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.
36 thoughts on “How I describe Said Invention”
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.8
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.7
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.7.2
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.6
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.5
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?4
Good riddance. I always hated that terminology.3
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?2
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.