Claiming Said Invention

SaidInventionII

The chart above provides an update to my prior post – looking at patents issued over the past 40 years and finding the proportion of patents that use the word “SAID” within the patent claims.

During this time, there has been a general trend in legal writing toward the use of Plain English rather than legalese, and I believe that the chart here is generally representative of that trend.  Some agencies, such as the SEC, have required the use of plain English in documents submitted for public disclosure. The USPTO has not yet taken that route. However, the USPTO is required to ensure that its own publications are “clear, concise, and well organized.” Plain Writing Act of 2010.

How I describe Said Invention

30 thoughts on “Claiming Said Invention

  1. One additional thought on the trend shown in the graph, I wonder how much of this trend (or its seemingly rapid pace of change) might be due to the elimination of the ‘written portion’ of the examination for individuals seeking registration or recognition to practice before the United States Patent and Trademark Office, where one had to actually write claims to pass the afternoon part of the test? Surely, it would have been fairly labor-intensive to grade, and somewhat subjective, leading to that portion of the test’s demise, but the additional premium put on patent claim drafting skills and the effort needed to learn the expectations of the PTO in order to pass the exam may have had a stabilizing effect on claiming practice.

  2. Never mind “the” versus “said” – I’d like to see a return of the word “invention” in documents purporting to describe same. The contortions patent scribes sometimes go through to avoid using this perfectly good word do not bring credit on the profession or clarity to patents.

    1. Are you aware of the concept called patent profanity?

      The courts have made that a NOT perfectly good word. That you are seemingly oblivious to this renders your view of what does or does not bring credit on the profession rather impotent.

  3. While I value clear language as much as anyone, I’d point out there was merit in the old use of “the aforesaid” claim element, merit which may have been diminished in shortening the phrase to “said” and thence to “the” — it highlighted recognition of the antecedent basis of further limitations in the claim.

    IMO, a claim limitation lacking antecedent basis makes the claim indefinite under 112. It’s not merely sloppy, such claim drafting allows unnecessary challenges to claims, challenges which can cost the patent owner in many ways. And there’s no reason for it.

    Gerry Rose’s “Incompleat Solicitor” mentioned cases you could use to point out the unprogressive nature of the Patent Office. The Office once considered subparagraphs to be indefinite. Look how much clarity is offered by modern paragraph style; I’d hate to go back.

    And I’d hate to go back to using “said” or “the aforesaid,” even though they may have offered other advantages to both the patent owner and the public, and to us.

    “Said” and “the aforesaid” are words of ritual, words of tradition, which in this case flag the claims as the words of ultimate legal significance in the patent. I think ritual may still have meaning and impact for some of the audience reading a patent or its claims, flagging the patent and claims as worthy of special respect. I’m not sure how true this is anymore for American jurors.

    As for the advantage to practitioners, the use of scriveners’ language staked out our territory. Some practitioners believed that if you wrote things too clearly, you ran the risk that clients would think they could draft their applications and claims without our help.

    Not that I shared this belief. Even if it were true, it’s a risk I’d run.

    “The” or “said,” IMO it’s a matter of style, based on your ideas about what will best reach your intended audience. I don’t think the majority of American Boomers particularly care for “said,” and I can’t imagine Gen X and younger feel any better about it. Probably a topic more of academic interest than anything else.

    1. I do not think that the question revolves upon whether or not some merit may have been (or even, may still exist) with such phrases as (the original) “the aforesaid.”

      Words of tradition and “ultimate legal significance” simply are given a different weight in view of the Plain Language movement in legal circles.

      As to “ the use of scriveners’ language staked out our territory.” – careful there, as even that term has been actively used as a source of derision by certain elements of the legal system.

      I tend to doubt your follow on comment – and that sounds less likely to come from actual practitioners, and more likely to come from those that simply think that attorneys are “excess” anyway.

      Lastly, this is hardly just a topic of academic interest. Sure, at 20%, this particular “scrivening” still has some “life” (as opposed to the Jepson claim format), but how claims are actually written – and then viewed by each of the several audiences – is a very real and NON-academic issue.

  4. Dennis, in my experience, the word “said” is needed, occasionally, in the interests of clarity, to avoid ambiguity.

    The classic example of ambiguity is the notorious Oxford Comma. Hard to believe, but in a recent real case in Maine, defendant Oakhurst Dairy, the court of appeal reversed the first instance, solely because of the Oxford Comma.

    In case any reader here is unfamiliar with the Oxford Comma, an example (thanks Elena Cresci) of its use will suffice. Consider the sentence:

    “I dedicate this book to my parents, Martin Amis, and J K Rowling.”

    and now remove the second comma and read it again.

    Analogously, careless deletion of “said” from a draft claim prior to PTO filing might also give birth to something unintended and nasty.

    1. I’m honestly having trouble coming up with an example where use of “the” instead of “said” creates Oxford Comma-type confusion. Do you have an example in mind?

      By the way, people should really start using the Oxford Comma. I love it and use it all the time!

      1. No example, sorry. Just a feeling, left over from all those years supervising traineee patent attorneys, or reviewing cases incoming from jurisdictions where English is a foreign language, endeavouring to polish a claim fit to file at the EPO.

        Suppose one is claiming a product, something in which a “head”
        or a “tail” is implicit. A threaded fastener, perhaps. Implicit is a head end and a tail end. It exhibits a thread which itself has (one might think) a head end and a tail end.

        You find that the claim before you explicitly recites the presence of a “tail”. But which one is it? Might it not be belt and suspenders worthwhile to use “the said tail”, to announce that you mean the explicit and not the implicit tail? Specially as the head of the screw is at the opposite end of the product from the head of the thread.

        1. I’m not certain you’ve raised a convincing argument for the use of “said” to remove ambiguity. However, I think you’ve presented a very good argument for avoiding implicit claiming where possible.

          Experienced practitioners can TL;DR the following rant on implicit claiming:

          IMO, implicit claiming permits unnecessary ambiguity. In the fastener example, my preference would be to recite a fastener having a head end and a tail end (or a head and tail each having an associated end, depending on what else is in the claim) and further having a thread with head and tail ends.

          Or, simply use “fastener tail end” and “thread tail end” instead of the ambiguous “tail end.” Or use “head and tail ends” for the fastener ends, and “first and second ends” for the threading ends.

          IMO,”the” and “said” don’t enter into it.

          This specific ambiguity may not arise in jurisdictions which require claims in mechanical or electrical cases to include element numbers from the specification. I don’t use element numbers in US claims because I don’t want detailed or implicit aspects of the elements imported into the claims when those aspects are not related to the broad invention I’m trying to claim.

          Chemical cases lacking element numbers are a little more awkward. “A steroid, said steroid having a 1-position, the improvement comprising modification X at said 1-position” is unambiguous, but “A steroid comprising modification X at the 1-position” would be readily understood by those skilled in the art. I’d use the latter but expressly state in the specification that the steroid has a 1-position.

          Apologies for the length of the rant. Decades in the business will do that to you.

          1. why this was in the “do not dialogue” filter is uncertain….

            September 13, 2017 at 11:32 am

            I think that you have alighted upon something with “are not related to the broad invention

            modern practice is decidedly AGAINST picture claiming.

            Certain sAme ones here (implicit or otherwise) provide views that exalt picture claiming.

        2. Just a feeling, left over from all those years

          Sometimes it is most difficult to unlearn things…

          😉

  5. “However, the USPTO is required to ensure that its own publications are “clear, concise, and well organized.” Plain Writing Act of 2010.”

    Does it require the conflicting court decisions upon which the MPEP is based to be “clear, concise, and well organized?”

  6. 20% is still a large number.

    I bet there’s more interesting linguistic trends to look at, by the way. I’d like to see how frequently the term “logic” is used. Presumably it doesn’t show up prior to around 1980, when the first logic was invented.

    1. The phrase “term of art” obviously means nothing to you, eh Malcolm?

      How goes that project to obtain copyright on logic (the logic as you attempt to use that term)…?

      Yes, we both know the answer to that question, and we both know why that question keeps popping up (signifying your game-playing).

      1. “Logic” is “a term of art.”

        Okay, then.

        Fyi, Ted Cruz just called. He wants you to help with his PR campaign. He seems to think you have some kind of relevant experience.

        1. ?

          You somehow continue to think that the term is not a term of art and yet refuse to “get” the reference to obtaining a copyright on software…

          Obtuse. Is it deliberate?

          1. You … refuse to “get” the reference to obtaining a copyright on software…

            Right. That’s because it’s a non-sequitur. It’s the same kind of pointless dust you kicked in everybody’s face for three years straight, using a zillion different pseudoynms, when you didn’t want anyone to talk about the crystal clear ineligibility of determine-and-infer claims.

            You’re pretending that we’ve all forgotten about that, Mr. “Ends Don’t Justify the Means”? Gob, you’re a hypocrite.

            1. Except it is not a non-sequitur because it is directly on point to exposing YOUR dustkicking (there you go again with your number one meme of Accuse Others…)

              As to “for three years straight, using a zillion different pseudoynms” – you are WAY behind the times because I have only used a single moniker for the past five years, and during that time it is YOU that have employed the sockpuppets galore (after YOU were the one whining incessantly about them) – go figure, yet again with the Accuse Others…

              As to “you didn’t want anyone to talk about the crystal clear ineligibility of determine-and-infer claims” – you are clearly mistaken as to my positions, as I have ALWAYS fully engaged on the merits of any patent law subject.

              As to “we’ve all forgotten” maybe instead of trying to spin things – who is this “we”…? – you should YOURSELF try to engage on the merits.

              Leave out the ad hominem (or at least put as much merit as ad hominem into your posts).

              Try it.

              1. it is not a non-sequitur because it is directly on point

                It is a non-sequitur. Attacking my position on the patent eligibility of logic by asking me about some non-existent effort on my part to copyright some unstated instance of logic is, quintessentially, a non-sequitur.

                Denying this basic truth in bold typeface is both non-responsive and p @ th etic.

                1. It is not “quintessentially” a non-sequitur.

                  We both know that you have no such project because we both know that you cannot obtain a copyright on logic itself.

                  Unlike software, for which we both know that you can obtain copyright for the aspect of software involving expression.

                  Just like a different aspect of software can earn a different form of IP protection for – you know – utility.

                  Maybe instead of (again) focusing on form, you pay more attention to content.

                  But wait, we ALSO both know about that, eh?

  7. RE: Some agencies, such as the SEC, have required the use of plain English in documents submitted for public disclosure. The USPTO has not yet taken that route. However, the USPTO is required to ensure that its own publications are “clear, concise, and well organized.” Plain Writing Act of 2010

    From a quick look at the act in question, it would appear to be directed toward government agencies being clear in their own communications ‘to’ the public. (“The purpose of this Act is to improve the effectiveness and accountability of Federal agencies to the public by promoting clear Government communication that the public can understand and use.” Sec. 2) This would include things like PTO forms, the MPEP, its Sec. 101 guidelines, and the like. I don’t see how patents themselves would be covered by this act, as they are essentially submissions ‘from’ the public ‘to’ the agency.

    In any case, under the act: “The term ‘‘plain writing’’ means writing that is clear, concise, well-organized, and follows other best practices appropriate to the subject or field and intended audience.” (Sec. 3 (3)) Even if patents were presumed to require “plain writing” (beyond the clarity requirement set forth already in 35 U.S.C. 112), the intended audience is persons having ordinary skill in the subject or field of the invention, so “plain” is relative.

    This is covered by 35 U.S.C. 112 with its “full, clear, concise, and exact terms” requirement for a written description and “particularly point out and distinctly claim” requirement for the claims.

    1. This gets back to my point: there is nothing about the term “said” that should raise any flags re “plain English.”

  8. There’s nothing about “said” that’s unclear or “not plain”.

    1. unclear… – completely agree.
      plain… – completely disagree.

      Perhaps you are thinking that the standard of “plain” is a standard based on the language skills of attorneys.

      It is not.

      1. DC Almost the only time I hear the word is coming from 1Ls trying to sound like a lawyer.

        I guess I’m making a distinction between “plain” and “common.” I agree that the term (as an article) isn’t “common”. But it’s meaning is plain, and it doesn’t strike me as a “colorful” or baroque (or “un-plain”) term. I can remember people in all walks of life using the term in the context of explaining the operation of things but maybe all those memories are old. I wonder if the use of the term (as an article) outside of the patent context has declined as well.

        Anyway, I’m going to continue to use “said” when I post my hypothetical claims here.

        1. but maybe all those memories are old

          maybe…?

          😉

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