Said Element

The tradition in patent law is to begin discussing an element then continue discussing said element. I never liked that particular approach because the word “said” seemed odd to me. Instead, my claim drafting practice was to largely avoid the word “said.” Instead, once a claim element is given antecedent basis, I would then refer to it as “the [element].” It appears that my approach is now the conventional wisdom. The chart below shows the breakdown in patents using “said” in Claim 1 vs those using “the.” You’ll note a sharp decline in the popularity of “said” that appears to have begun around the mid 1990’s.

From Jeff Sheldon:

I am going to claim some credit here. My book “how to write a patent application ” came out in about 1990. I advocated for “the” rather than “said” for readability by judges and juries. The book is widely used and updated twice per year. So a generation of patent practitioners have developed with that recommendation.

67 thoughts on “Said Element

  1. 21

    I’ve never met anybody of ordinary skill, extraordinary, or even below average skill who in speech or writing uses “said.”

    1. 21.1

      Many words and phrases are used in legal context that have no non-legal written or spoken usage. When was the last time that you heard anyone say “misprision” or “mens rea” outside of a court or outside of a process of adjudication?

        1. 21.1.1.1

          I don’t think that Joachim ever got the memo about making “legal context” less legalese.

          See posts 3.1, 3.2, 3.2.1, and 1 below.

  2. 20

    How does this work in other countries, particularly Japan? I do some prosecution work for a JP client, and I’ve noticed that if they positively recite an element that introduces something else (“An apparatus comprising: a widget component having a property”) they’ll refer to the positively recited element via said (“The apparatus of claim 1, wherein said widget component is blue”), and the “something else” via the (“The apparatus of claim 1, wherein the property is humidity”).

    I’ve never asked (probably should), but have always wondered.

    1. 20.1

      Japanese often does not use a definite article like”the” or “said”, though there are Japanese words that can be used for both (“the” is usually rendered by “kono” – “this one”, “sono” – that one. “ano” – that one over there; “said” by “zenki” – “aforementioned”).
      So in Japanese both your claims would probably be rendered without a definite article: “Concerning apparatus of claim 1, widget component is blue”, “Concerning apparatus of claim 1, property is humidity” would be dreadfully literal translations (though in both cases, in Japanese the subordinate clause would appear first, rather than second as I have done here to make it somewhat more readable in English).
      I think what you are seeing may be a “gloss” put on the English text by the translator rather than a pure translation.

      1. 20.1.1

        From what I can tell, the JP attorneys write their own amendments in English. Depending on the outside firm I’m working with in JP, the quality varies. Some are quite good, others are quite poor.

        The latter appear not to like working in English, and will accept any Examiner proposal to get the claims allowed, even if results in a lengthy “infringement-proof” claim. I’ve informed the client about this, but for whatever reason, they don’t seem to mind.

        Many of the patents, to use an old Professor Kayton term, are very expensive ugly looking wallpaper.

  3. 18

    It is too bad that claim drafters or interpreters rarely understand the distinctions among “such”, “same”, and “selfsame”. Use of these terms can increase precision, but so many examiners have such poor command of English that anyone using these terms should probably include an explanation of terms.

    1. 18.1

      I’ve found that frustrating. The job (patent examiner) is almost entirely built around nuances and careful interpretation of the English language, yet many examiners, though technically fluent, still lack the precise command of the language to understand the subtleties that would otherwise impart patentability.

      1. 18.2.1

        Two cars can have the same (i.e., identical) engines simultaneously.

        Suppose car A has an engine, and car B does not. If I take the engine out of car A and put it in car B. Car B has the selfsame engine that car A had.

        I might use “such” in referring to 8 cylinder engines that are not necessarily identical.

  4. 17

    I also prefer the use of “the” over “said,” and have been avoiding “said” usage for the past 15 years!

  5. 16

    Question – can someone refresh me on the need for antecedent basis for inherent features? For example, if I claim “a widget,” I was taught that I can refer to “THE weight” of the widget, or other inherent characteristics, without first reciting “A weight” of the widget.

    It makes sense to me, because if I say “A weight” of the widget, does that imply that there is more than one weight? (yes, I recognize that weight varies based on gravitational forces).

    Anyone know if I was taught correctly that such inherent features do not require antecedent basis?

          1. 16.1.1.1.1

            Personally, I just do not assume antecedent basis for things that are inherent. It’s easier that way and less likely to cause more work down the road.

            1. 16.1.1.1.1.1

              I agree. Although, I can tell when I’m dealing with a very junior examiner when I get 112(b) issues for things like “the weight of a widget,” and so on.

    1. 16.2

      There is nothing wrong with referring to “the weight of a widget” without having previously recited “a weight of the widget”, but in practice Examiners frequently have a hard time understanding this, so I typically avoid it, or change it if an Examiner enters a 112 rejection. It’s kind of ridiculous, but why fight a battle over something that you can easily change without affecting claim scope.

  6. 15

    I am going to claim some credit here. My book “how to write a patent application ” came out in about 1990. I advocated for “the” rather than “said” for readability by judges and juries. The book is widely used and updated twice per year. So a generation of patent practitioners have developed with that recommendation.

    1. 15.1

      When I was training (late 1970s/early 1980s), I was taught to avoid “said” in favor of “the”; and to avoid “means” unless you really did intend to invoke 112(6) – as it then was. “Said” offers no greater precision than “the”, as long as you’re duly cautious about antecedents. “Means” was horribly abused because a few attorneys somewhere thought adding it offered a marvelous broadening factor, which was nonsense even before the CAFC tightening up on 112(6) – “fastener means” was never of greater scope than “fastener”. There was a dreadful example on disposable diapers that I remember, where the patent referred to “leg means”: I have to wonder what the writer thought the broadening factor was supposed to include – arms?, head?

  7. 14

    “Said” may, in some situations, not sound as odd when referring to a method step. For example, heating an element …., wherein said heating includes ….

  8. 13

    Using “said’ for a claim element can be a good reminder that you need an antecedent for it in the claim, and to check for it. [A surprising number of claims get issued without one.]

    1. 13.1

      “Said” seems to sound archaic and was probably replaced more because it sounds strange to lay people. But, –reality– “said” is probably better than “the” in claim language. It is actually better practice because it is making clear that it is referring to an antecedent, but “the” is not.

      “Said” probably was replaced as part of the make things easier to read so a judge and jury can understand the claim. The practice of replacing said with the is actually bad practice. It is replacing a more precise word with a less precise word because it sounds better to lay people.

      1. 13.1.1

        Exactly the point i wanted to make. “The” is less precise and permits interpretations to vary from reading to reading. It may imply narrower limitations by being held equal to “said”, but may also be broader where “the” is used to refer to implied structure not elsewhere stated. Consider “a panel with a picture on the front and adhesive on the back.” It may be argued that front and back are inherent to a panel, but without earlier identification they are not “said”. But what if there are a front and back previously recited, but not of the panel. The might be rejected as indefinite then, but it is very easy to overlook where “the” feels so natural.

      2. 13.1.2

        I stopped using “said” 20+ years ago. I personally find claims written with “said” to be unreadable. I don’t see the quandary.

        1. 13.1.2.1

          But, you have to admit it is only that you don’t like the sound of said. Both are one word and both are conveying the same meaning with said a more precise word to use.

          So, it is all just that you don’t like the sound of it.

  9. 10

    I don’t understand the graph. If the y-axis is percentage of patents, what does each circle represent? If it were truly percentage of patents, there should be a single point representing, for the given time period, the percentage of patents using the word “said.” What, then, does each dot in the graph represent?

    1. 10.1

      I think it is one dot per time period (e.g., monthly, quarterly, or whenever the OG is published – I can’t tell), but the dots are big and numerous.

    2. 10.2

      If you stretch out the X-axis of the graph, then what will result is what you say, i.e., a single point for the compressed time scale on the X axis (I think).

  10. 9

    Dennis,

    In response to what I believe was a presentation by a patent attorney, I long ago abandoned “said” for “the” in patent claim language. Same generally goes for drafting other legal documents such as contracts.

  11. 8

    Like most archaic jargon, this will go by the wayside when the olds loosen their vice grip on the profession and go off quietly into the good night.

    “BECAUSE THAT’S THE WAY I’VE ALWAYS DONE IT” seems to be the standby answer for anyone over the age of 45 or so who thinks he’s reached peak lawyerness and doesn’t care to keep bettering himself.

    Whatever.

    1. 8.1

      “BECAUSE THAT’S THE WAY I’VE ALWAYS DONE IT”

      The patent office uses that explanation for why claims must be only one sentence.

      And design patents can only have one claim, which is meaningless phrase anyway.

      1. 8.1.1

        You may want to make sure you’re getting the right CLEs… :)

        “The Hague Agreement is an international registration system which offers the possibility of obtaining protection for up to 100 industrial designs in designated member countries and intergovernmental organizations (referred to as “Contracting Parties”) by filing a single international application in a single language either directly with the International Bureau of the World Intellectual Property Organization (WIPO) or indirectly through the office of applicant’s Contracting Party.

        Beginning May 13, 2015, U.S. applicants will be able to file international design applications through the USPTO as an office of indirect filing, and applicants filing international design applications will be able to designate the United States for design protection. In addition, U.S. design patents resulting from applications filed on or after May 13, 2015 will have a 15 year term from issuance.”

    2. 8.2

      roflcopter: “said” is actually better practice for clarity. “Said” went away because it doesn’t sound good to lay people. But, —reality– it conveys a more precise meaning with one word than “the” does.

      I do wish that people would use their intellect and not their emotions.

      1. 8.4.1

        Speaking from the point of view of a patent attorney in his mid-60’s, I don’t mind “olds”, but I rather like the British “wrinklies”.

  12. 7

    Engineers (perhaps especially electrical engineers such as myself) will note that the decline in use of “said” appears remarkably close to 3dB/decade. I don’t suppose we can get the same data on a log scale to confirm? :)

    One explanation for a constant rate of attenuation could be that the less use is made of “said”, the less inclined drafters may be to use it in new claims. If so the decline will likely continue, unless or until disrupted by some Federal Circuit claim construction ruling that “the” does not always provide a sufficiently unambiguous connection to an antecedent element.

  13. 6

    I think they mean slightly different things. “The” does not imply that you are referring to something you said before. For instance, when you say “The Earth” or “The United States” it does not mean you are referring to “An Earth” that you mentioned earlier. You see this especially in Markush groups, which always say “the.”

  14. 5

    What a sharp decline indeed.
    I am wondering whether “at least” has declined over the years as well, either in independent claims or in dependent claims.

  15. 4

    Good riddance “said”. Hope the decline is even faster for “either”, a 112 magnet and basically always the inferior word in claims.

  16. 3

    It’s almost as if there was some sea change in patent law around the mid-90s that resulted in an influx of practioners who were unfamiliar with the existing paradigms or who were eager to abandon those paradigms, or both.

      1. 3.2.2

        Use plotted against user (registration number) might show the “old fogeyism” factor…

        Might be interesting to compare that plot with similar plots such as the uses of Jepson claims and deliberate 112(f).

        1. 3.2.2.1

          anon, regarding deliberate avoidance of the commonly used means plus function, that started after a few decisions in by the Fed. Circuit in the late ’80/’90s. Valmont comes to mind, written by Rader.

          1. 3.2.2.1.1

            One can always count on patent profanity (and need not single out former Chief Judge Rader).

            …as for Jepson claims, well, there is an outstanding point on the table of discussion with you on that subject, isn’t there? ;-)

  17. 2

    I agree that “said’ is annoying legal jargon, and I favor “the” instead. However, there are very limited circumstances in which I might prefer “said”. It may be that if used very sparingly it provides greater emphasis or less awkward transition.

    For example, consider a claims that recites: “wherein another device receives a message… and wherein ‘said’ another device…” in contrast to “wherein ‘the’ another device”, which is a bit awkward.

    1. 2.2

      Or you could just say “wherein a second device receives a message…” and then recite “the second device…”

  18. 1

    Following your approach…?

    I think there is some missing antecedent basis….

    That being said, there has been a wholesale move towards eliminating stilted legal jargon and to speak plainly.

    Pretty sure that that is not just in patent law.

    1. 1.1

      Yes, but not just from attorney initiative. The “plain English” requirements of consumer protection laws contributed.

      However, some of the employee invention assignment agreements I have seen used by some companies still read as if they were written by Shakespeare rather than written than in modern English.

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