I’m quite happy with the timeline above showing the percentage of US utility patents that include the word “said” within their set of claims. Each dot represents one week of issued patents.
I’m quite happy with the timeline above showing the percentage of US utility patents that include the word “said” within their set of claims. Each dot represents one week of issued patents.
I failed to make myself clear, in my point about the nature of the notional reader, the one who is deemed to be reading the claim when the court construes the claim through the eyes of that reader. It is a person skilled in the art, is it not?
I think that should make a difference, how we write claims.
Consider a claim to a heart stent that uses the word “fatigue”. Now that word will be 100% clear to a judge fitted up with such a stent. It will mean 100% something entirely different to a materials scientist who is working in the field of stents. What the court announces as the meaning of the claim (Chef America anybody) depends on us, the drafters.
“the nature of the notional reader, the one who is deemed to be reading the claim when the court construes the claim through the eyes of that reader. It is a person skilled in the art, is it not?”
Yes it is – a valid point, MaxDrei.
That, however is not the same as what has been remarked here as to the fact that claims have to be written (if written well) for more than one target audience.
Not the same. I heartily agree.
But look at 2.1.1 below. My comment. The one which triggered the “different audience” stream. But not in the way I wanted. So I try again. Hence my # 9 above.
But your “try again” runs into that same different stream because the larger point here is that the writing of an application simply involves more than the one audience that you want to focus on.
As I said, your point is a valid one – for as far as that goes.
It just does not go far enough.
anon, you write that our work product “has to be” written for more than one category of reader. I do not agree.
Our patents are likely (we hope) to be read by lay people, investors and business executives. All different categoties of readership. But when I write, my intended readership is the court, itself looking at the text of the patent through the eyes of the notional PHOSITA.
I think drafters should be clear who their intended reader is (rather than try to make the text optimal for all those other sorts of people who might one day find occasion to read our text). It is standard advice when drafting any document, is it not, first to fix precisely the credentials of the intended reader.
Earlier today I was studying letters patent issued in the 17th century by King William and Queen Mary. One of the facts recited in the initial “whereas” clauses was the fact that previous letters patent had been repealed through a scire facias action in the Court of Chancery, in 1684. The letters patent I was examining constituted the royal charter establishing the Province of the Massachusetts Bay in New England. The repealed letters patent were those that had established the Massachusetts Bay Company.
Sensitized by this posting, I was noticing the use of “said”. For example it took quite a lot of text to specify the metes and bounds of the lands granted to the Massachusetts Bay Company, but the later recitation of
“the said parts of New England in America” obviously served its purpose to obviate the need to recite the metes and bounds of the grant again.
Consider the lists of names. The names of the original company were recited repeatedly, later joined by the names of their later associates. Now I don’t suppose that there were lots of men in England called Increase Nowell, but I daresay there were plenty of men called John Brown. Obviously the “said” John Brown was not the John Brown whose soul goes marching on. But I would have thought that preceding the repeated lists of names of the founding members of the the company with “said” would be a useful precaution to insulate such a document from legal claims that a John Brown mentioned at a later point in the patent grant is someone other than the John Brown first mentioned therein.
I suppose, the question here is whether the phrase “said invention” is indeed being used to identify the invention with one previously specified in the document, or whether claim drafters are simply preceding “invention” by “said” as a sort of reflex reaction without intending to make a cross-reference back to an antecedent.
Distant, the previous patent was repealed by a scire facias? Well now. This does show that it was not unknown to reissue a patent that fixed the errors that were present in the prior if that could be done, etc.
I vaguely recall when I first started drafting claims I thought the term “said” was a bit anachronistic and kind of silly sounding. But I got used to it (just like I got used to the term “wherein”) to the point where I now I prefer it (many clients don’t prefer it). Part of the preference is for the reason Paul gave below: it reinforces the antecedent basis issue.
I wonder if the steepness of the trend has anything to do with the increase in foreign filers?
Anyways, I’ve switched to using the term “the aforementioned” instead. 😉
Careful you don’t out yourself. There are only ~6,000 patents that include “the aforementioned” in the claims. Mr. biotech.
Why the need for “the aforementioned” and not just “the”? I’m not being facetious, I actually wonder. I was taught (in Europe) that e.g. “A member” and then “the member” is sufficient and I’m struggling to come up with examples where it might not be sufficient.
I was being facetious.
haha my apologies for said stupid question then.
From the Department of Redundancy Department, “Any idea on what percentage use ‘the said’?”. I used to see that back in the 80s.
I agree with the early commenters: “said” was never necessary, “the” was always sufficient.
Another blast from the past is “means”, which I think has enjoyed – if that’s the word – a similar decline in popularity, though for different reasons. When I started in practice, working frequently in light mechanical cases, I would see “means” a lot. And I don’t refer to “means for performing a function”, which may still have a place in claims, I refer to “xxx means”, where xxx is a noun, and the attorney had thrown “means” in after it because somehow it was thought to broaden xxx to encompass some scope beyond the normal meaning of the word. The favorite example in the department in which I then worked was a patent on a disposable diaper, which referred to the “leg means” of the infant being diapered.
Patents with claims using “the said” has fallen to about 0.5%. Thirty-five years ago the said percentage was ten times greater.
Interesting. I personally see much closer to 0%, so the fact that 20% still issue with the word “said” is surprising. Is there a particular art area where the term “said” is still somewhat popular?
Good riddance. I always hated that terminology.
What’s surprising to me is not the decline, but how uniform and linear it is. Usually with data like this you see a trend line fit to a general decline, but with many outliers. I wonder what explains the uniformity and linearity?
Answer: Death or retirement of old patent attorneys like me?
Not sure this represents progress, since using the word “said” in a claim can be a good reminder to check for a requisite, but all to often missing, antecedent.
“Plain English” requirements are primarily for lay consumer contracts.
The worst violations of plain English I have seen are due to patent attorneys continuing to use [failing to modernize] obtuse, repetitive, archaic 18th century language in employee employment/invention-assignment agreements. IBM and others do have such agreements re-written in much plainer English.
Although patents are legal documents, they are most often read by non-lawyers.
It is not so much how often a patent is read by a non-lawyer. It is more to the point, or ought to be, who for the court is the designated reader, when the court construes the patent through the eyes of that reader.
MaxDrei,
I understand your comment to be more to whom the application is written (as an audience).
Two remarks to that;
1) that is not the point being made here
2) the audience is not ANY single one group, and the application is actually far more complicated than that.
As to 1), the “general read” IS affected by the “plain English” movement, which is distinct from the point that you offer.
As to 2), your point (and a valid one it is), only covers one aspect, or one of the audiences to which an application needs to be aimed at. For example, another audience is the patent office itself and whether or not a patent will (at first) be obtained (so that your later audience will then come into the possibility of being the focus).
Max, you are right that litigated patent claims are supposed to be interpreted by judges in Markman hearings. And engineers reading patents are usually more interested in the technology disclosed than the claims. But, patent claims are supposed to be read and understood by non-attorney application examiners for determining searches and distinctions over whatever prior art is noted.
My point at 2 above, re the response of Dennis, was that merely using “said” in claims pales in comparison to other skills in the art of claim drafting. Skills that make claims harder to truely understand, including looking more limited (narrower) than they really are. Especially, harder for jurors and other lay persons to really understand. One example was in the blog below re a patent claim where the only alleged novelty was “about 30% or less” friction. Examiner searches cannot easily find such specific numerical limitations. and thus tend to allow such claims whether or not the recited number would really distinguish the prior art or not. Another claim term that artfully confuses many lay readers is “comprising.”
As also noted below, claims with long aggregations of inherently related elements unrelated to the unobviousness of the invention confuse many lay readers, some examiners, and even some judges calculating the base for infringement damages. A classic example is something like:
“I claim an automobile comprising a suspension system that allows lateral and axial motion and at least one interior surface comprising an object container, said object container having an object motion restraining feature, comprising [here the claim finally gets to the actual alleged invention, a mere cup holder improvement.] Note that this also helps pass the claim “hand span” test [also discussed in a recent blog] by making the claim longer and thus superficially looking more limited than it actually is.
Thanks for all that, Paul. The way I see it, it’s one drafting objective to make the technical content of a patent as easy as possible for a lay reader (like a judge or a jury member) to grasp. But it’s quite another to impress readers with the mastery the drafter has over content that is ferociously complex, legally. Reconciling these two objectives is problematic. Clear? Or abstruse? Vague, or sharp? Plain English of legal-ese?
One has to decide which drafting objective has priority. In that regard, “said” is a bit like a Jepson claim: it leverages things. With a great invention, Jepson-izing the claim emphasizes the greatness. With a non-invention, Jepson-izing its claim brings ignominy. Stripping the claim of legalese exposes better what is the claimed contribution to the art. And who wants that?
When inventors reviewing your draft see clearly what you are putting forward as the technical content, they can get stroppy and argumentative. Who wants that?
When clients see how complex a patent application inevitably is, they are likely to pay higher invoices.
When judges and juries are bamboozled, they are more likely to be impressed by an esoteric “invention”.
Plenty of good reasons to avoid plain English. As I always say, drafting that is effective ain’t easy. We have to draft today in a way that will be most effective in court, 10 or 15 years from now.
“ In that regard, “said” is a bit like a Jepson claim: it leverages things. With a great invention, Jepson-izing the claim emphasizes the greatness. With a non-invention, Jepson-izing its claim brings ignominy. ”
LOL – way to try to champion a claim form that is practically extinct.
(I notice that the now aging Jepson-claim threads have been left hanging as to our conversation points…)
Regardless of whether the audience is the lay person or the judge who must construe the patent, there’s no excuse whatsoever not to use plain language. If reasonable minds can differ about what a claim means, the drafter has failed (unless his goal was to threaten protracted litigation over abstruse claims).
“The” or “that” serves the purpose noted above.
ID, your big loophole of “unless his [tut tut – or her] goal was to threaten protracted litigation over abstruse claims” can be also expressed in a form more polite to patent attorneys, and equally accurate, as: “unless the patent attorney is doing his or her best professional efforts to obtain claims that give the client the broadest ability to recover from asserted infringers of that patent in patent litigation.” [Especially in E.D.TX]
There is no reason that broad claims cannot be clear, and vice versa.
You apparently take offense to the traditional use of the male pronoun to refer to an antecedent of indeterminate gender. That is your problem, not mine. And said use is not an error on my part despite that fact that I know capable female patent attorneys.
If I was offended rather than just pulling your apparently Texas hair-trigger chain I would not have used the 19th century expression “tut tut.”
There was never any argument “that broad claims cannot be clear.” The point was that not all attorneys or clients seem to think that that is not necessarily always in the overall best interests of the patent owner, especially for infringement assertions.
I think I agree with you Dennis. The longer I do this, the more I find myself writing applications to be understandable by juries and patent examiners.
You nailed two segments of the intended audience. The third segment is, of course, the inventor. All applications should be drafted with those three audiences in mind.
Paul,
Re: “Plain English” requirements are primarily for lay consumer contracts.”
I think that such may have been initially true, but that movement has moved well beyond that initial step.
To some degree, ALL legal work appears (to most any lay person) to be replete with “[failing to modernize] obtuse, repetitive, archaic 18th century language“
I “get” quite happy at the trend (which mirrors a ‘plain English’ general legal movement, but the comparative “feelings” when one item is at 20% and another is at LESS THAN 1%, and the one that is practically gone gets all kinds of “boo hoo” (and surprise surprise, look at the list of sAme ones cheering for some type of miracle boomerang)….
Something to sit back and think about…
What kind of dressing goes best with a word salad?
but when you look at what’s going on with the four prisoners—now it
used to be three, now it’s four—but when it was three and even now, I
would have said it’s all in the messenger; fellas, and it is fellas because,
you know, they don’t, they haven’t figured that the women are smarter
right now than the men, so, you know, it’s gonna take them about
another 150 years—but the Persians are great negotiators, the Iranians are great negotiators, so, and they, they just killed, they just killed us.
Malcolm and his echo: Yay “ecosystem”!
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