody is inane, what is the point of asking him to explain anything? But readers, we know what his point is. Anything will serve, just to keep the thread going.

    Readers, you will not be surprised to read that, in my infinite discretion, I judge anon’s question not worth addressing. To my mind (and that of every patents judge in Europe) there is no contradiction between possessing the general knowledge of a person of ordinary skill in the art and, at the same time, zero ability to conceive inventive thoughts.

    To my mind, only a reader “desirous of misunderstanding” could bring themselves to write the stuff anon persistently writes.

    Do not be surprised if, when he runs out of challenges, his next sally to prolong the thread will be to tell you (as he did yesterday) that readers should all be grateful to him, for his sterling work in provoking me (despite my being “inane”) into providing readers with useful insights.

  59. Les, my “ruthless” applies also to judges. “Obvious because I say it is obvious” is not tolerated under EPO-PSA.

    Agreed, that once the patent application is on file, developers can talk openly to their peer group.

    Agreed that what lies under the Heading “software patents” is often gibberish or gobbledygook. That is because drafting attorneys have found out that such a drafting style pays dividends in the USA.

    I assure you, once they are thoroughly familiar with it, and experienced in how to work it skilfully, engineers and scientists become fans of EPO-PSA. The main reason why it is not yet widely adopted away from the EPO is that patent practitioners outside the EPO circle blithely suppose they know how it works, without even bothering to take instruction what it is all about, and that it is fundamentally and fatally flawed. Little do they know.

  60. and your mere labeleing of anyone so complaining as belonging to that group does not count.

    You’re right, it was unfair of me. Not all of them insist on being vague and ambiguous. Some just have a thing for gratuitously using big words they can’t spell or understand.

    I can see why you took my comment so personally, though.

  61. By people who insist on filing…

    By many more than just that select group – and your mere labeleing of anyone so complaining as belonging to that group does not count.

    Your ardent support (and moniker choice) belies this feeble attempt at mischaracterizing my comment.

  62. While I see your point Les (and patents are most definitely more of legal instrument than technical learning piece), you still have the basic understanding of Quid Pro Quo to square with (especially since having a patent carries with it no requirement to publish anything anywhere else).

  63. Another of MaxDrei’s inane self-contradictions:

    devoid of any inventive faculty whatsoever” and “comes programmed with the mental furniture…that every real person… possesses.

    MaxDrei, please explain how “devoid” and “whatsoever” can be equated to a real person in the art’s mental furniture. Since the meaning of “devoid” (entirely lacking) is further emphasized with “whatsoever’ (as in, without limits), this should be interesting.

    If you are not sure, then I suggest you choose your words more carefully to begin with.

  64. this is a common lament against US examiners,

    By people who insist on filing vague and ambiguous claims, and then wonder why they’re rejected in view of barely relevant art. Funnily enough, the PTO has a complaint about those applicants too.

  65. “That is because EPo-PSA forces structure on the obviousness debate and ruthlessly shutss.”

    I don’t think ruthlessly ending the argument is a good thing. I’m more concerned with fairness than I am with simple making a decision, wrong or right.

    Of course, those that are acclimated to patents can get something out of them. But if you spend any time on, for example, Growklaw, which is frequented by software developers, it wont be long before your reading posts about how patents don’t “promote progress” because they are impossible to understand.

    Once the subject matter is protected by a patent application, the inventors are free to publish technical papers and articles. Its those that their peers get something from.

  66. Some inventors have a pretty good idea of the state of their art. Sometimes the examiner can’t find better.

    This has almost no correlation with what US examiners present as “D1″ in US prosecution. Quite in fact, this is a common lament against US examiners, for whose ardent defense IANAE derives his moniker (and one of several reasons why he is typically not taken seriously).

  67. “Under PSA, you need a prior publication that is a realistic starting point for the PHGOSITA (who knows all the art but has no inventive faculty).”

    Unfortunately, in their ultimate wisdom, the Nine have informed us here in the U.S. that one of ordinary skill in the art is not an automaton, but one of “oridnary creativity.” Whatever that is.

  68. Now I understand. And I agree. For me and my clients, it happens a lot. It is more likely to happen when the engineer is an employee of a company which monitors the A publications of its competitors’ patent applications.

  69. Ooo ooo! what about requiring all applicants to file an Examination Support Document? and limiting the number of continuations to 2 and claims to 25? and getting rid of RCEs? what a fantastic idea! I’m just getting a sense of deja vu, but I can’t imagine why….

  70. Has there ever been an occasion when you know before you’ve seen D1?

    Some inventors have a pretty good idea of the state of their art. Sometimes the examiner can’t find better.

  71. I do like your “sometimes”. Has there ever been an occasion when you know before you’ve seen D1?

    I agree that Europe imposes on patent attorneys a tough standard of drafting. But at least in the UK, it was ever thus. UK patent agents have always had to draft thoughtfully. We think we are worth it. we think this is higher value work than what the litigators do.

  72. Just write c-i-t on the end of the claim as filed, pull out of your head what invention you just now invented, and write that after the words c-i-t? IANAE, you might suppose this to be manifestly absurd but I can assure you that very many US patent attorneys try to do exactly that, when faced with EPO objections to patentability. Over here, we wonder where they get the idea from, that this approach might actualy succeed.

    I think the idea is more or less unavoidable if you’re bad at drafting dependent claims, or if your client only really looks at claim 1.

    Sure, you’d ideally get your added feature from claim 2, but I also prosecute a lot of applications that were drafted by other people, and sometimes you don’t know what distinguishes over D1 until you’ve seen D1.

  73. Oops, sorry. I wrote “uninventive faculty” It should of course have been “inventive faculty”. But you already realised that though, didn’t you?

  74. Folks I am not sure that a PHOSITA devoid of any uninventive faculty is no more than an automaton.

    Meanwhile, I am 100% sure that the European PHOSITA comes programmed with the mental furniture, the common general knowledge, that every real person of “ordinary skill” in that particular special technical field possesses.

    Does an automaton have this? I’m not sure. Anybody know?

  75. Les we agree on some of your remarks (patent roadblocks promote progress; patents are often turgid, repetitive and deliberately obfuscatory) but disagree on others (a non-obviousness requirement necessarily obfuscates the law; publication of patent applications does not stimulate progress). Much of my work is in medical devices, invented by people in US-owned corporations. The idea that engineers there don’t read PTO 18 month A publications and do not understand their drawings and detailed description is describing is, sorry, not my experience.

    I wish I could have you in my room for 15 minutes to walk you through the EPO Problem and Solution Approach to obviousness. The engineers and scientists with my client corporations love it. At EPO opposition hearings obviousness takes far less time than enablement, new matter and novelty. That is because EPo-PSA forces structure on the obviousness debate and ruthlessly shutss out the waffle, the hot air and the hand-waving that normally comes with an argument what 6 or 7 years ago was or was not obvious.

  76. Worth repeating:

    No one is seriously saying that an applicant has the ability to draft the initial application (the as-filed application) with D1 squarely in front of her.

    At least, no one who should be taken seriously.

  77. Les,

    Review what the Quid Pro Quo means. MaxDrei is actually closer than you on this point.

    Interesting caveat that should not be let go by without comment is the substantial legal difference in PHOSITA in EP being essentially an automaton.

  78. Just write c-i-t on the end of the claim as filed, pull out of your head what invention you just now invented, and write that after the words c-i-t? IANAE, you might suppose this to be manifestly absurd but I can assure you that very many US patent attorneys try to do exactly that, when faced with EPO objections to patentability. Over here, we wonder where they get the idea from, that this approach might actualy succeed.

    I say to them that the EPO “added matter” prohibition is like their requirement for a “written description”. It gives them pause, but not much. Then I tell them about the Article 123(2)/(3) post-issue fatal trap that they are dropping their clients into. Again, that gives them pause but sometimes no more than that. One would think that malpractice suits would be scarier than that.

    Rearrange the features? Yes, OK often it is straightforward to do just that. But when the terminology of D1 has nothing in common with that of the claim, you might be surprised how hard it can be accurately to allocate the features disclosed in D1 between the first and the second part of a c-i-t claim.

  79. Yes Max I do agree that stuff I’ve never seen before destroys novelty.

    My problem with obviousness or inventive step is that the level of obviousness in something is inversely proportional to the arrogance of the observer. At a high level of arrogance, everything is met with an eye roll. At a low level of arrogance, everything is observed with wide eyed child-like wonder.

    If you want certainty, then issue patents for obvious inventions as long as they are novel. Anything else leads to uncertainty as obviousness is in the eye of the beholder.

    I disagree with you, by the way, about progress being promoted by reading patents. Patents are written necessarily so broadly and with so much court ruling driven legalese that engineers and scientists can barely understand them. Progress is promoted because investments in development of new things (even beverage cartons with relocated finger tabs) are protected by patents.

  80. Hell of a time to be redrafting claim 1.

    If D1 is an anticipation, you’ll have to redraft claim 1 anyway, same as you do now. Or would, if you prosecuted patents. Just add “characterized in that” at the bottom, and whatever you wanted to add.

    If D1 is not an anticipation, it’s simply a matter of rearranging the claim features that are already in there. You shouldn’t need the inventor holding your hand to do that.

  81. Your ‘another wording’ is no more effective at avoiding the fundamental problems I have noted than your initial wording (you should note that it is not a matter of ‘not understanding’ your wording, but rather that you have legal and procedural matters to be dealt with).

  82. Ok, let me put this into another wording.
    What can Patent Applicants do to Improve Patent Quality? Do your home work and draft better application. :-)

  83. Ah well readers, there’s the thing you see, with FtF and the PHOSITA the notion of what is impermissible hindsight has to be re-set.

    Validity/patentability of a claim is judged as of the filing date X, relative to everything that was made available to the public up to and including date X – 1 but stopping at X – 1. The PHOSITA, being a notional member of “the public” is deemed to know all that art but deemed also (in Europe anyway) to be devoid of any inventive faculty whatsoever. For the examination of obviousness to be objective, it is deemed that the P..had all the X – 1 art when she wrote her patent application the day before she filed it at the PTO.

    If you do it any other way, the inventor who knows least about the art gets the biggest scope of protection.

    I know that there is another reason why corporations forbid their engineers to read patent alerting bulletins, and I know that Seagate has mitigated that concern but, dannnnit, patent publications are supposed to be read, hot off the press, aren’t they, to promote the progress.

    Les, when it comes to novelty, you accept that stuff you never saw before is effective to destroy your novelty. In Europe, it’s the same with inventive step. Discard the notion of the PHOSITA (no real person has its characteristics) and you throw away any chance of getting anywhere near legal certainty.

    Of course, amongst lawyers who earn their crust by litigating patents, legal certainty is the last thing they want.

  84. No one is seriously saying that an applicant has the ability to draft the initial application (the as-filed application) with D1 squarely in front of her.

    At least, no one who should be taken seriously.

  85. You don’t have D1 until after the first office action. That’s 3 or 5 years after the inventor left the company. Hell of a time to be redrafting claim 1.

  86. While these things may indeed be “best practices,” Mikk, you still run into a fundamental problem in that the Office simply lacks authority to make the law that would require such practices. See Tafas. In particular, the prior art search is simply not a current requirement in US law at all (no matter how much sense it may make), and the Office does not have the authority to force one. Again, see Tafas.

    As to the link, one needs to remember that any punctuation at the end of the http string is wrapped in.

    A working link: link to epo.org

    And finally, I do not doubt that patent attorneys as such would actually love these types of requirements to be made mandatory (generally), as these would simply add to necessary legal billings. The flip side (of course) is that anytime you try to induce quality through expense, you run right into the fallacy of “Sport of Kings,” and you risk pricing out “for quality” the very targets (notwithstanding the MM QQ laments) that would benefit most from a patent system (Big Corp really does not need patents as they have other resources to lean on for competitive advantage).

  87. Not only applicants, but patent attorneys also:
    - doing more and better prior art searches;
    - defining the problem;
    - comparing the invention with closest prior art;
    - implementing the problem-solution approach (see link to epo.org)

  88. Why is it unfair to require…

    Because the Office cannot write law to so require. See Tafas.

    Got a problem with what the law actually does require? Go talk to your Congressman.

  89. I asked you how you are acquainted with this type of language? Either you are an examiner (and are seeing this language during your job), or a patent attorney, in which case are you drafting these claims yourself?

    Um… those are hardly the only two options. You might want to take a deep breath, JS. Let the oxygen get down in your lungs so that there’s enough to reach your brain. You aren’t arguing with one of the mouthbreathers at the doghouse. If you don’t believe that tortuously ambiguous and difficult-to-construe claims exist, just say so. That’s your right. Enjoy your planet!

    Litigators like arguably “flexible” language

    Thank you for admitting that finally. It is, after all, a key point in my original comment way upthread. Maybe you also realize that some prosecutors draft patent cases with the understanding that the patent may be litigated. Do you suppose that such a prosecutor might attempt to obtain a patent that the litigator will like? Rhetorical question.

    Loose language cuts both ways.

    Again, in practice it’s the owner of the granted patent who does the “cutting” and invalidating a patent for indefiniteness is nearly impossible. In practice, the patentee threatens to “cut” the alleged infringer who may have had no idea that he/she was doing anything “wrong” (and in fact he/she was doing nothing wrong until the patent was granted). When threatened, the infringer is forced to spend time and money figuring out whether the patentee’s knife is actually sharp enough to cut and/or whether the patentee’s knife can be taken away. When the claims are not readily understood, the cost of engaging in even this preliminary calculation increases. This isn’t debatable. You know this. So you “argue” that it’s really not that much money to fix. At first yo u said it was “less than $100,000. Then you dropped to $10,000. Let’s say that’s a realistic number, just for arguments sake. That’s chicken feed for most people? We can just ask Dad for a raise in our allowances, is that right?. Just a way of life. Remember that time I had to spend $10,000 to get that patentee to stop threatening me? Bygones.

    Oh please … are we living in your perfect world where slip and fall and malpractice claims are always legitimate?

    No, slip and fall claims and malpractice claims are not always legitimate. But it’s almost always immediately apparent to the accused what they are accused of doing (or not doing) and how that behavior relates to the law, which is intuitively grasped by most adults. That’s not true of patents, which are essentially laws drafted by purely self-interested parties that, upon grant, immediately apply to every one in the country who hasn’t taken a license. And as you admitted upthread: the most agressive of these self-interested parties like those laws to be ambiguous. And they like that ambiguity for very obvious reasons that we need not repeat again (I hope).

    Please list some of the specific art units and describe what kind of “rules at least this onerous” exist?

    Preparing an electronic sequence listings for biotechnology applications. Have you ever prepared one? It’s just a tad more labor-intensive than stating “The preamble isn’t limiting.” Just a tad, bro’. And again: if you think that responding to those suggestions takes anything more minimal effort you are sadly mistaken. Most of those suggestions are already habits for those of us for whom 112 has mattered for many years. It goes without saying that your typical NPE/troll type would have litle interest in following any of those suggestions. Maybe that’s your angle. That would make sense.

    What is being asked is akin to preparing for a Markman hearing

    Oh, you mean the hearings where the meaning of claims is determined? You think those are expensive? LOL. Again, the point of the rules is to minimize the amount of money that accused members of the public need to spend wondering if they need a Markman hearing. Isn’t the original applicant in the best position to understand the meanings of the words and phrases it is using in its claims? Why is it unfair to require that the applicant provide this information in the most accessible way possible as a requirement for obtaining the patent?

  90. Strangely enough, the EPO c-i-t 2-part form is there not for clarity or for novelty but to structure the debate on obviousness according to EPO-PSA. Under PSA, you need a prior publication that is a realistic starting point for the PHGOSITA (who knows all the art but has no inventive faculty). Call it D1. Put in the first part of your claim all the features that D1 has too. In the characterizing part go all the features not disclosed in D1 to be in combination with the features of the first part.

    If there is no realistic starting point, or if division into c-i-t form renders the claim unclear, the EPO is supposed not to insist on it.

    But division into c-i-t form often brings home the truth to US attorneys, for example when the only thing left for the second half of the claim is something like “c-i-t the plate has a diameter between 5″ and 6″.

    For as long as the USA does not run EPO-PSA, I do not see how the USPTO can reasonably require c-i-t claims. Ned they are, of course, NOT the same as a Jepson claim.

  91. When reading PDF’s on a screen? Pretty tough.

    You know those marks you make on the monitor aren’t saved to the file, right?

  92. Les, I understand your point.  But I think the practice in Europe is just a bit different.  The examiners there require the applicant to put old elements into the pre-charaterising part of the claim.  This is not a voluntary admission by the applicant in advance of examination.  It is a conseqence of examination where the elements are found in the art and are not relied upon to distinguish the invention.

    Perhaps Max can explain the procedure to us better than I can.

  93. Our knowledge of what is old is imperfect

    Except when it comes to commercial success, apparently.

    In Europe, “what is old” is what is disclosed in reference D1. If your knowledge of that reference is imperfect, you could always go read it.

    sometimes the invention is at least in part in a change to something old and splitting the baby between old and new aspects is cumbersome and fraught with peril.

    … characterized in that the something old has new feature.

    Done and done.

    it would have been obvious to combine X with A for the reasons given in the specification.

    If you can’t draft without admitting that your invention is prior art, you might want to hire someone who can.

  94. Having prosecution being a few days after filing rather than a few years would reduce the chances that the personnel are shuffled.

  95. Yes. Our knowledge of what is old is imperfect and we would not like to be charged with identifying what is old. Also, sometimes the invention is at least in part in a change to something old and splitting the baby between old and new aspects is cumbersome and fraught with peril. Also, in the U.S. it will lead to instant obvious rejections.

    Applicant admitted that X was known, it would have been obvious to combine X with A for the reasons given in the specification.

  96. “Claims that are ambiguous, difficult to understand, and which take a lot of work to determine their scope don’t exist until you say so.”

    Answer the question … I asked you whose claims they were? I didn’t question whether or not “loose” claim language exists, I asked you how you are acquainted with this type of language? Either you are an examiner (and are seeing this language during your job), or a patent attorney, in which case are you drafting these claims yourself?

    “The applicant’s goal is to get the examiner to MISunderstand the limitation or fail to appreciate the ambiguity so the claim grants with the ambiguity intact.”
    For a very few… maybe. Most applicant’s goals are to get a patent on the technology they invention – preferably with broad claims. Personally, I don’t like ambiguous language but it cuts against you two ways: (i) the examiner will bring in prior art under BRI and (ii) an infringer will argue for a narrow claim construction. Litigators like arguably “flexible” language, but patent prosecutors have a hard enough time getting an allowance to worry about getting really flexible claim language. Finally, a point that I made earlier that bears repeating … the very nature of the English language lends itself to flexible language – you cannot get around that.

    “Then the public has to spend time trying to resolve the ambiguity. Of course, that public doesn’t include you because you are super duper smart.”
    And your point is? The law is complex – partly because it deals with complex issues. It is unreasonable to expect every Tom, Dick, or Harry off the street to perfectly understand a patent, a legal agreement, a contract, or the US Code.

    “But we were talking about the situtation where the claim scope isn’t clear. But you seem to believe that situation never arises.”
    ???? Loose language means that it can be squeezed in one direction or the other. If I’m a defendant, I’ll squeeze it the way I want it. If I have a good argument of non-infringement, that’ll ultimately mean that I’ll probably have to pay less than if their infringement argument was perfect. Loose language cuts both ways.

    “I think most people would agree that there is a profound difference between (a) negligent behavior that causes pain and suffering for another person and (b) infringing a patent that shouldn’t have been granted in the first place and can’t be understood without hiring a lawyer.”
    Oh please … are we living in your perfect world where slip and fall and malpractice claims are always legitimate?

    “infringing a patent that shouldn’t have been granted in the first place”
    ??????? Where did this come from? Try to be on point.

    “The ‘vocal minority’, right? LOL”
    Where is the big push for Congress for change 112 1st and 2nd? Where are the Senators and Congressman on the Sunday morning talk shows saying how they are going to clean up patent specifications? When that happens, come talk to me. Otherwise, I’ll stick to my comment of a “few critics here and there.”

    “rules are ‘traps’ only when they are nearly impossible to follow”
    You think providing explicit definitional support for all your claim language is going to be easy or inexpensive? Of course, unless there are penalties for failing to do so, few people will do it … as such, how do you propose to enforce these suggestions?

    “Second of all, rules at least this onerous have existed for years and apply to specific art units and also within specialized contexts at the USPTO.”
    Really? Please list some of the specific art units and describe what kind of “rules at least this onerous” exist? I am very interested to know what/where they are.

    “At the same time, more applications are being filed each month than ever before in the history of the USPTO. And we’re still in the middle of a huge recession. So it seems applicants are willing to pay.”
    So????? The cost of these “suggestions” would at least double the cost of preparing an application. In fact, if I was forced to do everything that was suggested, I would probably ask 4X as much for preparing an application as I do now. What is being asked is akin to preparing for a Markman hearing – except you have to do it for ALL the claim language, not just some it. Also, you have to think about language that you might subsequently add during prosecution and make sure it is support as well.

    “Second, the additional time it would take to comply with most of these suggestions is extremely minimal.”
    I see somebody is living in a fantasy world.

  97. Question:

    Does anyone have any serious objections to adopting the European style of claim drafting that includes reference numerals and where the examiner may require the old elements be segregated?

  98. I actually had an office action objection to reference numbers in a claim by an examiner in an inherited case, requesting that I remove them.

    I kid you not.

  99. Why are item numbers better that oh, say the recited name of the item?

    If the examiner can’t use a word processors search function to find support in the specification for “the processor”, is reciting the processor (220) really all that much help?

    To require such just adds to the applicant’s burden, adds another source of possible error, further complicates the drafting/revision process and so on….

  100. I sometimes submit the US claims with reference numbers. If the claim is fairly complex, and I expect confused rejections, I propose that it may be better to clearly identify the elements by item number from the start and get an otherwise clean prosecution history, rather than submit a claim that you know it going to require extensive explanation. Prosecution history estoppel is a bigger threat to claim scope that item numbers. I don’t see that the item numbers in the claims hurts in litigation, because with unlimited time the litigators are going to correctly correlate the claim elements with the drawing elements.

  101. Patent application quality would be improved if the patent practitioner actually understood the technology. I just reviewed an application that claimed a material with a viscosity of at least 100 AU. After much digging around I realized that “AU” was Arbitrary Units. Perhaps AU was helpful to present some lab data … but not so good for a patent claim.
    I frequently see technical errors indicating that the practitioner was transcribing from an invention disclosure, rather than actually understanding the invention.

  102. Whose claims are these? Your claims or somebody else’s claims? How do you know “takes a lot of work to figure that out?”

    Right. Claims that are ambiguous, difficult to understand, and which take a lot of work to determine their scope don’t exist until you say so. Got it. Meanwhile, ConfusedScotus 9:25 am and other commenters from our planet seem to understand the nature of the practice.

    From my experience, if an examiner doesn’t understand a limitation, he/she will ignore it.

    The applicant’s goal is to get the examiner to MISunderstand the limitation or fail to appreciate the ambiguity so the claim grants with the ambiguity intact. Then the public has to spend time trying to resolve the ambiguity. Of course, that public doesn’t include you because you are super duper smart.

    Also, the more “apparent” limitations, the easier it is for somebody to argue … “I don’t infringe because I don’t do this apparent limitation.”

    Uh, yes. But we were talking about the situtation where the claim scope isn’t clear. But you seem to believe that situation never arises. Nice planet you got there.

    Apparently we live in two different worlds, JS. Your world seems really simple. Either you wave your problems away or you just s-ck it up because, hey, nothing ever changes. For example:

    that’s life. You own a supermarket, you are going to be subject to slip and fall claims. You own a medical practice, you are going to be subject to malpractice claims.

    Gosh, JS. I think most people would agree that there is a profound difference between (a) negligent behavior that causes pain and suffering for another person and (b) infringing a patent that shouldn’t have been granted in the first place and can’t be understood without hiring a lawyer.

    A few critics here and there

    The “vocal minority”, right? LOL.

    Requiring these suggestions would serve as traps for the unwary

    First of all, rules are “traps” only when they are nearly impossible to follow and the penalties for not complying are draconian. I don’t see any evidence or suggestion of that. Second of all, rules at least this onerous have existed for years and apply to specific art units and also within specialized contexts at the USPTO. People abide by them. They aren’t “traps”. They are just rules.

    and greatly increase the costs of preparing a patent.

    First, the costs of filing a patent have risen dramatically. At the same time, more applications are being filed each month than ever before in the history of the USPTO. And we’re still in the middle of a huge recession. So it seems applicants are willing to pay.

    Second, the additional time it would take to comply with most of these suggestions is extremely minimal.

  103. Whose claims are these? Your claims or somebody else’s claims? How do you know “takes a lot of work to figure that out?”

    Right. Claims that are ambiguous, difficult to understand, and which take a lot of work to determine their scope don’t exist until you say so. Got it. Meanwhile, ConfusedScotus 9:25 am and other commenters from our planet seem to understand the nature of the practice.

    From my experience, if an examiner doesn’t understand a limitation, he/she will ignore it.

    The applicant’s goal is to get the examiner to MISunderstand the limitation or fail to appreciate the ambiguity so the claim grants with the ambiguity intact. Then the public has to spend time trying to resolve the ambiguity. Of course, that public doesn’t include you because you are super duper smart.

    Also, the more “apparent” limitations, the easier it is for somebody to argue … “I don’t infringe because I don’t do this apparent limitation.”

    Uh, yes. But we were talking about the situtation where the claim scope isn’t clear. But you seem to believe that situation never arises. Nice planet you got there.

    Apparently we live in two different worlds, JS. Your world seems really simple. Either you wave your problems away or you just s-ck it up because, hey, nothing ever changes. For example:

    that’s life. You own a supermarket, you are going to be subject to slip and fall claims. You own a medical practice, you are going to be subject to malpractice claims.

    Gosh, JS. I think most people would agree that there is a profound difference between (a) negligent behavior that causes pain and suffering for another person and (b) infringing a patent that shouldn’t have been granted in the first place and can’t be understood without hiring a lawyer.

    A few critics here and there

    The “vocal minority”, right? LOL.

    Requiring these suggestions would serve as traps for the unwary

    First of all, rules are “traps” only when they are nearly impossible to follow and the penalties for not complying are draconian. I don’t see any evidence or suggestion of that. Second of all, rules at least this onerous have existed for years and apply to specific art units and also within specialized contexts at the USPTO. People abide by them. They aren’t “traps”. They are just rules.

    and greatly increase the costs of preparing a patent.

    First, the costs of filing a patent have risen dramatically. At the same time, more applications are being filed each month than ever before in the history of the USPTO. And we’re still in the middle of a huge recession. So it seems applicants are willing to pay.

    Second, the additional time it would take to comply with most of these suggestions is extremely minimal.

  104. two-part format and reference numbers in the claims would certainly do a lot to bring clarity.
    I think there is a small continent north of Africa with such rules.
    While drafting the claims, I often put ref#’s in the claims just to help me and the client.

  105. I also recall reading about something along the lines of graciously acknowledging when a poster is wrong and accepting another’s post as true and accurate.

    Let’s see if MM steps up. (Do you think my invitation to be clear enough?)

  106. Just saying,

    Your clear logic is lost on someone pursuing “policy” goals regardless of fact or law.

    But I do appreciate the points you make. Nice job.

  107. “I’m not talking about poorly drafted broad claims. I’m talking about claims with lots of apparent ‘limitations’ that aren’t really limitations but it takes a lot of work to figure that out.”
    Whose claims are these? Your claims or somebody else’s claims? How do you know “takes a lot of work to figure that out?” From my experience, if an examiner doesn’t understand a limitation, he/she will ignore it. Also, the more “apparent” limitations, the easier it is for somebody to argue … “I don’t infringe because I don’t do this apparent limitation.”

    “I’m talking about claims that could be narrow or they could be broad, depending on who you decide to sue, where you decide to sue, and who the three judge panel happens to be if you should have to appeal the claim construction to the Federal Circuit.”
    That’s the nature of the English language and law. Ever read the case about “what is a chicken” in contract law? If two parties can argue over what is a chicken, then they are going to argue over limitations in a claim. It is the nature of the beast.

    “LOL. All you need is a few hundred thousand dollars.”
    Hardly, with some decent art, I can find somebody that’ll get a patent into reexamination for under $10K.

    “And what’s the big deal about a lawsuit hanging over your head, right?”
    I’m sorry, that’s life. You own a supermarket, you are going to be subject to slip and fall claims. You own a medical practice, you are going to be subject to malpractice claims. Some of them have merit, some don’t. There are, however, mechanisms to punish a party that makes a meritless patent claim. Moreover, unlike in many other situations, that party bringing a meritless patent suit probably has some money to pay.

    “it goes without saying that the post actually highlighting the the lack of law in this area”
    There is plenty of law on 112 first and second paragraphs. What the law has determined that perfect description/claims are not required. Requiring these suggestions would serve as traps for the unwary and greatly increase the costs of preparing a patent. Like with many other things in life, there is a tradeoff – here, the tradeoff is between cost of the patent and having a “perfect” application. A few critics here and there does not constitute the type of outcry that is going to change this very longstanding law.

  108. If the Fed Cir gave the enablement or definiteness doctrines any teeth, we’d be halfway there. From the standpoint of providing maneuverability in claim scope, it is far better to draft with ambiguity than with clarity.

  109. So, if we were to comply with 1A, would the examiner also comply with a 1A style of examination? That is, presenting a rejection in a multi-part format by way of standardized template that places each claim component AND the corresponding element of the prior art, including a reference to no more than one paragraph, in separate, clearly marked, and designated fields. For instance, a template may facilitate examination of claims by separately delineating each claim component and each corresponding claim element of the prior art in separate fields for the preamble, transitional phrase, and each particular claim limitation.

    I’m all for it.

  110. in my experience, the most problematic cases are where the person who drafted the original spec (often for a provisional) is not the same person who drafted the claims, is not the same person who responded to the first action is not the same person asking for an interview after final. These interviews always include an apology/excuse for ignorance about key features of the invention and key terms used in the application. Similar problems occur when cases get shuffled around between different examiners’ dockets inside the PTO.
    The reality of the patent business might necessitate this personnel shuffle, but keeping it to a minimum can certainly help. Having a good system of notetaking could help too. Think good coding practices for example. Good coders always include helpful comments in their code which helps other developers pick up where they left off. Your case files should include something similar.

  111. BTW… other than getting the patent application out the door as an issued patent, any measure of “patent quality” at the PTO is irrelevant.

    The only true measure of “patent quality” is whether a Federal Court will hold it valid and infringed. If it is solid for that, it is High Quality. If it gets busted for lack of written description, ambiguous claim meaning, or any one or more of a zillion other “quality problems” then you’ve discovered that the patent is not “High Quality”….

  112. It is not the applicant’s position to do the Examiner’s job.
    Tough. Federal court decisions require that patent prosecutors do not even think about including most of those ideas in a public patent prosecution file history… and to the extent they might be developed as attorney work product, that they be included in the “shred/burn pile” immediately on issue. The PTO and the Fed Courts are working at cross purposes… and major changes don’t seem likely anytime soon….

  113. “Even from my vantage point on the light side of the Force, I read those suggestions and thought, what attorney in his or her right mind would do most of this stuff, much less actually submit it to the PTO in writing?”

    I find your lack of faith disturbing plurality.

  114. Dennis: I am confident that we will begin to think of patents less and less like “documents” that printed and read, but more like digital information maps that provides a network of information about inventions.

    Actually this is totally do-able right now but since the last thing all the Very Serious People in Washington want to happen is for the government to create jobs so people have money to spend on stuff, it’ll never happen.

    As I understood it, what Dennis is driving at is granted claims with hyperlinks to portions of the specification, prosecution history and/or court filings which define the scope of given terms and/or the claims as a whole. Co-owned applications reciting and/or defining the same terms would also be “one click” away from anyone who is interested.

    Like I said: it would require some additional labor but the technology is old (and surely not covered by a valid patent). The public would certainly benefit from that labor, in numerous ways, as would the economy. But the public can’t have nice things. You see, an earlier administration and previous Congress turned a huge surplus into a giant deficit and now all the ordinary people (e.g., people without patent portfolios but who might be sued for infringement if they make a PDF and email it somebody) need to suffer, give up their “entitlements”, etc.

  115. 2.c. Designating, at the time of filing the application, a default dictionary or dictionaries (e.g., a technical dictionary and a non-technical dictionary) to be used in ascertaining the meaning of the claim terms.

    This should be good! I can’t wait to see what the applicants, who make up words and terms nobody else uses except for other patent drafters, will do!

  116. Aren’t we all doing, or avoiding, many of these things, already, as appropriate to the application. For example, if you see that terms in your application might be critical to the claims, but subject to ambiguous interpretation, don’t you already provide enough language to support your preferred interpretation of that term?

    And I have to ask, what in the world is a “digital information map that provides a network of information?” Have been writing in analog all these years?

  117. “Can’t the applicant be his own lexicographer?”

    1.Yes the applicant is always his own lexicographer.

    2. And the specification is the glossary that defines the terms in the claims.

    Broadest reasonable interpretation by the examiner is not reasonable unless the first two are taken into account.

  118. Applicants should explicitly state the general idea and concept of their inventions in the specification, especially for a process claim. That way you can positively demonstrate the application and integration of your concept to the examiner or the PTAB.

    To not do so will leave it up to the examiner to decide and this is especially risky in the event you get a bone head MM type examiner that only wants to eviscerate your invention because he/she doesn’t like it, or does not understand claims as a whole, or patent law, or is angry at his mom and wants to take it out on you.

    So state the concept. Then work backwards to make sure after the concept is reduced to steps in the claim so that the claims do not pre-empt every use of the concept. Now you have a built in argument against anyone claiming your invention is an abstract idea.

    Likewise the PTO should ALWAYS defer to the “Actual Inventor” for the definition of the concept of the invention and the application of the concept, even when it is not so defined in the specification, because the AI can always instruct the examiner during prosecution.

  119. 1 a – isn’t that mostly what we do now? I don’t see a need to make it a requirement.

    1 b – fraught with peril. Overlook an embodiment that supports a broad phrase and someone will argue that you narrowed the phrase. Whats the point. We can cross this bridge when we get to it.

    1 c – examples are never meant to be limiting.

    1 d – the current rules are clear on that. If the preamble gives life and breath to the body…. no need to burden the applicant with additional hoops to jump through. Especially pro se applicants.

    1 e – no. what is needed is a way to recited a component broadly in the manner “means for” was originally intended. Something like “means for fastening”, where the invention does not turn on the particular fastener and where any fastener from velcro to, glue, to a bolt, to that high surface area technique gecos use will do, should not be limited to those listed in the specification.

    1 f – I have no problem allowing it (isnt it allowed now?) but I wouldn’t require it.

    2 a – always a good idea…but I wouldn’t require it to set up another “gotcha” trap, where an applicant overlooks a term. If you’re arguing about what about means….

    2 b – always a good idea…. but we don’t need another “gotcha”. Potential ambiguity is in the eye of the beholder. Do I have to define every noun and every verb in my spec? What about the nouns and verbs in the definitions? I see an infinite loop forming. Anyway, I thought we couldn’t read limitations from the specification into the claims. Isn’t reading a definition from the spec into the claim doing just that?

    2 c Why do we need a default dictionary. If the meaning is at issue and the applicant asserts the word means A and can show any dictionary or like document that supports the definition A, why isn’t that enough? Can’t the applicant be his own lexicographer?

  120. oh yeah, that was nearly universally derided as being a bad idea.

    But more importantly, as being illegal. See Tafas.

  121. Welcome, sockpuppets!!

    Why limit it to software?

    I didn’t limit my suggestion to software. But it wouldn’t be unreasonable to do so. Most of the worst examination is occurring in the “computer-implemented arts”. We’ve discussed the reasons for that before. Happy to discuss them again.

    It doesn’t cost anywhere near $30K to prepare most applications.

    I wasn’t talking about the cost of preparing an application. I was snarkily referring to the fee for a well-drafted opinion that reasonably construes the granted claims and explains to me why I do or don’t infringe them literally or under the doctrine of equivalents and/or whether they are invalid in view of the prior art.

  122. The more uncertain a claim is, the “broader” the BRI of the claim language becomes and a greater range of prior art will be cited against the claims.

    That’s not my experience. I’m not talking about poorly drafted broad claims. I’m talking about claims with lots of apparent “limitations” that aren’t really limitations but it takes a lot of work to figure that out. Those claims are certainly harder to examine. That’s why they are examined poorly. That’s why they issue as patents.

    Meh … broad claim language is easier to invalidate

    No doubt. But I’m not talking about “broad claim language”. I’m talking about claims that could be narrow or they could be broad, depending on who you decide to sue, where you decide to sue, and who the three judge panel happens to be if you should have to appeal the claim construction to the Federal Circuit.

    Getting around a patent is hard only for the inexperienced and/or stubborn.

    LOL. All you need is a few hundred thousand dollars.

    it is pretty cheap to delay litigation for a couple of years

    And what’s the big deal about a lawsuit hanging over your head, right? Just part of life. Deal with it. The worst thing that happens is you need to ask Dad for more money or maybe move back home for a while and practice your slalom technique.

    a good attorney takes advantage of all the tools available in the their tool box. If that requires taking advantage of the law

    If? Of course, it goes without saying that the post actually highlighting the the lack of law in this area. Were the above “suggestions” proposed to be actual “law”, we’d have to secure the approval of “important” “stakeholders”. You know. The Lemelsons, the Hyatts, and other benign opportunity seeking types who are just struggling to live the dream like everyone else. It would be a terrible thing to hurt their fee-fees, especially during a recession.

  123. All things have pros and cons. The horrible to read ‘paragraph’ format does allow the terms within an independent claim to be found using a sentence based proximity search query. The multiple indent level claim format sometimes breaks the claim up into multiple sentences for search purposes even though there are no periods to be seen. It may sound trivial, but this stuff can greatly affect search quality.

  124. “Since we’re all dreaming …”
    Why limit it to software? Let’s force everybody to not only disclose potential prior art but do the USPTO’s job for them by interpreting claim language, identifying specific teachings within the prior art (i.e., a mini pre-examination) … oh yeah, that was nearly universally derided as being a bad idea.

    “The USPTO should focus on creating jobs for applicants and not obsess over details such as whether it’s possible to understand a claim without paying an attorney $30,000 to ‘translate’ it for you”
    It doesn’t cost anywhere near $30K to prepare most applications. You should be easily able to shop around and get the vast majority of applications out the door for under $10K. However, if we were to take your suggestion, then that number would be closer to $30K.

  125. “There is nothing worse than coming across a single paragraph claim in a patent while doing an infringement review.”

    BJA,

    Agree, definitely one of those bad relics from the past.

  126. “It’s widely understood that the more uncertain a claim is, the more difficult it is to examine.”
    Wrong … completely wrong.

    The more uncertain a claim is, the “broader” the BRI of the claim language becomes and a greater range of prior art will be cited against the claims.

    “the greater the likelihood that the granted claim will be licensed by competitors unwilling to pay the tens/hundreds of thousands of dollars minimally required to obtain greater certainty from a court”
    Meh … broad claim language is easier to invalidate. If the language is too broad, it is pretty easy to put the application in reexamination for far less than a hundred thousand dollars. Most courts will stay a litigation with a pending reexamination so it is pretty cheap to delay litigation for a couple of years. By that time, someone else may have invalidated the patent or you have a design-around in place. Getting around a patent is hard only for the inexperienced and/or stubborn.

    Regardless, what the USPTO apparently doesn’t realize is that patent applications are not necessarily drafted with the needs of the USPTO in mind.

    Patent law does not require perfectly precise claim language (not possible anyway when using the imprecise English language to define the scope of claims). Litigators like squishy language. Prior art too close … just squeeze the language to avoid it. Infringing activity too far away … just pull at the language to capture the activity.

    As a mostly patent-prosecutor, I don’t have a problem defining certain language used in the claims. To me, it is better to have clear scope during prosecution than to have the Examiner misinterpret the language and be forced to prove that my interpretation is correct and the Examiner’s interpretation is wrong. That being said, a good attorney takes advantage of all the tools available in the their tool box. If that requires taking advantage of the law, then so be it.

  127. I try to write claims clear enough that we both understand the subject matter. Then, I put a good backgroup paragraph together with a good (plain language)first paragraph of the detailed description for both of our sanity. It’s crazy to write an app without that one plain stated overview paragraph because when prosecution comes, you’re going to be just as lost as the examiner. That’s not efficient or effective for anyone.

  128. Some of this sounds like and effort to harmonize claims to an international standard: For example, putting reference numerals in claims to indentify corresponding structure, segretating old elements from new as required by the examiner.

    This is the kind of harmonization that we need.

    Regarding 112(f) for a claim element, the reference numeral approach would seem sufficient. As to scope of the equivalents, the examiner should give broad scope to equivalents of the corresponding structure per BRI. Anything in the prior art that can achieve the result using comparable means should be deemed an equivalent. There is nothing in Donaldson that would suggest that this approach would be wrong.

  129. Even from my vantage point on the light side of the Force, I read those suggestions and thought, what attorney in his or her right mind would do most of this stuff, much less actually submit it to the PTO in writing?

    For example, item 1(c): *Everything* in a spec is merely illustrative, don’t you know.

    Sadly, patent drafting is so hemmed in by litigation pitfalls that actually having a comprehensible spec (to say nothing of the claims) is an examiner’s pipe dream.

  130. Most of these suggestions are litigation related “foisted on your own petard” type of ideas.

    Indeed. A “zealous” advocate might recommend that his/her client ignore every such suggestion or do the opposite of each of those ideas. It’s widely understood that the more uncertain a claim is, the more difficult it is to examine (which may increase the time required for allowance but increases the likelihood that the scope of the claim will be unclear) and the greater the likelihood that the granted claim will be licensed by competitors unwilling to pay the tens/hundreds of thousands of dollars minimally required to obtain greater certainty from a court.

    The usual staunch pro-patent advocates will surely recoil at these suggestions and it’s the USPTO is surely aware that turning those suggestions into requirements will represent a monumental battle. But now they can say “we tried” which is probably the entire point of the exercise.

    Since we’re all dreaming, I might add another suggestion: “Identify any steps in the claim which are identical to steps carried out in the prior art or which differ from prior art steps only in the recitation of information content that is acted up (e.g., “received,” “determined”, stored”, “transmitted”) by the steps.” A suggestion such as this could be further encouraged by penalizing applicants with additional fees when the omission is deemed avoidable, e.g., in the case where the art in question was previously identifed in a foreign or domestic case co-owned by the applicant and reciting the same step.

    Ah, but this would be so “radical” and so unfair. Quality schmality! The USPTO should focus on creating jobs for applicants and not obsess over details such as whether it’s possible to understand a claim without paying an attorney $30,000 to “translate” it for you.

  131. Most of these suggestions are litigation related “foisted on your own petard” type of ideas. However, delineating each element… There is nothing worse than coming across a single paragraph claim in a patent while doing an infringement review. WHO DOES THAT!!!! How hard is it to press enter a could of times while typing out a claim?

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