by Dennis Crouch
Many have talked about “raising the bar” in patent cases. In his most recent article, Professor Hubbard (Baltimore) argues for “Razing the Bar.” In particular, Hubbard argues that the current structure of limiting the patent bar to only those with technical educations “is doing more harm than good.” Hubbard also notes the “paucity of critical debate” in this area. As a first step, he proposes that any U.S. attorney, regardless of their technical background, should be permitted to sit for the registration examination.
Hubbard holds a degree mathematics from Dartmouth and a J.D. from Yale; has litigated patent cases; teaches patent law courses; has written extensively on the patenting system; … but is apparently not qualified to become a patent attorney himself.
= = = = = =
A benefit of shift brought about by both the Courts (Alice/Mayo/Nautilus/KSR) and Congress/USPTO (administrative post grant challenges) is that there is a greater incentive to focus patents on the detailed technological improvement rather than some abstracted notion of the invention that was more the norm for past generation.* My experience is that a technology-savvy patent attorney will be better able to cost-effectively understand the important technological details. The technological-education requirement of the patent bar places one hurdle in that framework, but the market continues to operate in this area as well. For instance, many companies only hire patent attorneys with relevant experience in the appropriate technological area and don’t simply rely upon the “patent attorney” status as a total qualifier.
* I see that I’m making a claim here and will look into researching whether there is evidence to back that up. Are patents being drafted today qualitatively different than those written a decade-ago?
On another threa d- but fits here as well:
The individual psychological effects – as the science of psychology – is just not the same as the Non-Useful Arts of music, theatre, dance, and such.
MaxDrei is indeed being purposefully obtuse and misleading on this difference, with a mind UNwilling to understand, playing the Malcolm game of AccusingOthersOfThatWhichMalcolmDoes (it is he that dodges by not being inte11ectually honest).
At #40, below, you can follow a chat about what is “technical”.
I offer a spectrum of terms, that bleed into each other, like the colours of the rainbow, starting at “liberal arts” and ending with “mech eng”, the point being that they exhibit ever-increasing technicity, as you move from one end to the other. Prompted by anon’s invocation of “technical problem” and “technical degree” and assertion that “liberal arts” is definitely not “technical”, I invite readers to cleave the spectrum where “technical” begins. Is it, as it were. with “yellow” or with “green” or with “blue”.
Les bites. But (no surprise here) he wants to change the order of the colours so he can have it that “logic” is “technical” (and thereby that new and inventive code is of itself patentable).
anon responds, in his usual way, by copping out. He exhorts me to think, and informs me that my spectrum is “flawed” and so is worthless in his eyes and not to be dignified by any serious answer from him. Well, it might indeed be that my progression is “flawed” but so is the Mona Lisa painting. The painting isn’t worthless though, is it and my progression has already proved its worth by drawing out that reply from Les.
Anybody else want to bite?
Max, do you think an international treaty defining patentable subject matter as “technical” in nature would or should be sought? And, if so, should we even attempt a definition?
Ned I see no need. Soon there will be no difference between “useful arts” in the USA and “technical character” in Europe.
The bigger nuisance is the uncertainty what sorts of non-obviousness satisfy 35 USC 103 (because of the bleed of “inventive step” considerations, post-Alice, into 101 eligibility analysis).
Max, The bigger nuisance is the uncertainty what sorts of non-obviousness satisfy 35 USC 103 (because of the bleed of “inventive step” considerations, post-Alice, into 101 eligibility analysis).
Huh?
Ned what I had in mind is that there are more sorts of non-obviousness than the sort that solves a technical problem. Should These other sorts carry weight, when it comes to patentability?
For example, it might not be obvious how to sell more product. One thing that might be very inventive is a new product promotion process that reliably and provably sells more product and which every competitor would therefore adopt, if it were not protected by a patent. Or how about a new and non-obvious cataloguing protocol and program for the DVD’s in your collection?
Should such a new and non-obvious solution to a non-technical problem be protectable by a patent?
Have the US Courts started to distinguish between the sort of non-obviousness that solves a technical problem, and the sort that (whatever else it contributes) solves no such problem?
“Should These other sorts carry weight, when it comes to patentability?”
Here in our sovereign an answer has been provided. (let’s see that “mind willing to understand at work…)
Think Set C printed matter versus Set B printed matter….
Max, the newness or not of the subject matter is or should be irrelevant to the issue of whether that subject matter is eligible.
Diehr involved a old equation. But so what? If the ineligible subject matter is applied to something otherwise eligible to produce a new or improved result, then the claim as a whole is eligible.
About cataloging, you do have a improved result. But whether one has an application requires a determination of whether the abstract is being applied to something otherwise eligible.
“Should such a new and non-obvious solution to a non-technical problem be protectable by a patent?”
Why not? Patents are to promote progress. Don’t we not progress in solving “non-technical” problems?
errr…don’t we want…
Les what I had in mind is that the Constitution contemplates the limited term exclusive right given by a patent only within the ambit of the useful arts. You can get any claim within the Useful Arts by including a requirement for a computer. Hence all the “Do it on a computer” claims. But what if “it” is not within the ambit of the Useful Arts. That’s why the EPO looks in the claim for the solution to a technical problem (as opposed to a problem in, say, not selling enough product).
The USA invokes “abstract + something more” I find that disappointingly indefinite and vague but I hope for better.
MaxDrei,
You are continuing to conflate “Useful Arts” (our sovereign) with “technical” (whatever that means in your sovereign).
Please stop this nonsense.
Dodge? I am STILL waiting for your non-circular definition of “technical.”
As I recall, it is your that dodges and attempts to say “don’t need one”…
Max –
Maybe we could apply set theory to the problem. I submit that “technical” is the unions of the things to which the answer to any of the following (plus other areas that I may have overlooked) is yes:
1. Do implementations involve pi (3.14159…)?
2. Do implementations involve the inconveniencing of sub-atomic particles (e.g. electrons) – (this includes all electronic devices and to my understanding chemistry)
3. Do implementations involve application of trigonometry? (I believe this includes most things mechanical not already included by pi)
4. Do implementation involve consideration of stress (e.g. all things metallurgical) ?
5. Do implementations involve consideration of imaginary numbers?
6. Do implementations involve use of calculus?
Submit all you like Les. Will SCOTUS follow you? I’m sceptical.
How about “obvious”? Can you do us a “set” definition for that too? The way I see it both “onbvious” and “technical” are irreducibly fundamental to patent law and thus defy any attempt to replace them with a definition.
But that’s only my opinion. So, submit away, to your heart’s content. Fine with me.
At “____” below, “______” says “_____”…
Guys, can we stop the “look at me look at me” posting at the top and put your comments into the flow of the comment string?
You MaxDrei and Malcolm do this (albeit for perhaps different reasons). When you do this, you are omitting things and getting things wr0ng, which if placed in the comment string you may (just may) not get wr0ng.
Thanks.
At 35.1 below anon extols the virtues of a technical degree. It helps when addressing technical problems declares anon.
MM promptly asks him what is a “technical ” degree. I have a related question. In the USA, anon, when does a non-technical problem become a technical problem? Is the distinction a meaningful one? If it is, why do you assert that in Europe it is not? If it is not meaningful though, why did you say it? What exactly is a “technical ” problem?
There are a number of intermediate positions between “liberal arts” (deemed by anon not to be “technical” and “mech engng” (which I presume he allows to be “technical”). I set out below one such progression. Perhaps anon can tell us where in the following sequence “technical” starts. And why.
liberal arts/language/rhetoric/logic/pure mathematics/philosophy/natural science/engineering/mechanical engineering.
your odd focus on mech is showing again….
Max –
How do you justify the order of things in that progression? Why not:
language/liberal arts/rhetoric/philosophy/pure mathematics/logic/natural science/engineering/mechanical engineering.
If that is the progression, then I submit technical begins at mathematics.
Why not, Les? Because I don’t see math as anywhere in between “rhetoric” and “logic”. Mind you, I have had no education in philosophy. I suppose for that Input we need to whistle up a SCOTUS justice or two, don’t you?
Well…. I’m pretty sure I was taught mathematics long before logic…. I suppose it would be an error in logic to assert therefore that math is a prerequisite of logic….. but still…
ALL math has some logic in it.
It is a mistake to think that such are entirely separable as if the “continuum” does not have substantial overlap.
Your “sequence” is flawed, as the term “liberal arts” includes or may include language, logic, rhetoric (which is a combination of the two previous), and philosophy.
Mathematics also, is not distinct unto itself (unless you mean pure advanced math), since a certain level is required for all of engineering.
Engineering as a term is also not distinct, as mechanical engineering is but a subset of engineering (hence my post at 40.1.1)>
You really do need to THINK about this before you post, my friend.
S I G H….
The training of critical thinking was the point, MaxDrei.
Just like having a law degree is supposed to train you to think (you know, THINK) about law in a critical manner.
However, when I see SOOOOOO much effort to arrive at a desired ends – no matter the means – I am saddened to say that our law programs have devolved into an academic morass in that the absence of meritocracy has spread to the students, and “better grades” go not to those that exhibit better critical thinking, but rather, to those that can best “parrot” the belief structure of the academic “party line.”
And yes, MaxDrei, it SHOULD go without saying that the type of mental training IS very much different between a liberal arts degree and a technical degree. That you have to ask that which should go without saying only shows how little you appreciate the actual differences involved.
Further, I make no such “assertion in Europe.” Where do you find that spin?
Where? In your incessant assertions that Europe is unable to come up with a definition of “technical”. But you yourself now resort to the term. Is it too much to ask you to Define your Terms?
I have never put it to you that “Europe” is unable to come up with a definition of “technical.”
Never.
I have – on the other hand – asked certain sAme ones of posters here to come up with a non-circular definition.
Do you understand the difference?
(and yes, this question does necessitate you to THINK)
anon:
” it SHOULD go without saying that the type of mental training IS very much different between a liberal arts degree and a technical degree.”
Why, anon, should it “go without saying”? In what ways is the “type” of mental training different? I’m curious.
You say “curious,” but you are not.
You have a mind UNwilling to understand.
“why do you assert that in Europe it is not?”
Once again you assert a known fallacy – one that I have already corrected you on, MaxDrei.
Pay attention please.
At #36 below, there is a discussion about claim drafting. I have maintained for some time that First to File will require a complete re-think about obviousness. But I had not fully grasped how it will also require a quantum leap in claim drafting skills. Les maintains that the proper time to define the invention for which protection is sought is after the PTO gives you its search report. But under First to File, that cannot hold. Instead, to avoid failure of the application and loss of your client’s legitmate legal rights, the Applicant needs to include that definition within the originally filed patent application. This is the backstory to the EPO’s notorious “undisclosed intermediate generalisation” jurisprudence, now copied everywhere else in the world (except the USA).
So while Prof Hubbard might have a point under First to Invent, his point fails under First to File. Those US law firms who want to stay leading edge might want to step up their efforts to filter trainees according to their talent for divining what the inventive concept is, and then capturing it in apt words, even before filing the priority document at the USPTO. Separate the sheep from the goats, those trainees who can see the wood for the trees from those who can’t. This is a talent. Some have it, others don’t. Ask those in corporate practice.
Otherwise there are going to be unfortunate losses of rights and client anger.
” Les maintains that the proper time to define the invention for which protection is sought is after the PTO gives you its search report.”
Do I really?
What I maintain is that there is no harm in drawing back the boarders of what one claims after a first Office Action show one that one claimed too much.
Why is that not legitimate? Why does first to file have any bearing on that?
So Les, thanks for asking. Here goes, with an answer.
A fact of life is that rivals concurrently conceive and reduce to practice on overlapping subject matter. They can’t all have patents on everything they optimistically claim. There has to be a mechanism for divvy-ing up scope amongst the rivals. Either you do it by “First to Invent” or by “first to File”.
Now, if your jurisdiction chooses First to File, then what you file is of decisive importance. Nothing else matters. When you conceived, and whether you were diligent, no longer count for anything. The PTO and the Courts henceforth will divide up the pie exclusively on the relative content of the rival patent applications. You have yet to see how this shakes down, under the AIA.
I’m not saying you cannot narrow during prosecution. Everybody does that. Fully legitimate, even banal.
What is problematic is when you try to narrow down to a level of generality not foreshadowed in your app as filed. Suppose you invent a balloon catheter for angioplasty. Suppose the next day your competitor files on a balloon catheter of polyamide (PA). Your claim 1 is unrestricted as to balloon material. In your Best Mode though, you use a polycarbonate (PC).
The PTO searches and finds a prior publication of a polymeric angioplasty balloon. Your Claim 1 is rendered untenable. You need to narrow, and you don’t want to narrow down to PC alone because in the meantime it turns out that PA works better than PC. PA can be “pushed” (as radiologists put it) during angioplasty but PC can’t.
The problem is when you attempt to narrow to an undisclosed degree of generalisation, narrow enough to be inventive over the art but not so narrow that it fails to cover a balloon of PA.
In a well-drafted case, there would be such intermediate levels of generalisation, from the get go. Drafters outside the USA strive to include as many as possible, in the application as filed. Those inside the USA see no need for them and, precisely because of that, amendment to a claim that covers the rival inverts the order that he who files first on a particular Invention gets the patent on it.
Does that help? Hope so.
Or, to say it more concisely, you will be seeing an ever-increasing emphasis on the “written description” requirement.
Max – you said:
“The problem is when you attempt to narrow to an undisclosed degree of generalisation, narrow enough to be inventive over the art but not so narrow that it fails to cover a balloon of PA.”
If I can still cover PA, then there is no problem and I don’t have to amend.
As you laid out the scenario, I can’t have broad coverage or any coverage at all, as I have yet to file.
Which of course, is the huge injustice of first to file. Your intention, I invented the catheter for angioplasty, yet I cannot get a patent for it as my competitor, but non-inventor filed first.
THAT is the outrage.
Also, I take issue with this assertion: “Drafters outside the USA strive to include as many as possible, in the application as filed. Those inside the USA see no need for them.”
That simply not true. US drafters also strive to include as many intermediate levels as possible.
Sorry Les. Reading your reply I see that in my haste to give a hypo I omitted to write that you filed on your invention, the balloon best made of PC, and, the day after that, the other fellow filed on his invention, the PA balloon. Your disclosure, your description and your definition of your invention, filed one day before his, is of an angioplasty balloon which you say should be made of PC.
But your claim to the balloon as such cannot hold, because it isn’t new.
However, your particular mode, PC, is new and inventive.
And so is the other fellow’s claim to PA, filed one day later.
The issue is whether you can have a valid claim wide enough to read on to his PA balloon.
I say again, that the cases drafted in the USA that I receive for filing at the EPO are drafted differently from those written outside the USA. Think of a set of claims drafted outside the USA being like layers of an onion, with each layer representing a higher level of inventiveness than the outwardly adjoining layer, all the way down to the Best Mode at the centre of the onion. Such a set of claims is rare (in my experience) in cases written in the USA. What they lack is any disclosure to support the proposition that each succeeding onion layer is more inventive than the outwardly adjacent layer. As you know, mere novelty isn’t enough to get you a patent.
As to outrage, I think you will find it is confined to quite a small circle of people.
Well Max, I think you shouldn’t extrapolate too far based on your sample.
As for the ways others do it. We all have our frustrations. I have seen many applications/patents from the EU and they are full of claims reciting “means for” with little or no explicit disclosure of what the means are….
Onion or no, the disclosures are pretty thin.
Les, you and I look over the fence at what is on the other side and criticise it, like two farmers assessing each other’s crops.
Outside the USA, a “means for cutting” means what it says in the absence of 35 USC 112(6). That is to say “anything that has capability to cut”. What does “cut” mean? Construe it in context. Is it butter technology or padlock hasp technology?
Disclosure thin? No surprise there. No Applicant gives away any more know-how than necessary. It is always a fine balance. Give too much and you get ripped off. Give to little and your claims don’t survive an inter partes test of their validity. In patent drafting, as in everything else, you pays your money and you takes your choice.
“Les, you and I look over the fence at what is on the other side and criticise it, like two farmers assessing each other’s crops.”
maybe time for you to stop the whining then, eh MaxDrei?
Je suis d’accord.
I enjoyed your attempt a Brooklynees there at the end Max.
…ya pays ya money and ya takes yas chances..
and there was me, thinking I was quoting John Bull in Punch in 1846:
link to en.wiktionary.org
Not sure Les who you are in accord with, Me? anon? Both of us?
You Max, but of course.
“Written description,” can go back to that quick filing of a provisional. Is one stuck with that description, or can it be massaged when filing and claiming in the utility? What if the provisional was on the best mode PC? Does every equivalent need to be recited in the provisional? Lot of unintended consequences of the AIA.
The game has certainly changed
Richard are you asking me or are your questions rhetorical? I know the answers for the Rest of the World but how the US courts will handle the First to File provisions of the AIA I know not. But I guess their instinct will be judicial economy.
So, as in Europe, the process of patent law transition is going to take more like 50 years than 20, I’m sure. And Europe adopting the EPC in 1973 didn’t even involve a flip from First to Invent to First to File.
One is and was stuck with the provisional. Why would this change after AIA? It would not. Of course, the utility can disclose and claim more than was in the provisional. However, one does not get the benefit of the provisional date for that new matter. If the Examiner doesn’t catch it, the accused infringer will.
The reply to MaxDrei, is not rhetorical, if I knew the answer I wouldn’t be concerned. But typically claims are not included in the provisional.
If no new matter is added, can the later filed utility claims encompass, say, the the generic which includes the undescribed species of the later filed application (or as typically occurs, the species disclosed in a competitor’s product)?
Yeah well I know the answer under the EPC but only because we now have more than 30 years of jurisprudence. For the answer under the AIA, come back in 30 years and somebody can then give you a useful answer.
Till then, it’s all up for grabs. early cases will shape the way the law develops. Great scope for brilliant advocacy.
You keep on harping on this “30 years of jurisprudence” without realizing that your system, lacking stare decisis means that such “30 years” does NOT provide a cumulative effect, and that tomorrow may switch back to the thinking of year 4, or year 8, or year 2, or year….
In a most peculiar manner, your system is even MORE “all up for grabs” than ours. And your “notion” of “early cases will shape the way the law develops” even less than ours.
As to the AIA, I (personally) do not think that the Act will survive that 30 years. It is far too frail and wrought constitutional difficulties. Yes, you do have a point about the length of time that it might take to iron out all of the new or odd phrasing in the Act, but I just don’t think the ship is sturdy enough to make it through the waters. What did they say about the actual Titanic….? Too big to sink….?
As to your comment on “Great scope for brilliant advocacy” – that’s just a landmine of dichotomies, given that law is not meant to be shaped by advocates (the whole “damm scriviners” line of thought, and all).
You also keep referring to AIA. I really don’t see why that would change the answer to this question regarding provisionals. AIA changes what is considered prior art a bit. It does not change what is considered “support” for a claim.
Richard,
For your convenience, I am reposting my 8:45 am reply to MaxDrei here:
PHOSITA is not just about obviousness, MaxDrei….
(that’s why the KSR decision and the attempted nose mashing to reach the desired end carries with it a change in PHOSITA that affects more than just obviousness)
I realize that I am asking you to think in a legal manner, but think about 112 and what is required to be included in an application in relation to what a PHOSITA is purported to know.
Yes. If a patent discloses a new widget comprising:
A,
B,
C and
D.
That encompasses the competitors newer A, B, C (made of quartz) and D.
One cannot work around a claim by adding detail. If one could all patents without infinitely long specifications would be worthless.
Bingo
“[A]ll patents without infinitely long specifications would be worthless,” is the problem.
Because “equivalents,” are now deemed to be the equivalents disclosed in an application, specifications are now becoming infinitely long. How many patent applications of tedious length have endless paragraphs beginning with the invention, feature, etc. “may?” Or worse, “gist?”
See my cite in 37.1 as an example. The Steve Jobs ‘100 patent, (can locate if pertinent) is another example. (I do find this discussion very useful and enlightening)
(Richard,
For your convenience, I am reposting my 8:45 am reply to MaxDrei here too (my oops on the previous placement):
PHOSITA is not just about obviousness, MaxDrei….
(that’s why the KSR decision and the attempted nose mashing to reach the desired end carries with it a change in PHOSITA that affects more than just obviousness)
I realize that I am asking you to think in a legal manner, but think about 112 and what is required to be included in an application in relation to what a PHOSITA is purported to know.
Can’t improve on that. Spot on, Les.
Agreed. Nice point Les.
As a litigator and prosecutor, it was once the best practice when going to litigation to file continuation applications, to insure that a case could be made for literal infringement by amending pending continuation claims to literally cover the products of the competitor. The USPTO was on a mission to discourage continuations. The issue is a bit more complex than ABCD.
Richard,
The practice (and Office response) you speak of was settled in the <ITafas case.
The Office lost.
Oh…. in that case.. never mind 🙂
Max, I have had several clients come to me in the last months from other firms who have applications filed at a very high level of generality even though they went to their patent attorneys with fully developed inventions that had specific solutions to specific problems — none of which appeared in the applications as filed.
While this has nothing specific to do with claim drafting, it does show you that US practice has become extreme corrupt in the last decades because of lax practices at the PTO and a lack of concern at the Federal Circuit. The backlash against what has happened by affected industries, their efforts in Congress and in the courts to call a halt, is the real reason the Supreme Court began cracking down in Bilski->Alice. I think the PTO and the Federal Circuit have gotten the message. I am not sure US practitioners have.
Ned,
You too (especially?) are forgetting the necessary ramification of the Supreme Court (patent profanity, anyone) in the KSR case and the concomitant lowering of what has to be in an application due the super empowering of PHOSITA.
Then again, you do seem to have an unhealthy view of the judicial branch as statutory law writers….
… you too are also forgetting that many of what you would label as “become extreme corrupt” is ALSO driven by the necessary legal reality of reacting to the patent profanities introduced by the courts.
There is a reason why things like Jepson claims have diminished to being an option seen as rarely as hen’s teeth.
Part of advising a client is analyzing prior art returned in a search. I don’t know how someone without a technical background BS (math, physics, chemistry, engineering classes, etc) is going to be able to provide the same level of competent evaluation and distinguish the invention from the prior art, which is the trick in getting an app through to issue.
Standards are there to protect the public. A math clown will not point out to potential clients his limitations sans a BS.
The discussion is interesting, but they stray from what I thought was the original question. Are patents being drafted today qualitatively different than those written a decade-ago? The answer, in my view, is an unequivocal yes.
Many companies that purport to want solid defensible patents, still press for numbers, exert pricing pressure (we can get it for less off-shore), and “don’t want to pay for training” newer associates. The end result is good technical hires that do not get the required training for preparing the focused applications required to handle the current scrutiny.
In short, you need the technical background and the mentoring to become a polished patent attorney/agent.
Worse! As an example, the primary and only reference of a final rejection I recently encountered is an Epson application that overuses the term “gist” for every minute feature in a 48 drawing sheet, 52 page specification and 54 claim application that probably has a kernal of protectable subject matter. But apparently that kernal has not yet been found in over 10 years. Akamatsu et al (US 2005/0113025 A1)
I’m interested in whether drafting in engineering requires talents different from those needed in chem/bio drafting. I got a nice answer from Liberty for All to my question at 23.1.2.1.2 below, but I’m hungry for more. Suppose your inventor brings you “Molecule X” that plausibly achieves some useful medical effect. Suppose another inventor brings you a prototype gearbox or stent delivery catheter. How, in each case, do you fix the independent claim and write a nicely-graded set of dependent claim fall-back positions? Don’t you think the talent to find the main claim, the inventive concept, is different in engineering than in chemistry?
And what about the “Who Goes First” question. Outside the USA, you need to have written into the specification, before you file the application, the claim at the level of generality that you will take to issue. By contrast, in the USA, it seems to me you write a hopelessly broad unsustainable main claim and a narrow dependent claim directed to the illustrated embodiment. In effect, you are saying to the PTO, search first and then I’ll tell you at what level of generality I’ve invented. That doesn’t wash, outside the USA. H83ven help the rest of the world though, now that the USA has gone to FtF and so must up its claim drafting game very substantially.
…another oddity of yours is this prediction of calling things <Ioutside of chem/bio “engineering.”
You do realize MaxDrei that “engineering” is the proper term for chem/bio too, right?
Hungry… thirsty… makes no difference, as you have a mind closed to understanding anything that does not fit your desired “world view.”
Ladders of Abstraction apply in ALL art fields. The odd (and rather weak) attempt to distinguish some art fields from this technique serves no one (no matter how “polite” the attempts to cloud that fact – eppur si muove and all).
(lol, damm autocorrect: change “prediction” to “predilection”)
…and your penchant for claims being “upped” remains most odd as the US law against added matter remains the same (and it is this law that is the driver).
You seem most eager to chafe at the differences in law between the sovereigns, and show NO serious critical thinking as to the meanings of those differences.
Message to MaxDrei. At first glance, one would say that drafting claims and specification in biotechnology and biochemistry take more skill than drafting claims and specification in mechanical engineering or in medical devices (I have 15 years of experience in both of these). Ordinarily, one might say this, because the typical scrivener doing biotech patent work has a Ph.D., while the typical scrivener doing mechanical devices does not. Biotech patenting takes more skill, as one might categorically conclude, because biotech patenting requires skills in PROPHETIC claims. The spec needs to be carefully written to ensure enablement of prophetic claims. This is much less an issue with mech device claims. On the other hand, mechanical and medical device patent work has unique traps and requires unique skills. One trap that is especially harsh (that occurs in mechanical devices BUT NEVER IN BIOTECH) is the need to have a structure number on a diagram, for every structure that is in a claim limitation in the claim set.