Wherein the Improvement Comprises

We begin claim drafting today in my patent law course. I wonder what Patently-O readers think of the following patent office rule found in 37 C.F.R. 1.75(e)

Where the nature of the case admits, as in the case of an improvement, any independent claim should contain in the following order:

  1. A preamble comprising a general description of all the elements or steps of the claimed combination which are conventional or known,
  2. A phrase such as “wherein the improvement comprises,” and
  3. Those elements, steps, and/or relationships which constitute that portion of the claimed combination which the applicant considers as the new or improved portion.

Recognize here (1) as a promulgated rule, the provision has the force of law but (2) very few claims follow this suggested form.

147 thoughts on “Wherein the Improvement Comprises

  1. All this talk of the distinction between US Jepson and EPC 2-part claims reminds me of one of my favorite EP granted claim sets:

    1. An article comprising A, B, C, characterized in that the article further comprises D, E, F.

    7. An article comprising D, E, F, characterized in that the article further comprises A, B, C.

    14. (yet another mish-mash of the same 6 elements, some characterizing, some pre-characterizing).

    The applicant (eventual proprietor) had to argue strenuously across multiple communications in order to keep all 3 independent claims together (inasmuch as they were all drawn to an article); meanwhile, no one in the E.D. seemed to take notice that the claims more or less canceled each other out.

    1. Mellow, please share with us the serial number of the patent, a collectors’ item for sure.

    2. Mellow, I see that it’s your favorite issued EP patent. It could be mine too, if you will share with me its serial number. Can you do that please?

    3. Cancel each other out? How so?

      A vehicle having an engine, tires and a steering wheel characterized in that it also has a transmission, brakes and seats.

      A vehicle having seats, steering wheel and tires characterized in that it also has an engine, transmission and brakes.

      If the combination is novel and each body includes at least one novel aspect, they just claim the same thing while emphasizing different aspects. No?

      1. Les,

        Your example is not the point being attempted to be made.

        Using your example, look at the following two (modified) claims:

        A vehicle having an engine, tires and a steering wheel characterized in that it also has a transmission, brakes and seats.

        A vehicle having a transmission, brakes and seats characterized in that it also has an engine, tires and a steering wheel.

        Now do you see the point?

  2. wherein the water detector is configured to be reliably installed by an untrained installer or a homeowner and to not require the services of a plumber or electrician to perform installation

    LOLOLOLOLOLOLOLOL

    Wow.

  3. As a promulgated rule with the force of law, 37 C.F.R. 1.75(e) authorizes the format described in the rule (aka “Jepson claim” named after Ex parte Jepson, 243 Off. Gaz. Pat. Off. 525 (Ass’t Comm’r Pat. 1917)).

    This format is discretionary and has been used to avoid rejections during prosecution such as double-patenting. However, it has become a disfavored practice when there is no benefit to the inventor in admitting the elements of the prior art and is rarely used after Judge Newman noted that it is an exception to “the modern style, [where] patent claims no longer merely claim the salient features, the ‘heart’ of the invention.” Pennwalt Corp. v. Durand-Wayland Inc., 833 F.2d 931 (Fed. Cir. 1987) (en banc) (Newman, J., dissenting).

  4. Trying to be helpful here. The EPC dates from 1973. The text of its Rule 43(1) is.

    “The claims shall define the matter for which protection is sought in terms of the technical features of the invention. Wherever appropriate, claims shall contain: 
    (a)
    a statement indicating the designation of the subject-matter of the invention and those technical features which are necessary for the definition of the claimed subject-matter but which, in combination, form part of the prior art; 
    (b)
    a characterising portion, beginning with the expression “characterised in that” or “characterised by” and specifying the technical features for which, in combination with the features stated under sub-paragraph (a), protection is sought.”

    Relevant to the discussion here, in the Rule 43(1) text, note i) “where appropriate” and ii) “in combination” part of the prior art.

    1. “Wherever appropriate,” as stated at EPO and “Where the nature of the case admits,” as stated at USPTO, strike m as both being conditional in exactly the same way.

      Some smart ash lawyer will find a difference, but that is the “fun” of posting here, isn’t it?

      1. The EPC Rule states “shall”. The CFR states “should”. Do you see any difference there? I do.

        1. I do see the shall vs should difference.

          But neither “should” nor “shall” comes into play unless the condition precedent of “Wherever appropriate,” or “Where the nature of the case admits,” is satisfied.

          1. SVG, you might be surprised, how often, under the EPO’s Problem and Solution Approach, it is (in the opinion of the Examining Division) “appropriate”. That’s an example of when prosecution at the EPO can require significant advocacy skills and a high degree of professional judgement.

            1. ah, my comment (in transition – and caught in the “don’t have a dialogue” filter) touches on the very thing that you hint at here: WHO exactly (and how) is this whole “appropriate” thing managed.

              I would dare say that this though is NOT necessarily an item for “significant advocacy skills” as this should be a mere ‘processing’ step…

              (with the caveat that within the processing, IF the applicant does not control and must, for whatever reason, convince the Office as to “appropriate,” then advocacy skills certainly would come into play)

              …and, if not a mere processing step, I would be curious as to how exactly the law carves out this ‘power’ in your sovereign.

              1. The EPC states that the task of the EPO is to grant patents. The Implementing Regs of the EPC state as the task of the Examining Division (ED) to examine whether the patent application meets all the patentability provisions, not only of the EPC but also of its Imp Regs (including Rule 43). The ED must in every case issue a Decision, either grant or refusal. A refusal decision is appealable (and often is appealed).

                It is a rare case, where a Refusal Decision issues for failure to comply with Rule 43(1) in that the ED thinks a c-i-t form of claim is “appropriate”, Applicant thinks not and cannot convince the ED otherwise, and the ED feels strongly enough about the issue to refuse the application for that reason alone.

                1. LOL – here is an 889 page document.

                  Don’t worry, the word “appropriate” only appears 194 times in those 889 pages.

                  So…. the precise helpful part of those 889 pages is…?

                  After brushing away dozens of non-helpful “appropriate” references, I note that page 566 indicates that Section 2.3.2 IV-3 is labeled “Two-part form “wherever appropriate.”

                  Page 601 continues (with section 2.2 Two-part form):

                  Where, however, a claim relates to a novel combination, and where the division of the features of the claim between the prior-art part and the characterising part could be made in more than one way without inaccuracy, the applicant should not be pressed, unless there are very substantial reasons, to adopt a different division of the features from that which he has chosen, if his version is not incorrect.

                  2.3 is also helpful.

                  and then to 2.3.2:

                  2.3.2 Twopart form “wherever appropriate”
                  When examining whether or not a claim is to be put in the form provided for in Rule 43(1), second sentence, it is important to assess whether this form is “appropriate”. In this respect it should be borne in mind that the purpose of the two-part form is to allow the reader to see clearly which features necessary for the definition of the claimed subject-matter are, in combination, part of the prior art. If this is sufficiently clear from the indication of prior art made in the description, to meet the requirement of Rule 42(1)(b), the two-part form should not be insisted upon.

                  You are welcome.

                  😉

          2. As to that condition precedent, I wonder which party has the authority to determine whether or not “appropriate” has been obtained.

            There is a H U G E (and fundamental) difference between an applicant determining whether or not something is “appropriate,” and the Office making that determination.

            Further, if it is the Office making this determination, are the parameters of such a decision spelled out (in writing, with any possible challenge path, also in writing)….?

            If it is the applicant making this determination, does the Office have the power/authority to challenge the determination? Would such authority to challenge also be written out (as well as possibly providing a rational basis for the challenge and how such a challenge would be met, including what may suffice for an “acceptable” or “not acceptable” answer to any such challenge)…?

            Short of having a detailed system already in place, this appears to be an optional item (even as it is cloaked in the EP as something more with the “shall” verbiage).

            And yes, these thoughts may also apply in the US sovereign, which then even more indicates the lack of power of the US patent office to levy ANY “penalty” – and no, Malcolm, this has ZERO to do with any notion of whether or not someone wants “patent quality” – no matter how that term may be defined.***

            *** to be clear, we should be talking about “patent examination quality” as opposed to “patent quality,” as anyone who knows anything about processing knows that the Office can only control that which it is allowed to control, and efforts otherwise are d00med to failure – see again the Tafas case, which, sadly, seems to have been forgotten by many here.

  5. Maybe the the system claim in Alice would have looked like this:

    A data processing system having a communications controller, a data storage unit, and a computer coupled to said data storage unit and said communications controller, wherein the improvement comprises:

    the data processing system enabling the exchange of an obligation between parties,

    the storage unit storing therein (a) information about a first account for a first party, independent from a second account maintained by a first exchange institution, and (b) information about a third account for a second party, independent from a fourth account maintained by a second exchange institution; and

    the computer configured to (a) receive a transaction from said first party via said communications controller; (b) electronically adjust said first account and said third account in order to effect an exchange obligation arising from said transaction between said first party and said second party after ensuring that said first party and/or said second party have adequate value in said first account and/or said third account, respectively; and (c) generate an instruction to said first exchange institution and/or said second exchange institution to adjust said second account and/or said fourth account in accordance with the adjustment of said first account and/or said third account, wherein said instruction being an irrevocable, time invariant obligation placed on said first exchange institution and/or said second exchange institution.

    1. the data processing system enabling the exchange of an obligation between parties

      Good lord what a pile of ridiculous g@ rbage.

      And it only gets worse from there.

  6. why on earth would you even bother teaching someone to draft a claim like that?

  7. Dennis the filter is silly. I just replied to Silicone Valley Girl’s 112111 and it blocked me. It seems it cannot distinguish serious dialogue from frivolity. That’s a great impediment to worthwhile conversation in these columns, sorry to say.

    1. It seems it cannot distinguish serious dialogue from frivolity.

      We agree on this point.

      The “count” aspect – even (especially) as applied – is way out of whack.

      But when a certain desired narrative cannot be obtained with objectively applied editorial controls….

  8. So, I’m reading this question slightly different from most above. I’m reading “improvement” in terms of Enfish case law, as means for patent eligibility. For example:

    17. A data storage and retrieval system for a computer memory, wherein the data storage and retrieval system improves the performance of the computer memory, compising:

    With regards to that, I don’t see much issue, and I’ve seen a fair amount of the examining corp require some sort of “improvement” in the claims when allowing based on Enfish. While I don’t think those amendments should be required to win an Enfish argument, I don’t see this as actually having much weight to what is going as the statement is an inherent part of the system, and now it’s just being spelled out.

  9. I remember when I was an Examiner trainee, my SPE told me that “while statutes have the force of law, and can not be waived, the Office has the authority to waive the CFR rules.” Granted, we did not do this often, but the Examiner’s did have that authority.

    The CFR rule to which the OP referred is one of those that has never been enforced, and the beginning of it states “where the nature of the case admits.” Reconcile that with the fact that the inventor (or inventor’s counsel) has no obligation to do a search at all – and if one has not done such a search, then one lacks complete knowledge as to what the “conventional or known elements or steps even are” in the context of the combination being claimed.

    So, I don’t see an issue at all.

    1. The other thing about this is even if what you did is an improvement, the odds are high that what was improved has also changed so that the scope of the improvement is different than the prior art. (So, your improvement works on a larger set of things than the old prior art.)

  10. Kernen: You know what? Life is weird too, because I think it’s weird that Adam Smith wrote that book in 1776 and it…

    Buffett: Yeah, exactly.

    Kernen: That’s not a coincidence. That when you’re able to own an idea, and you got, like, a court system that will back up your ownership of patent law, and then you can commercialize it, I think maybe that was it. I think intellectual property, and property rights, and things like that. Because prior to that, after 10,000 years of spinning our wheels no one … What was the average GDP per person? And then all of a sudden, starting when you were able to own an idea and commercialize it, suddenly it exploded, GDP, like, in multiple times.

    Buffett: It unlocked human potential, Joe. I mean, you know, we aren’t smarter now than they were 240 years ago, and we certainly don’t work harder. But once you started opening up human potential,the sky’s the limit. And it’s just starting.

    link to cnbc.com

    1. So, how do the propagandist account for the innovation engine of the USA?

      People like Mark Lemley are just a disgrace to academia and the human race.

      1. In these columns, I am constantly reminded that “A man sees what he wants to see; and disregards the rest.”

        Not to mention that man with the legendary big ol’ hammer, for whom every comments column is yet another nail.

        1. Could you be a little more vague and general MaxDrei?

          1. More vague? More general?

            Sure. Read what you want to read, Night, from within the world’s great storehouse of non-patent literature, and then disregard all those other theories about what has made the USA the world’s greatest engine of Innovation that don’t fit with your own opinion.

            For example, is the USA pre-eminent in the field of programs for computers? For how long now has it been pre-eminent? And was that long before the USPTO start routinely granting patents on programs for computers? Should we ask Bill Gates?

            1. MaxDrei, a better question is how long have information processing patents been around? 22 years at least and really patents started to become a force back in the mid-1980’s.

              And, actually, I was a developer with a start-up starting in the early 1980’s. What happened was that trade secrets were started to rule the world. Intel was making a processor so that your code could not be reversed engineered. Employment contracts forbad you to disclose anything that you were working on.

              Guess what? All that went away with patents. There is no question from anyone that has lived through the rise of software from the late 1970’s to now (like me) that patents are at the heart of the success.

              1. Since the 1970’s there has been, in the engine of innovation, an exponential rise in the amount of data being processed, and also in the engine of innovation a huge surge in patenting everything under the sun. I dare say, Night, that we can agree about that. The engine is running hotter than ever and will continue to do that, even more so if there is a prohibition on the impediment caused by patents on logic.

                1. >>The engine is running hotter than ever and will continue to do that,

                  No that isn’t what I see. I see small groups of people trying to keep things secret now rather than trusting the patent system. I also see large corporations questioning patents altogether. I also see that patents are often why they spend so much on research.

                  Patents on logic? What are those? I hope you don’t mean information processing patents. You mean the core of what is driving innovation? You mean doing what the human brain did before? You mean patents on incredibly difficult science and engineering?

              2. >>There is no question from anyone that has lived through the rise of software from the late 1970’s to now (like me) that patents are at the heart of the success.

                This sounds like you’re saying that patents were more important for the growth of the software industry than the improvements in processing power, across the 70s and 80s.

                Can you confirm or refute that?

                1. There is no question from anyone that has lived through the rise of software from the late 1970’s to now (like me) that patents are at the heart of the success.

                  ROTFLMAO

                  That’s some potent k00l-aid. Be careful out there, kids.

                2. Ben,

                  I see NO such “one must be more important than the other” in Night Writer’s comment.

                  Perhaps a clarifying question for you: do you understand the equivalency (in patent terms) between the various “wares” that are in a computer system?

                  If, as I suspect, you “feel” that software somehow is NOT equivalent to hardware (or even firmware) – again, in the patent sense – then it is your feelings intruding into how you are viewing what people are writing here – and doing so in a rather unhelpful way at that.

                3. August 31, 2017 at 3:32 pm
                  >>I can confirm Ben that you sound like a third-class troll.

                  (since apparently purely ad hominem posts are acceptable)

                  Crawl back under your rock, you has-been.

  11. The main problem with Jepson style claims nowadays is that while combo

    ABC may well be old in one reference and the addition of D could well be new over that reference there could very well be a reference that shows ABD separately. If that is the case, what then do you put in the Jepson clause? C+D? What happens when these issues multiply by a dozen from a dozen refs for half a dozen features/combos of features?

    1. Jepsons are for fools. You are making admissions and asking for your claim to be piecemeal examined.

  12. I have written hundreds of claims, and in every one of them the “nature of the case” has conveniently precluded the use of Jepson claims.

  13. Also, the prior art admission Jepsen format is totally devoid of context. However, context is often critical to determining obviousness.

    1. Yes I agree you nasty looking lobster creature.

  14. I think the rule is horrible for applicants.
    1) it encourages the claim to NOT be read as a whole
    2) it encourages the unintentional admission of prior art, that may not necessarily be prior art.

    Specifically, regarding unintentional prior art admissions, sometimes the inventor assumes that certain things are prior art, because to her/him that was their first solution to the problem or because that solution seems so simple, when in fact the inventor has not real basis for assuming that what they thought was prior art was indeed prior art. Also the format encourages people to look for prior art where there might not be any prior art known to the inventor or anyone else that is involved in writing the claim.

  15. The EPO 2-part (characterized in that) claim should not be seen as comparable with a Jepson.

    Why? because in the pre-characterizing part of the claim one recites ONLY those features indisputably disclosed/enabled, in combination, in D1, where D1 is the “realistic starting point” document for the EPO’s unique “problem and solution approach” to the exploration of the obviousness issue. Without the PSA, the 2-part claim is meaningless.

    A Jepson is totally different. It says something about what is “conventional”. Why would an Applicant choose to make an admission that a combination of the features in his claim is “conventional”? What is “conventional” anyway? There is no such admission in an EPO 2-part claim.

    1. MaxDrei,

      Do applicants upon initial writing of their applications set forth exactly which reference is to be considered to be D1?

      If not, how then does the D1 reference (I am supposing that this reference then becomes “known” only after the application has been submitted to the Office) become integrated into claims without offending the “no new matter” rule?

      And yes, I consider adding something if only to distinguish the rest of the claim as in fact adding new matter.

      1. How? Typically by amending claim 1. One strikes out the word “wherein” and replaces it with “characterized in that”.

        Whether you “consider” that particular amendment to add matter is not of interest.

        Incidentally, the 2-part form is potent, in concentrating the mind of the wilfully blind US attorney in love with his own poor claim. What is relied upon for novelty over D1 is revealed explicitly, in all its poverty.

        1. Perhaps I was not clear. I was not asking about the mere change in phrase “wherein” or “characterized in that,” but was asking specifically about the D1 reference.

          1. Exceptionally, anon, this time you were clear. You raised a very important issue, at the cutting edge of professional competence of practice before the EPO.

            At the EPO, if the drafter/prosecutor is not very careful, he navigates his client into the notorious Bermuda Triangle (whose vertices are Articles 54, 84 and 123(2) of the EPC). The subject is at the cutting edge of professional competence at the EPO.

            And my answer was specific to the D1 reference. It used the word “typically” to avoid getting into the complexity.

            Handling well-drafted cases from the USA (as one does) one finds that the drafter already knew the closest art, and chose the word “wherein” deliberately, given that knowledge of the background to the claimed subject matter. In such cases, the only amendment needed is to replace the W word with c-i-t.

            The claims in the Bermuda triangle are typically those drafted by people with no experience of the constraints of the First to File world, by drafters with inadequate knowledge of the prior art, lacking any thought to hedge against the known unknowns in the world of the prior art. Sometimes they are beyond help.

            1. And my answer was specific to the D1 reference. It used the word “typically” to avoid getting into the complexity.

              So I look at your answer again:

              Ah yes, you do use the word “typically,” along with “amend,” but you nowhere mention D1, but instead you delve into the word play between “wherein” or “characterized in that.”

              Sorry MaxDrei, but I can divine not the aspect of an answer to my question.

              Your follow-on comment appears to be complimentary, indicating that I have alighted upon some “cutting edge of professional competence,” but you you still do not address whatsoever the notion of how – without adding new matter – any sense of D1 is all of a sudden captured in a patent application written complete prior to ANY sense of D1 being D1.

              Unless, as I postulated to you in the original question, does the applicant SET D1 at the onset?

              You appear to lean this way with your comment of “Handling well-drafted cases from the USA (as one does) one finds that the drafter already knew the closest art” – but that is mere hindsight, unless – again – as I postulate, the applicant has the power to set D1.

              I put it this way because (you may not remember), OFTEN here in the States, the examiner does NOT use any of the possible references supplied by (“including those very same “well-drafted cases from the US”) the applicant, and instead OFTEN the first pass of examination here reflects a key word search from the claims (and often as well, it appears that the specification itself has not been read for proper context).

              Your “answer” of “. In such cases, the only amendment needed is to replace the W word with c-i-t.” simply is NOT a workable answer on this side of the pond.

              Further still, your answer is still no answer whatsoever to the notion of introduction of new matter, as the mere “replace the W word with c-i-t” would ONLY work IF the D1 reference is already IN the specification.

              Your “answer” runs smack into the problem here of patent profanity (read that as an archaic practice long ago abandoned because court effects have raised the risk of such practice) of in depth discussions of state of the art and OTHER people’s inventions.

              I suspect that your “answer” merely reflects your decades long practice, and is not a proper reflection that takes into account the changes (judicially forced and otherwise) that have occurred.

              1. In my experience, EPO examiners will require amendment of the background sections of specifications to explicitly identify and describe the “D1” references they identify, notwithstanding the fact that the references were not in the specifications to begin with. MaxDrei can explain how this practice implicates Article 123(2), if at all.

              2. [Y]ou still do not address whatsoever the notion of how – without adding new matter – any sense of D1 is all of a sudden captured in a patent application written complete prior to ANY sense of D1 being D1.

                Forgive me if I am merely telling you something that you already know, and Max can answer for himself, but I think that the answer to your question lies in the fact that the EPO just has a different idea than does the USPTO about what constitutes “new matter.”

                Here in the U.S., you would never get away with amending your background section to reference new art of which the applicant was not aware at filing, but which was discovered during examination. In the EPO, this revision of the background section is not only allowed but positively required. Similarly, here in the U.S. one cannot proviso out novelty defeating disclosures in pre-AIA §102(e) art (analogous to EPC Art. 54(3) art).

                In other words, while you, dear Anon, might consider that “new matter,” the sovereign authorities of the EPC have decided not to consider it “new matter” (as is their right), and it is in that discrepancy between US and EPO law that the solution can be found to your conundrum. You are correct that one cannot always count on being able to amend the claim to reflect the content of D1 without adding new matter (as defined by US standards), but the EPO permits the addition of that new matter (but not other sorts of new matter).

                1. Here in the U.S., you would never get away with amending your background section to reference new art of which the applicant was not aware at filing, but which was discovered during examination

                  Are you certain? 35 USC 132 only prohibits the addition of new matter to the disclosure of the invention.

                  And what if I make that amendment at the international stage? Do you think the U.S. examiner would even notice it during prosecution of the 371 application? Once that application issues, is there any legal basis for challenging that amendment?

                2. Well, you got me there. Precisely because I have considered it so impossible, I have never tried to update the background section of a U.S. application. Because I have never tried it, however, perhaps I am overstating its impossibility.

                  Has anyone here ever updated the background section of a U.S. application (or tried to do so)? Did you get a lot of push-back from the examiner, or were the amendments entered without difficulty?

              3. You’re making it too complicated, anon. Claim 1 is “A widget, comprising A+B+C+D.” D1, which you may know about or which may only come up during examination, discloses A+B+C. Once the examiner asks you to, you amend the claim to “A widget, comprising A+B+C, characterized in that the widget further comprises D.”
                No new matter. And pretty easy, if you’ve actually described and claimed a patentable distinction.
                As Max says, however, this is NOT applicable to US prosecution, because we simply don’t use the concept of the closest single reference.

                1. hmmm. not all comments are making it through (shockers, I know).

                  Dan H, elements within D1 are nto the same as references explicitly to D1, so no, I am NOT making this too complicated.

                  The better answer appears to be coming from Greg – that there is a material difference in what the different sovereigns allow.

        2. What a coincidence! I just looked at Patent Docs, to read in the most recent post a “representative claim” (from a party pleasingly called McAward) featuring the following gob-smackingly, jaw-droppingly grotesque wherein clause:

          wherein the water detector is configured to be reliably installed by an untrained installer or a homeowner and to not require the services of a plumber or electrician to perform installation

          Not very impressive, is it, lads and lasses? Not to you, not to me, and certainly not to the PTAB. But as none of you includes in the claim anything not needed to confer patentability, we must suppose that these words are decisive for patentability, as usual with any wherein clause.

          Would any of you though, resident in the world’s greatest innovation motor, counsel your client to petition the PTAB for a patent to issue on that particular so-called “invention”?

          1. Max, I can beat that. I have seen claims that read right on the prior art with the only distinction a matter of increased performance:

            1. The better car, comprising:

            the old car claimed in combination; wherein the car is configured to go faster.

            The disclosed improvement of course, might be an improvement to the engine, aerodynamics, tires, or whatever. But the claim covers them all.

            And patent attorneys slapped themselves on the back for protecting their clients.

    2. Why would an Applicant choose to make an admission that a combination of the features in his claim is “conventional”?

      To make it clear that those elements are known in the art and don’t need to be described in detail.

      That took two seconds.

      Applicants make these admissions routinely in their specs, by the way. All the time. Every day. By the many thousands.

      It’s not a big deal. Well, I take that back. It can be a big deal if you are just scrivening some horseshirt and you haven’t innovated diddlysquart. And that happens, too. Most of the major players in that category tr 0ll here and spend the rest of their time mewling over at Big G.’s place.

      1. OK MM. I see all that. I was thinking there is a difference between admitting something is “known” and that something is “conventional”.

        1. And: in what I write, the word “combination” is important.

          EPO c-i-t claims have a pre-characterizing portion that (typically) recites a combination of features found in the prior art ONLY in that one patent publication D1. That’s a feature of EPO-PSA, not a bug. These pre-characterizing parts of EPO 2-part claims are never a declaration of a “conventional” combination of technical features.

          Jepson claims are something else entirely.

          1. Max, I am curious. If the EPO professional scrivener sees the invention as a combination of A-B-C-D-E, and his/her knowledge of the prior art shows one reference with A-B-C and another reference with B-C-E, how does he or she pick which is to be D1?

            Or does he only recite B and C in the precharacterizing clause because that combination is the only part of the combination that they have in common and neither reference is really a D1?

            Does the EPO professional tell the EPO or other office where the application is being filed that the two prior art references exist? Does he say “I wrote the claim this way because of these two prior art references disclose what they disclose?”

            1. SVG, the c-i-t claim is not fit for your ABCDE invention and, as Paul Cole notes elsewhere in this thread, the EPO will not insist on it because a c-i-t is not mandatory.

              Don’t let your scrivener file a c-i-t claim on your behalf unless it is divided relative to a D1 which truly is a realistic prior art starting point.

              But when D1 is (as is often the case) Applicant’s own prior publication, and genuinely a realistic starting point for the notional PHOSITA, a c-i-t claim is often a handy way to show how patentable the claimed subject matter truly is.

              Does that help?

  16. “Recognize here (1) as a promulgated rule, the provision has the force of law but (2) very few claims follow this suggested form.”

    Yeah, but it says “should,” not must. And it appears to be the consensus of the bar, that very few cases admit its use.

  17. Dennis,

    I personally am in theory a big fan of this style of claim format (e.g. Jepson-style claims), and commented just yesterday on the fact that one of the reasons that the task of examiners is so difficult is because applicants often do not even make a good faith effort to point out what is conventional and what is believed to be innovative (in both their disclosure and their claims).

    However, as you well know, there is currently a large amount of reticence, and even antipathy, among many members of the patent bar for use of this style of claim format. In a lot of ways, this is well deserved and properly placed; however, I still think that it is unfortunate and that this style of claim format should perhaps be pushed.

    To some extent, the reluctance of the patent bar is driven by the reality that it is much more difficult to draft patent applications (and claims) that specifically identify what is conventional and what is innovative.

    In some instances, this can be a very blurry line (e.g. where old elements are combined in a new way). In such instances, a Jepson-style claim may be nearly impossible to draft, and the format may end up leading to more confusion than clarity.

    In other instances, however, this is a task that probably should be done, but it is much more difficult than the current preferred drafting style. For example, in drafting a specification, it is much easier to describe a system or method without having to identify what is conventional in the system or method. Similarly, in drafting claims, it is much easier to just recite every element or step of a claimed system or method, and leave it up to an examiner to try to locate each and every element or step.

    However, in these instances, I am rather sympathetic to the patent office, and am inclined to think it reasonable for the patent office to expect an applicant to make a good faith attempt to identify what is conventional and what is innovative. It seems like the applicant is often in a much better position to understand what is innovative and what is conventional as compared to a patent examiner.

    From a practical standpoint, I recognize that it can sometimes be hard to get an inventor or applicant to spend the time and resources to spell this out in detail. However, I think that asking an applicant to make a good faith effort to identify what is conventional and what is innovative is not an impossible ask, rather it simply makes a patent attorney’s job more difficult in exchange for making an examiner’s job a bit easier. To me, given the fact that it seems clear that examination quality is currently pretty low, this seems like a fair trade off, and a reasonable thing to ask of applicants. It does, however, in general require a higher level of subject matter knowledge for the drafting process. In a lot of ways, this is probably a good thing, and would likely result in more detailed specifications. In some ways, the issue can be framed as a 112 written description issue, in that just describing a system or method without specifically identifying WHAT is innovative could be argued to fail to demonstrate that the patentee was in possession of an invention that is later claimed that emphasizes a minor distinction over cited prior art that there was no reason to believe, based on the spec, was important.

    One of the other major reasons that I suspect that the patent bar is not a huge fan of Jepson-style claims is that any time you are admitting that something is prior art, the liability for making a mistake potentially goes up significantly. Mistakenly admitting that something is prior art is generally a scary thing.

    Myself, I would like to utilize Jepson-style claims more often, but in the current environment it is often not a good idea. I have, however, started using similar style claims on occasion in the software arts to try to emphasize particular recitation that I am focusing on as representing “significantly more” for purposes of an Alice/Mayo analysis. I have also tried a similar claim format which specifically identifies a technical problem and the claimed technical solution to that technical problem.

    1. In a lot of ways, this is well deserved and properly placed; however, I still think that it is unfortunate and that this style of claim format should perhaps be pushed.

      THIS is what happens with the patent profanity created by judicial over reach….

      Unfortunate? Sure – but let’s make sure that we all understand exactly why.

      . It seems like the applicant is often in a much better position to understand what is innovative and what is conventional as compared to a patent examiner.

      You are aware (of course) that ANYTHING an applicant states as “prior art” becomes prior art for the applicant, regardless of the factual state of that art, right?

      From a practical standpoint, I recognize that it can sometimes be hard to get an inventor or applicant to spend the time and resources to spell this out in detail.

      FURTHER, this is simply NOT what is required of the applicant – the applicant is NOT a resource for what is the “state of the art, ” NOR SHOULD SHE BE.

      This has ZERO to do with any notion of “fair trade off.” See Tafas.

      would likely result in more detailed specifications.

      Maybe you missed the lesson from KSR – when the Supreme Court super-empowered PHOSITA, they concomitantly greatly lessened what was required to be put into applications.

      You CANNOT have it both ways (one of the aspects of patent profanity). To pine and pretend otherwise does more harm than good because it creates an unreal, and unrealizable, expectation.

      1. Remember, folks: patent maximalists like “anon” are all about “patent quality.” Hence the frothing at the mouth over the idea that applicants should be clear about what was in the prior art and what it is that they believe they are “innovating” within that prior art context.

        Yes, they are very serious people indeed. Totally not hypocrites talking out of both sides of their mouths and railing and flailing against anything that might make it harder for them to get junk out of the PTO so it can be “monetized”, as “Nature” intended.

      2. “You are aware (of course) that ANYTHING an applicant states as “prior art” becomes prior art for the applicant, regardless of the factual state of that art, right?”

        This is a fair point, but in many cases there is nothing inherently wrong with admitting that something which is prior art is indeed prior art. I’ve even had cases where an examiner has taken Official Notice that something is known and I’ve agreed and put it in the record. I mean sure I could make the examiner go prove that touch screen displays are known, but what’s the point?

        Over time, I’ve come to be of the opinion that younger attorneys are taught about “patent profanity” and taught never to admit that anything is prior art largely because more experienced attorneys don’t trust them to know what they can and can’t say. As an attorney, it’s way easier to be able to follow such a hard and fast rule, but it makes the patent office’s job way harder when applicants are reluctant to even admit what is conventional.

        You seem to make clear that you don’t believe an applicant should be required to identify what is conventional and what is innovative, but I am not sure that some sort of good faith expectation at the patent office would be that out of line with what is already expected in other forums, e.g. at the Federal Circuit. If a Federal Circuit panel asked you to identify what is conventional and what is innovative in a claim before them, would your response be that you don’t feel you should have to do so? If a Federal Circuit panel can ask, then I am not sure why an examiner shouldn’t be able to ask the same question and have at least some expectation of a good faith answer.

        Note that I am not pretending to have any answers on any of these issues, and you may well be right that any sort of good faith requirement for an applicant to identify what is conventional would have negative effects. However, I do think that it’s at least something worth thinking about and having a conversation about, as there is a chance that it could make the difficult job of a patent examiner a little easier.

        1. there is a chance that it could make the difficult job of a patent examiner a little easier.

          HOW MUCH IS GOOGLE PAYING YOU??????

          lol

        2. Knowing the prior art should be expected from corporate clients, but I’ve had a number of small clients/inventors who don’t even want to pay for a patent search before filing. Expecting them to know the state of the art is a bit much.

          1. While certainly NOT “best practices,” there is NO requirement for an applicant to even bother with ANY prior art search.

            Straight up – what does the glaring lack of such a requirement tell you?

            Then remember how the Office lost in trying to push examination (of which, a prior art search is part) onto applicants in Tafas.

            Have people really forgotten about that historical event?

          2. Expecting them to know the state of the art is a bit much.

            Wow. Just … wow.

        3. JCD, at the close of prosecution in Europe, the EPO examiner requires that the D1 reference be put before the characterizing part. That much is clearly old.

          All I think we should do is copy the European practice. We should not be obligated to do anything voluntarily because we can make mistakes. We should, instead, be required by the examiner to put the D1 reference into the background portion of the claim. There can be no reasonable objection to doing so that I can think of off the top of my head.

          1. There can be no reasonable objection to doing so that I can think of off the top of my head.

            OUR sovereign considers that adding new matter, Ned.

              1. Not at all.

                New matter is ANY matter not within the original filing.

                In our sovereign, “new matter” is NOT novel or non-obvious matter.

                When you file, your ability to add anything new is cut off. And that means new to your very own disclosure.

      3. “Maybe you missed the lesson from KSR – when the Supreme Court super-empowered PHOSITA, they concomitantly greatly lessened what was required to be put into applications.”

        Noting that a person of ordinary skill is also a person of ordinary creativity, as opposed to an automaton, may make the enablement requirement easier to meet, but it does not obviate the written description requirement. Arguably, even if the written description requirement is interpreted from the perspective of a person of ordinary skill in the art, there is nothing in the written description requirement that suggests that a person of ordinary skill in the art can utilize their creativity to fill in any gaps in the description of the invention if that description fails to convey that the inventor had possession of a claimed invention.

        1. “Possession of a claimed invention.”

          What does this mean? Possession of a principle or of an inventive application?

          What if the claim claims only a principle? Does the specification have to disclose more than the claim itself to show “possession?”

          1. Ned,

            I would love to dig into all of the 112 case law and try to come up with a reasoned framework and then elaborate with my own thoughts, but at the moment my only real answer is to shrug. I think the 112 case law is rather messy. Maybe not quite as messy as 101 case law, but not far from it.

            My feeling is that there are fact patterns where a 112 written description issue can capture an important concern, and further that such a framework could be useful in allaying some concerns that some may currently try to address via 101, but I just haven’t put the time in to be able to work out anything for myself, much less articulate it.

            I think your questions are designed to get at something important, but without spending a lot more time looking into and thinking about the issues, I don’t think that I could answer them in a useful way. My apologies on that.

            J

            1. J, may I recommend Boulton & Watt v. Bull reported at, eg, Davies, John. A Collection of the most important cases respecting Patents of Invention and the Rights of Patentees. Reed, 1816 at 162.

              King’s bench split 2-2. The specification disclosed a principle that it would be better to draw steam from the main chamber to a secondary chamber for the purpose of cooling so that heat of the the main chamber could be maintained. By doing so, the overall efficiency of the steam engine was increased.

              However the specification gave no examples, not one. No drawings were attached.

              It was argued that one of ordinary skill in the art using completely conventional equipment could implement the principle once it was known. Of course the defense argued that the failure to disclose at least one embodiment doomed the disclosure.

              This case is one of the most important cases in patent law history.

      4. You gotta love the all-caps on “further.”

        1. Weeeee – way to focus on form and not content.

          You win the schmuck of the day award.

          Again.

      5. You are aware (of course) that ANYTHING an applicant states as “prior art” becomes prior art for the applicant, regardless of the factual state of that art, right?

        You mean that the applicant shouldn’t state something as fact that isn’t true? That doesn’t seem particularly unfair.

        1. No DanH, that is precisely NOT the meaning.

          I know that you like to be obtuse at times, but this is a stretch, even for you.

          It is clear that the statement deals with the opposite fact situation. That opposite fact situation concerns a mistaken statement of something being prior art when it is in fact NOT prior art.

          Do you as well see that opposite situation as ‘not particularly unfair’… that the one-way treatment ONLY can hurt the applicant? And then, after you mull that over, consider the other points already made concerning patent profanity….

          1. That opposite fact situation concerns a mistaken statement of something being prior art when it is in fact NOT prior art.
            Do you as well see that opposite situation as ‘not particularly unfair’… that the one-way treatment ONLY can hurt the applicant?

            Yes, incompetent representation can hurt the applicant. So, don’t be incompetent. And while you’re representing your client competently, forget these silly “never admit anything” rules and feel free to accurately and correctly point out how the background art (that you know about) works, and where your invention differs.

            If you can’t do it, perhaps your client shouldn’t be filing a patent application. Or should be using a different attorney.

    2. it is much easier to just recite every element or step of a claimed system or method, and leave it up to an examiner to try to locate each and every element or step.

      LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL

      Omg, what a priceless thread.

    3. Requiring a “good faith” effort opens up a whole new can of worms on the inequitable conduct battlefront (to mix metaphors).

      Infringers will take potshots at those efforts and say that whatever they are do not amount to the requisite good faith, so the patent was inequitably procured and the patentee owes the infringer for the attorneys fees to coax a court to kill the patent.

  18. Sloppy drafters/prosecutors will tuck the “improvement” into a wherein clause. So, if a wherein appears at the end of prosecution in an amendment prior to a notice of allowance, you effectively know what was added that was the “improvement.” I always look at wherein clauses with specific attention when assessing a claim.

    1. Sloppy drafters/prosecutors will tuck the “improvement” into a wherein clause.

      And what do the un-sloppy ones do?

      1. I don’t know, probably not plant a red flag? Just a guess.

        1. a red flag?

          A “red flag”? Symbolizing what?

        2. You do realize that the file wrapper is available, which makes it extremely easy to find out what amendment the applicant used to get around the art whether it is buried in a “wherein” clause or not, right?

          1. You do realize that the file wrapper is available

            And you do realize that the file wrapper isn’t available to the first Examiner. I’m pretty sure that’s a key point, although BB is understandably reluctant to reveal the details of the clever scrivening games he plays to obtain “quality patents” for his super awesome clients.

            1. And you do realize that the file wrapper isn’t available to the first Examiner

              ?

  19. Are we just going to ignore the part that says “Where the nature of the case ADMITS”?

    That introductory clause makes it clear that 37 C.F.R. 1.75(e) sets forth the required format for Jepson claims, which are only used when the applicant ADMITS that the invention is an improvement on an existing invention.

    Where the applicant does not ADMIT as much, there is no need to follow the rule.

    1. I can’t tell if you are serious or not, so I will go ahead and respond for clarity.

      The word “admit” in the phrase “[w]here the nature of the case admits” is not being used to reference an applicant admission, but is instead just being used in its more general sense.

      1. Not sure if that “more general sense” departs much from what I took from quasar18’s comment. To wit: this is entirely optional at the discretion of the applicant. In that “more general sense,” “admit means that the applicant feels that taking that option is a better path (vis a vis, for example, the instances in which you yourself state above that you might use a Jepson-like approach).

        That “more general sense” though STILL carries with it that this – in no way – is a legal requirement.

        1. this is entirely optional at the discretion of the applicant.

          Remember, folks: “anon” is all about “patent quality.”

          Or so he would like naive people to believe.

          Funny stuff. Beyond parody, really.

          1. Pardon Potential (re)Post

            Somehow, you have this rather odd notion of what patent quality MUST entail….

            That cognitive dissonance is kicking in again.

      2. The rule does use admit in the more general sense but in practice, wouldn’t the decision about whether the “nature of the case admits” come down to the applicant?

        I guess they could be using the term “admit” to mean “allow” but the result would still be the same.

        No matter how you slice it, there is no way this rule amounts to a legal requirement for all claims to be in Jepson format.

        1. corrected…

          ‘No matter how you slice it, there is no way this rule amounts to a legal requirement for any claims to be in Jepson format.’

          The key phrase that necessitates the correction in making the move from “all” to “any” is “legal requirement.”

          See Tafas.

  20. This is everyday life in EP-land, although the dividing phrase here is “characterized by”, “characterized in that”, or similar.

    Usually I draft claims without it. This is seen as safer, especially if you are unsure of the prior art situation. (On the other hand, it is a great way to emphasize the point of the invention for the examiner.)

    Most of the time, but not always, the EPO examiner then requires re-drafting into “two-part form” (as it is called), based on Rule 43 EPC, which requires it “wherever appropriate”.

    Was surprised to see this similar rule while browsing through the US regulations a while back, since it seems to be completely ignored in practice. Our US associates always replace it with “wherein”, “comprising”, etc, in a preliminary amendment.

  21. A few years back (as I recall), you provided a graph showing the decline of the Jepson claim format.

    As an optional claim format, I would not go so far as to say that the format is a requirement (either by rule or by law).

    1. Maybe the answer is to remove the presumption of validity for claims that aren’t in the approved format.

      1. Maybe the answer is in understanding what the word “optional” means.

        1. It doesn’t say “optional.” It says “should.”

          As in “you should drink clean water” or “you should follow this rule.”

          Pretty sure the term “optional” was known to the rule drafters but maybe you have some secret information you want to share with everyone. I appreciate that it’s a great risk to even dare to challenge your statutory intepretation “expertise.”

          LOL

          1. “Pretty sure the term “optional” was known to the rule drafters…”

            … as was the word “must.” They didn’t use that one either.

            The Office only comports with things the MPEP and CFR say it it “should” do after a lot of kicking and screaming.

            Whats good for the goose….

            1. “Pretty sure the term “optional” was known to the rule drafters…”

              … as was the word “must.”

              Indeed. Hence my suggestion of only a minor penalty on the applicant.

          2. It doesn’t say “optional.” It says “should.”

            Obtuse. Is it deliberate?

      2. “Maybe the answer is to remove the presumption of validity for claims that aren’t in the approved format.”

        I foresee a lot of “a method of treating disease via application of leeches, wherein the improvement comprises using a drug instead of leeches” under your very, highly, totally serious suggestion.

    2. The data is 9 years old, but the trend has not changed:

      In 1980, about 14% of all patents issuing contained Jepson claims. That number dropped to well under 1% by 2008.

        1. The graph makes me wonder why this is even an issue today.

          The downward trend nine years ago indicates that well under 1% of claims use the Jepson format.

          Why is the professor taking up class time with such a de minimus (and archaic) outlier of a subject?

    3. The erstwhile 1201tuesday blog had a nice chart on the decline of Jepson claiming.

  22. Dennis, the format has a lot going for it if it is implemented at the close prosecution where subject matter that is prior art is certain.

    But the rule has no force of law unless the courts hold that the failure to use the format in the appropriate circumstances would render the claims invalid under 112(b).

    Thus if the director were really intent on improving the system, he would provide a directive to the examining corps to implement the rule in every case where it applied, but only at the close of prosecution. If the applicant did not comply, well they would not get a patent – and unless the Federal Circuit wanted to keep the system as it is where claims do not particular point out the invention.

    1. if the director were really intent on improving the system, he would provide a directive to the examining corps to implement the rule in every case where it applied, but only at the close of prosecution. If the applicant did not comply, well they would not get a patent

      Would the PTO also be handing out industrial strength ear plugs?

      1. Most normal people are already fully aware of the optionality involved and would suitably voice their view if optionality were mistaken as a legal requirement.

        And yes, this applies to any optional claim format being erroneously trump-eted as somehow being a legal requirement.

        😉

    2. Ned,

      I like the idea of implementing this during or at the close of prosecution.

      I also think there may be benefits to requiring applicants to make a good faith attempt to distinguish the conventional from the innovative when initially filing, either in the spec, the claims, or both. That being said, this would be a drastic departure from current practice, and I would have to think a lot more about this.

      1. You may also want to review the historical context of the Tafas case.

    3. How would the Office prove that the case admits that form? Could there assertion be challenged? What if the invention isn’t an improvement, but is simply different, a work around for someone else’s patented invention? Do the claims still have to assert something is the improvement?

  23. In the late 1960’s when I began my patent training I seem to remember claims of this type being called Jepsom claims. Some years ago Gene Quinn observed: “No patent attorney in their right mind would follow this suggestion.”

    The problem is, of course, that the improvement is defined during filing and prosecution against specific prior art, but later during prosecution or during litigation new and more pertinent prior art may be found, and the analysis may prove to be an embarrassment.

    EPO guidelines and practice encourage “characterised in that” claims in this format, but my experience is that the format is less commonly insisted on nowadays.

  24. “Should” isn’t mandatory.

    You will get a lot of answers to this question. Some quite meta. For example, many patent attorneys follow the precept that ambiguity = breadth. They may see Jepson-type claims as too concrete. Other patent attorneys may worry that examiners will un-explicitly adopt an examination bias against “simple” improvements. Other patent attorneys may worry that they will unintentionally capture something novel in the APA part of the claim.

    Personally, I don’t use Jepson-type claims.

    1. Yep, so many good reasons not to use that format. The preamble might be considered a binding admission as to third- party prior art (if In re Fout is still good law)

    2. H2H your reply is the direct answer. Where the rule says should is where the “rule” becomes a suggestion. The office could amend the rule to say must, but of course MM points out the resulting seismic disturbance in the Force could be unbearable if that were to happen….

      1. That is not within the authority of the Office to do.

        See Tafas.

          1. It does not matter who writes the CFR, see Tafas.

          2. As I indicated Martin – please revisit the Tafas case.

      2. Of course, the reason the form isn’t used is because some court dinged someone for using it….. so….. you know…

      3. ” The office could amend the rule to say must,…”

        They could. It wouldn’t hold up to court challenge, so what would be the point?

        “…but of course MM points out the resulting seismic disturbance in the Force could be unbearable if that were to happen….”

        As noted, kinda like the “seismic disturbance” that resulted from Tafas and GSK taking the PTO to court. We all remember how that turned out.

        1. They got one up the exhaust port and the Death Star blew up, as I recall…

  25. This sounds like Jepson claim language?

  26. as a promulgated rule, the provision has the force of law

    Is that how it worked in England in 1791?

    1. MM, in 1791, the only place you would be comfortable would be in a Jacobin club, and even then, you might find your fellows insufficiently motivated to the used of terr 0r.

      1. Come to Patently-O for the patent law analysis, stay for the hyperbole where criticizing the current patent system is literally violence.

        1. “where criticizing the current patent system is literally violence.”

          Only if you’re huwhite, or MM suspects as much.

  27. Why even bother drafting a patent claim? MM tells us most of them are junk and the killing squads at PTAB will terminate them anyway.

    1. Why even bother drafting a patent claim? MM tells us most of them are junk

      This latest crop of tr 0lls is seriously behind the curve. Where were you guys recruited from?

Leave a Reply

Your email address will not be published. Required fields are marked *

 Notify me of followup comments via e-mail.

You can click here to Subscribe without commenting