Heightened Written Description Standard for Reissue Patents

by Dennis Crouch

Forum US v. Flow Valve (Fed. Cir. 2019)

The question here is whether the broadened claims in Flow Valve’s U.S. Patent No. RE45,878 satisfy the heightened written description requirement for reissue patents.

In order to broaden claims as part of a reissue application, the patentee must show that the new scope was considered by the original patent applicant as party of the original invention.  This precedent stretches back to 1893:

[T]o warrant new and broader claims in a reissue, such claims must not be merely suggested or indicated in the original specification, drawings, or models, but it must further appear from the original patent that they constitute parts or portions of the invention, which were intended or sought to be covered or secured by such original patent.

Corbin Cabinet Lock Co. v. Eagle Lock Co., 150 U.S. 38 (1893).

It must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original.

U.S. Indus. Chems., Inc. v. Carbide & Carbon Chems. Corp., 315 U.S. 668 (1942).

These cases are pre-1952.  At the time, the statute limited reissues be “for the same invention.” In 1952, that provision was altered to instead limit reissue claims to “the invention disclosed in the original patent.”  Although the text of this statutory change appears to loosen the limits on reissue claim scope, the Federal Circuit has indicated that the statutory change did not change the requirement.  Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354 (Fed. Cir. 2014) (The pre-1952 requirement has not “in any way been altered by the legislative changes”).

Here,  the patent at issue focuses on fixtures for holding pipe fittings during machining. All of the embodiments in the original patent as well as the claims include arbors that are used for holding the pipe joint in place (circled below).   However, during the reissue the patentee added new claims without the arbor requirement.

The courts agreed that, in this situation, the broadened scope that includes an arbor-less device was not apparent from the “face of the instrument” — i.e., in the text of the original patent application.

A written description requirement: The patentee had presented expert testimony that a person of skill in the art would understand that the arbors were optional components of the assembly.  Taking that evidence as true, the Federal Circuit found it insufficient to save the claims because the test is whether the new claim scope is written down in the specification.  In essence, this is a heightened written description test, not a test of enablement.

Query: How would our patent system adjust to applying this written description standard in all cases, not just reissues?

146 thoughts on “Heightened Written Description Standard for Reissue Patents

  1. 11

    So now a patentee cannot claim a subcombination? Silly.

  2. 10

    In response to Dennis’s query, changing U.S. law so that a “heightened” written description requirement applies in all cases would, among other things, make the U.S. patent system somewhat less attractive to innovators. On the margin, over time, PTO revenue (filing fees, issue fees, maintenance fees, etc.) would go down, or it would not go up as fast as it otherwise would.

    1. 10.1

      From a sort of rational economics perspective, this sounds right. I bet, however, that if you could actually set up 100 parallel earths, and make the change to U.S. law on 50 of them and not on the other 50, there would be no statistically significant difference in the volume of U.S. filings between the two groups. Most inventors look at written description failures as something that happens to “the other guy.” Each one thinks that “my lawyer will not make those sorts of mistakes,” and therefore does not feel herself dissuaded from filing by the heightened legal standard, even if she might feel that other inventors should be dissuaded by the heightened standard.

      1. 10.1.1

        “herself”

        I loled.

        1. 10.1.1.1

          I have been told that in 2019 “themselves” would be more woke.

          1. 10.1.1.1.1

            Duly noted.

          2. 10.1.1.1.2

            LOL, “more woke.

            link to mamamia.com.au

            4. Woke

            Woke has been around for a minute, but it’s poised to become more mainstream in ‘18. Think of ‘woke’ being the inverse of politically correct. If P.C. is a taunt from the right, then woke is a back-pat from the left. Woke statements might also low key stir up drama. The more woke one is, the more sympathetic and knowledgeable one is about a topic or type of person. It’s often used to describe a man who is also a feminist.

            Used in a sentence: “That guy is so woke.”

            The guy is more in tune with teen internet slang and Liberal Left mantra than foundations of patent law.

            Color me “shocked.”

            1. 10.1.1.1.2.1

              Australia? I know some people who can help you with a US work visa. IM me privately.

              1. 10.1.1.1.2.1.1

    2. 10.2

      changing U.S. law so that a “heightened” written description requirement applies in all cases would, among other things, make the U.S. patent system somewhat less attractive to innovators.

      Of course, but so what? The point of the patent system isn’t to maximize “attractiveness” to “innovators.” I know that sort of statement of fact goes totally against the patent maximalist bi-ble … but what doesn’t?

      Most of us grown-ups who have been obtaining world-wide patent protection for clients for the past 20 years are used to a “heightened” written description and a “heightened” everything else for that matter.

      1. 10.2.1

        “The point of the patent system isn’t to maximize “attractiveness” to “innovators.””

        It can be if congress critters want it to be.

        1. 10.2.1.1

          The funny thing is, 6, is that Malcolm displays a palpable cognitive dissonance in that his views are SO extreme in the other direction, that what is “merely” and actually a MUTUALLY beneficial system — a Quid Pro Quo — is disdained, and most all of Malcolm’s post paint those who would desire patents as some type of “I want money” parasite.

          He simply cannot control his FAR Liberal Left anti-capitalist feelings.

        2. 10.2.1.2

          In fact, no, that can’t be “the point”. The permitted point of the system Congress is permitted to set up is laid out in Bildo’s Constitution.

          1. 10.2.1.2.1

            LOL – you cannot even advance an argument of your own, can you, Malcolm?

            And what “point” is it that you think that the Constitution provides? Please remember that things like hortatory statements (See Amendment 2) are NOT controlling.

            THEN remember that Quid Pro Quo treats BOTH sides as equals (a rather important concept and foundation of the US system, one that did NOT look at Government (with the big “G” as the Liberal Left wants to).

            THEN remember that the word “promote” is NOT limited to the modern usage such as “linear (or even non-linear) advancement” and includes the bare minimum type usage of advertising promotions, as in “ads” or simply “make aware.”

            IF you had any background or appreciation of actual innovation understanding, you would understand this. As I have in the past attempted to lead you by the hand on this point, may I yet again suggest that the old BBC series Connections, hosted by James Burke might be helpful for you to get out of the way of your own feelings (see: link to en.wikipedia.org ).

            1. 10.2.1.2.1.1

              “THEN remember that the word “promote” is NOT limited to the modern usage such as “linear (or even non-linear) advancement” and includes the bare minimum type usage of advertising promotions, as in “ads” or simply “make aware.””

              Help me out here. The Constitution says what about ads?

              1. 10.2.1.2.1.1.1

    3. 10.3

      Hmmm,

      I am not sure that a focus on “PTO revenue” is at all helpful, as the PTO is NOT designed to generate any excess revenue at all.

      Are you aware of the administrative agency’s funding mechanism? (no snark)

  3. 9

    Below at post 5 Greg states:

    (2) The working of our system would be much improved by the application of this sort of moderately strict written description standard.

    Elsewhere (hence posting here at top rather than in-line), Greg has provided support for a much tighter 112 requirement, and one not related to any sense of Person Having Ordinary Skill In The Art.

    To this, I have to wonder if Greg’s position does not waiver given my own prior posts on how Pharma gets a special pass as to actually possessing utility at the time of filing, and how that possession would then be reflected in the possession and written description portions of 112.

    To wit, there is a developing case wherein my exact point provides the contentious issue.

    A New Jersey case of Nuvo v Dr. Reddy contains the following in its petition for rehearing en banc:

    The panel’s heightened written description standard will harm innovation by imposing a higher burden on inventions that depart from the prior art and thus are nonobvious. It will especially hurt biotechnology and pharmaceutical companies by impairing their ability to patent important new drugs. Inventions in these fields are routinely described in patent applications before efficacy in humans is proven through clinical trials. Indeed, countless pharmaceutical patents claim using a safe and effective amount of a composition, even though clinical testing is not complete.

    Love the Big Pharma spin here that the current NON-heightened level of support is being spun as “extra” when applied to Pharma. And this is BEFORE the actual EXTRA heightening that Greg seems so enamored with (that is, because he believes that certain art units other than his own somehow “get off easy”).

    1. 9.1

      You seem to be suggesting that an effect on a non-human animal or a reaction in vitro is a non-useful effect.

      Rather hypocritical of you. Care to provide your definition of utility for everyone, Bildo?

    2. 9.2

      From the case The panel’s heightened written description standard will harm innovation by imposing a higher burden on inventions that depart from the prior art and thus are nonobvious.

      Making it marginally more difficult to obtain a patent is not the same as “harming innovation.” Not even close. “Innovation” could be fostered, in fact, by that kind of change. The quoted statement is an example of patent w @ nkery.

      It will especially hurt biotechnology and pharmaceutical companies by impairing their ability to patent important new drugs.

      They’ll survive. Maybe the CEO will need to sell one of his vacation homes. I know: super sad! We will all weep together over this tragedy.

      Inventions in these fields are routinely described in patent applications before efficacy in humans is proven through clinical trials.

      Right. But “the field” routinely uses these things called “model organisms” to test efficacy before administering to humans. Guess why they are called “model organisms”?

      countless pharmaceutical patents claim using a safe and effective amount of a composition, even though clinical testing is not complete.”

      So what? Challenge the patents if they lack adequate support as of the filing date. People do it all the time. Heck, Examiners do it all the time. I try to make it a practice to inform my clients of this so they don’t file prematurely and they don’t get their expectations too high.

      1. 9.2.1

        As Malcolm no doubt would be in his typical “drive-by monologue” mode anyway, he would not have actually engaged on the counterpoint to his ramblings above, which due to the inane Count Filter, were shifted to: link to patentlyo.com

        That being said, the apparent “Defender of the Faith” and lemming-gnat ever-shifting historical pseudonym friend jumped to “defend” his liege, and has provided some jester-like entertainment across this and the linked thread.

  4. 8

    From the decision it looks to me like the “arbors” limitations removals disputed here were by no means the only parent claim issues desiring broadening reissue correction. Even though this is a recent patent it’s original [but not reissue] claims apparently contained two “means for” limitations!
    [How could that still be happening after so many years of Fed. Cir. decisions and CLE programs re their claim narrowing or even invalidation effect?]

  5. 7

    The overarching question (bottom dollar line) for this particular case is why the patentee felt it was worth the $500,000+/- it likely cost them (which doesn’t include the soft-dollar / corporate personal involvement / distraction costs) to fight for a patent like this?

    Even if they’d prevailed, how long would / will it take to recoup what they put out?

    Would they have recouped the cost over the remaining term of the RE?

    1. 7.1

      I would definitely agree that those are critically important questions that the client should have answered prior to (as well as during) this excursion with the attempted change in claims.

  6. 6

    “applying this written description standard in all cases, not just reissues?”

    I am presently looking only to the case where the patentee comes very close to describing a feature as an essential element, although not going so far as to use the phrase “must have”.

    In the Flow Valve patent, the inventive workpiece body member:

    – “has a plurality of arbors, each arbor having a longitudinal axis” (abstract)
    – “A plurality of arbors extend from the body member” (summary)
    – “Further, the body member 52 has a first arbor 58 and a second arbor 60 supported … The first arbor 58 is positioned…” (detailed description)
    – “In like manner, the second arbor 60 is positioned so that…” (detailed description)
    – “Thus, the multiple arbors of the workpiece supporting assembly provides means for machining” (detailed description)

    In no place do they describe how to to set up the workpiece machining jig absent the arbors.

    Given the above, I would hope that an attentive examiner in the first instance would still reject a claim without the plurality of arbors element. “You didn’t invent that”.

    Even if the patentee had not gone on to say that the “only” thing that allows rapid and accurate machining of the workpiece was having the arbors and being able to switch from holding the one to holding the other.

    Which really makes it sound like a necessary element of the invention.

    1. 6.1

      Mellow,

      You are probably aware that such things as “necessary element,” “must have,” and “the invention is” have been weaponized by the courts, turning these things (and more) into Patent Profanity.

      For some unknown reason, there seem to be quite a few people who do not “get” that Patent Profanity exists.

      1. 6.1.1

        Certainly if the inventors knew how to make the jig work without arbors, a careful drafter might have avoided this issue by pointing out how so, instead of having drafted the thing to appear that having the arbors present was the only way to go about it.

        1. 6.1.1.1

          Or….

          Having such done was considered at the time to be within the knowledge/ability of a Person Having Ordinary Skill In The Art – as was later attested to.

          Mind you, I am not saying this is a “model” action**, but to your direct reply, if you start wanting to include any- and everything that might occur to a Person Having Ordinary Skill In The Art, you are ONLY inviting MORE patent profanity mischief. You seem to want to invoke a “take care” on a professed matter for which no one would reasonably take such care***

          **in the present case, and more likely operating under a different patent doctrine, IF the claims are now being sought for some benefit OVER the claims with the elements, one must wonder why any such item would not infringe the claims by a doctrine of equivalents (per the asserted arguments – NOT the tactic that I would take, mind you, so do not jump to the conclusion that I am “defending the claims.” Rather, I am talking about the underlying law (apart from the claims to which the law is being called to be applied to).

          *** again, this is NOT a great tactic for what this particular applicant wanted to do. But the better course here would be to simply reject the reissue attempted claims as adding new matter. Thus, any notion of “expanded” written description is simply avoided for the more direct rejection. Of course, THIS reasoning IS case specific here.

      2. 6.1.2

        A similar thing has happened in contract law where terms like “agree” have been weaponized by the courts. Truly the judiciary has gone rogue with their attempts to take property from the rich and powerful people who made this country great.

        This message brought to you by Derp, Derpberg, and McDerpface LLP – Patent Maximalism Today and Everyday (TM).

        1. 6.1.2.1

          Are you seriously trying to say that there is no such thing as Patent Profanity?

          Really?

          Rather than mindless snark, why not make a direct statement (and be prepared for the laughter AT you)…

  7. 5

    How would our patent system adjust to applying this written description standard in all cases, not just reissues?

    Two thoughts:

    (1) The standard that the CAFC applied here is essentially the same as they apply in the EPO for ordinary prosecution amendments (not quite in ipsis verbis, but much more than just a vague gesture at the idea that “the person of ordinary skill would understand [x,y,z]”). Obviously this works in Europe (the EPO does not grind and has never ground to an impassible halt for the application of this moderately strict written description standard).

    (2) The working of our system would be much improved by the application of this sort of moderately strict written description standard. Applicants would be obliged to describe their inventions with narrow particularity, thus cutting off their ability to claim by vague gesture at a putative “the skilled person understand this.”

    1. 5.1

      Dennis, I wonder what you mean by “in all cases”. I mean, there is a requirement for some degree of “written description” in document D when i) judging whether D prejudices novelty of a claim ii) whether the claim is entitled to the priority date of D (filed at the beginning of the Paris Convention priority year) and iii) whether the claim in view, after amendment in prosecution, is supported by the WD of the application D on its filing date.

      So are i, ii and iii included in your “all cases”?

      This is all bedrock First to File law, to adjudicate fairly between rival Applicants, co-pending. In a priority contest, who filed “first” on the claimed subject matter. Forget interferences. Instead, think WD.

      In Europe, the same standard of WD, exactly the same, is required for every one of i) ii) and iii). How else can one adjudicate fairly?

    2. 5.2

      Greg, I wonder about your assertion that at the EPO it is all “essentially the same”. It is because the EPO standard is so very strict that it has not “ground to a halt”. But I can assure you, lots of patent applications at the EPO have “ground to a halt” precisely because of the strictness of the standard.

      The EPO’s so-called Gold Standard, that defines what is meant by “disclosure”, and pins what counts as written description, is “that (no more and no less) which is directly and unambiguously derivable by the PHOSITA reader”.

      At the CAFC, the corresponding definition of WD is either “that which is clearly and unequivocably disclosed” or “that which is clearly and unequivocably indicated”, a standard which begs the questions: what does clearly mean, what does disclose mean, what does indicate mean and are disclose and indicate the same or different concepts?

      1. 5.2.1

        [T]he EPO standard… has not “ground to a halt”. But I can assure you, lots of patent applications at the EPO have “ground to a halt” precisely because of the strictness of the standard.

        Right, and that is as it should be. If one drafts an application in such a way that it the scope of the advance that the inventor has made over the art is not discernible—or only vaguely or imprecisely discernible—then it is only right and fair that the application should go sour. At that point, the failure of the application is the applicant’s own fault, and it is the mark of a well functioning system that it imposes the costs for that failure on the party most responsible for them.

        To strain heroically to “reward” the inventor for a contribution the contours of which the inventor could not be bothered to specify does no one any great favors. A stricter written description standard does not slight inventors the full scope of the protection that they have had earned unless they describe their invention in a vague or sloppy manner that does not serve to make clear how they have advanced the art.

        This is one reason—among several—why a PTO rule mandating the so-called “Jepson” claim format would be very good for both inventors and the patent system as a whole.

        1. 5.2.1.1

          Out of touch with reality:

          why a PTO rule mandating the so-called “Jepson” claim format would be very good for both inventors and the patent system as a whole.

          Greg, that symptom of yours of “my glasses work great for me, here, you wear them” is showing again.

        2. 5.2.1.2

          I wonder (per my other post) whether the “sloppy” that Greg disdains ALSO includes the epidemic level of “prophetic” writing when Pharma wants claim coverage to “effective” levels that they do NOT possess at the time of filing (as witness the great multitude of items that LATER fail in the vetting of that very claimed attribute).

  8. 4

    Dennis, is this a proper policy objective?

    The inventor should have exclusive rights to the PRINCIPLE of the invention. Competitors should be entitled to use the prior art or a different PRINCIPLE.

    Then a question:

    Competitors [SHOULD or SHOULD NOT] be permitted to use an obvious variation of the PRINCIPLE discovered by the inventor when the inventor failed to describe that obvious variation.

    1. 4.1

      Josh,

      Your question is a little INartfully asked (but I “get” why you ask as you do).

      The patent law concept of “Equivalents” basically captures the “gist” of what you ask [did you see what I did there?].

      1. 4.1.1

        I thought Congress introduced claims in 1836 to mitigate arguments over the scope of the invention. That didn’t work. So they added §112 in 1952. Markman added by SCOTUS in 1996. Now there is concerted effort to eliminate functional claiming and continuations.

        Doctrine of equivalents is a multi-million dollar crapshoot.

        Here is what I am getting at. The bargain is the teaching for exclusivity. They should correspond.

        It is way too hard for an inventor in the current system to have full and clear protection commensurate with his teaching. For lawyers and competitors it seems like fair game – “you didn’t describe and claim a spiral shaped housing so you dedicated it to the public”.

        This is absurd. It is still my invention.

        Now this recent effort to eliminate functional claiming further undermines the bargain.

        It seems to me the concept of peripheral claiming has failed. If it were working we wouldn’t need to have Markman hearings and endless arguments over claim construction.

        It took 6 patents, 8 PTAB death-matches, 13 appeals to the Federal Circuit, and a $20M litigation to dissuade the infringer from using my invention. All this for an invention that is an apparatus with only 4 distinct components.

        If the infringer lobby get their way I would only be entitled to a single patent and no functional limitations.

        This is no bargain at all. We need to figure out how to give inventors clear title to the full scope of their inventions without this gauntlet. Otherwise they will not participate.

        1. 4.1.1.1

          This is well said Josh. Basically what is happening is the anti-patent crowd stacked the CAFC by getting Obama to select people that were anti-patent to the CAFC.

          That crowd has been trying to use 112 in the same way that the Scotus used 101 to seriously limit patents and provide another avenue to invalidate patents. Taranto is the lead on this effort.

          It won’t change unless Congress passes laws or dissolves the CAFC (my preference.) The fact is that I’ve quoted textbooks from MIT that say expressly that functional language is meant to encompass all known solutions. Everyone who has actually been an engineer knows this and thinks in this way. Many of the people appointed on the CAFC have no science background and simply dismiss the reality of how engineering and science work.

          1. 4.1.1.1.1

            And I’ve worked with some of the top engineers in the consumer electronics space and they say exactly what I am saying.

            1. 4.1.1.1.1.1

              Night Writer,

              You nail it – but before Greg (again) dismisses you because you reference an engineering doctrine, I will point out that there is a direct analogue in the Legal sense: the Ladders of Abstraction (with a quick reminder to Random that Ladders have more than two rungs).

              I have provided the independent reference of Klusky on patent drafting several times over the years and that reference is a pretty good primer for the Legal sense analogue of your direct Engineering doctrine.

              1. 4.1.1.1.1.1.1

                I have a ladder that has only one rung.

                1. A ladder with one rung is . . . “pedantic?” I’d say it’s a broken ladder. Or a young ladder.

                2. Hmm, perhaps merely a bad pun that does nothing but distract from the actual point presented.

            2. 4.1.1.1.1.2

              What is the consumer electronics space?

              1. 4.1.1.1.1.2.1

                Are you looking for a “cite?”

              2. 4.1.1.1.1.2.2

                S. Morse, are you simply being obtuse to obstruct conversation?

                An example is a game console and controller. Speakers for your computer. Basically anything that a consumer may purchase that includes electronics or the primary functionalty of the product is electronics. And generally the price is like less than $1,000.

                I’ve written patent applications for consumer electronic devices that have 10’s of millions of units.

                1. And I have designed consumer electronic devices that have sold 10’s of millions of units.

                2. I had not heard the term “consumer electronics space” before. I’m very familiar with consumer electronics. Some research on my part suggests that “space” is an informal word used by some as a synonym for industry, sector, or business segment. You might have answered the question instead of going to “obtuse.”

                3. …or my historical pseudonym shifting friend, you might have taken a moment to realize a common use of a term BEFORE YOU went snarky.

                  You are doing that Malcolm Accuse Others thing by whining about the reply “going to ‘obtuse'” when YOU started off with snark.

                4. My snowflake friend, asking a question is not “snark.” 4.1.1.1.1.2. Written records are such pesky things.

                5. You are quite the dullard, my mindless ad hominem ever-shifting historical pseudonym friend, as it is clear that it is NOT “just” asking a question, but how, to whom, and what question you impose.

                  You have made it clear that you would find delight in distracting those that would actually engage in the merits of legal topics (not without coincidence), viewpoints of those topics of which for those whom you do align with, are being trounced.

                  Pretentious and inapposite Latin, historical characters (whose views you do not truly understand), and your aiming only for those that want strong patent rights, all paint you as an insignificant lemming and quite incapable of any upper level of critical thinking.

                  You are merely a piece of fluff, a distraction, a plaything, something to be disposed of quite easily, and then watch as you struggle to come up with some “great Zing,” as if your efforts would ever pay off.

                6. And yes, my lemming friend, “Written records are such pesky things.” — but as previously enjoined, NOT how you portray them and not to the party to whom you would aim, but much more so, to your own “black and white.”

                  You seem quite unable to realize that YOU cannot get out of the way of your own barb.

                  There is a train wreck quality to you attempting your “gotcha” games, as you trip and bumble and wrap yourself all up in the barb wire snares that you think that you want to use to trap others.

                7. Do I have a grudging respect for those who can look reality straight in the eye and say “You do not exist?” No.

                8. That’s such a pretty strawman my friend.

                  But such has nothing to do with our conversation.

          2. 4.1.1.1.2

            Yes anon Greg tries to say that this is engineering I am talking about which is not relevant to law.

            Greg, of course, is wrong. Why? Because the specification is supposed to be interpreted by anyone skilled in the art for enablement and WD purposes.

            So how anyone skilled in the art would interpret functional language in the spec or claims is highly relevant and, actually, the only thing that should be relevant.

        2. 4.1.1.2

          the infringer lobby

          ROTFMLAO

        3. 4.1.1.3

          Josh, it is refreshing to read what intelligent and engaged bystanders think of the patent system as it is today. Here in Europe, it is mandatory on courts to fix the scope of protection of an issued claim with regard to the Protocol on Article 69 of the European Patent Convention. Judges are required to construe the claim in suit ie determine a scope of protection, which delivers reasonable legal certainty for the public but also (and equally importantly) a scope of protection that is “fair” to the inventor having regard to their contribution to the art. In other words, the claim’s the thing, but protection should be commensurate with contribution.

          You might not, but US patent attorneys will likely retort that this is as clear as mud, that there can be no legal certainty with such an arm-waving way of fixing the scope of protection.

          But the proof of the pudding lies in the eating, these past 40 years in Europe (EPC dates back to 1973). In practice, finding the line that reconciles fairness and legal certainty is not that difficult. it is like navigating the ultra-narrow line of open water between Scylla and Charybdis; do-able if you have an experienced navigator at the helm. And every bystander with experience of helmsmanship can see what the line is.

          Here in Europe, it is thought that the pinnacle of the patent attorney’s skills lies in drafting patent applications, not litigating issued patents. And the system of examination to qualify as a patent attorney focusses on aptitude, talent, competence, in drafting such that clients get the full scope of protection they deserve. A lot of people fail that exam, for want of ability to distinguish the wood from the trees.

          What do you think of that?

          1. 4.1.1.3.1

            do-able if you have an experienced navigator at the helm.

            MaxDrei, I have to wonder if you realize that your comment alights upon one of the most common criticisms of the current US patent jurisprudence?

            From my own “the scoreboard is broken” to Night Writer’s laments about “Google (or Big Tech) untoward influence,” to even comments from each of the three branches of our own government, our current driving mess with eligibility jurisprudence is directly traceable to the top level “navigator(s) at the helm

            I would ask “What do you think of that?” but I am not convinced that you would even recognize that you have aligned with certain specific posters of this blog in a way that would be unusual for you.

            1. 4.1.1.3.1.1

              What do I think? Supreme Court panels are supremely intelligent and do their conscientious best, but inevitably lack expert knowledge and practical experience of how the patent system works in ex Parte everyday commercial life. It is an unforseen treasure of the European patent system that, in 1973, the EPO came into force but not an EU patent subject to the binding precedent of CJEU decisions. See what a shambles the CJEU has made of EU trademark law.

              Instead, the law of patent validity in Europe is laid down by the Enlarged Board of Appeal, sitting inside the EPO. The EBA Judges are exclusively patent law experts. Their case law is fair, robust, unassailable and makes good sense. In Europe, in patent eligibility/validity cases, you get judged, in the ultimate, by a “Jury of your Peers”

          2. 4.1.1.3.2

            Here in Europe, it is thought that the pinnacle of the patent attorney’s skills lies in drafting patent applications, not litigating issued patents.

            This too is interesting, as here in the US, those “in the know” KNOW that the views of those who litigate — in direct opposition to those who actually endeavor to help the innovator protect their innovation – are most likely to be askew (and to be errantly aligned with the Efficient Infringer, anti-strong patent, anti pro innovation mindset).

            That’s two comments of yours in one post that align you with me (for example) much more than usual from you.

            1. 4.1.1.3.2.1

              What do i think? Those who draft and prosecute can best serve their fee-paying clients by thinking (as they draft, before they draft, after they draft) about what the law is most likely to be, ten or more years into the future. So their assessment of the vagaries of current case law (and the machinations inside theBeltway) is worth attention.

              Those litigating (including Judges) look at specifications and claims drafted ten (or even 20 or more) years in the past. So their views about what aspectsof the law are broken and need fixing are less worthy of attention.

              1. 4.1.1.3.2.1.1

                … and what do you think of your alignment with me and Night Writer (among other US Pro-patent folk of like views)…?

              2. 4.1.1.3.2.1.2

                Those who draft and prosecute can best serve their fee-paying clients by thinking… about what the law is most likely to be, ten or more years into the future.

                This is no doubt true, but only of very limited use when considered as advice. Ten years is a long way out. Even predicting five years out is an unreliable business. A lawyer who can successfully foresee changes ten years out is a paragon, and a client should be grateful to find such a paragon. A client has no legitimate grounds for complaint, however, if the attorney who drafts an instrument fails to foresee a subsequent legal development that emerges ten years out.

                1. A lawyer who can successfully foresee changes ten years out is a paragon, and a client should be grateful to find such a paragon.

                  Thanks for the compliment, Greg.

    2. 4.2

      Can you clarify what you mean by “principle” (perhaps with illustrating examples)? I am not really certain what you are trying to say here.

    3. 4.3

      The inventor should have exclusive rights to the PRINCIPLE of the invention.

      Where is that in the Constitution?

      Very serious people tr 0lling here lately! Totally not just bunch of hypocritical s c -m b@gs ranting because the scope of their entitlement is being mildly threatened.

      1. 4.3.1

        Are you trying to have MORE of your posts expunged?

        Do you not understand WHY you have the most posts expunged? More than anyone else — more than everyone else combined?

        1. 4.3.1.1

          “Do you not understand WHY you have the most posts expunged? More than anyone else — more than everyone else combined?:

          Cite?

          1. 4.3.1.1.1

            I am more than sure that I need no cite for that fact.

            Just curious though, why again do you wish to align with Malcolm, and wish to (attempt to) tr011 me?

            It’s not as if you have ever been successful playing this little game.

            1. 4.3.1.1.1.1

              “I am more than sure that I need no cite for that fact.”

              Interesting. Why?

              1. 4.3.1.1.1.1.1

                “why again do you wish to align with Malcolm, and wish to (attempt to) tr011 me?”

                Actually, snowflake, a request to show SOME basis for your commentary is not a personal attack. It’s just a request to show SOME basis for your commentary.

                1. The basis for my commentary is the plain facts of the matter.

                  Maybe YOU should pay more attention.

                  As for “snowflake” — your mindless ad hominem simply does not fit. Quite in fact, per the Urban Dictionary definition of the term (someone who thinks that they are special, but are not — AND the term is typically used for those of the political left), that term fits Malcolm as he believes that he is special and normal rules do not apply to him. That you here align with Malcolm, AND use mindless ad hominem in an Accuse Others manner (when it fits with whom you align) is rather ironic in that Malcolm’s number one meme is Accuse Others Of That Which Malcolm Is.

                  Maybe you can add some quip about “it’s in black and white” to continue to back my points…

                2. Nope. “Snowflake” is accurate because a snowflake announces or shouts their position and then is triggered if asked to support their position or presented with an alternative view.

                3. I was not triggered – your use of the term is incorrect.

                  (Funny that, coming from one who has been “hyper-sensitive” about correct use of terms of late – and doing so merely to distract from the discussion points at hand)

                  Damm – there is that “black and white” thing coming up again to bite YOU in the @$$.

                4. Twice in short order you have now displayed a lack of doing your own legwork prior to YOU launching into snark.

                  Maybe instead of being so intent to play “gotcha,” you spend that energy keeping up, paying attention and developing a basis on your own before you post.

                  Especially since your “gotcha” attempts are merely distractions to the topic at hand.

                5. Really?

                  Do you know what is worse than being pretentious?

                  Being pretentious and inapposite.

                  Let me guess: you made it through a first year of law school, and then decided that it was not really for you (and that’s a gratuitous way of saying that the law school invited you to seek a career in something other than law).

                6. At 4.1,, and then under 4.1.1.1.1.2.2, there are at least 3 different “anon” avatars. Why is that?

                7. No, I do not think that that answers the question. That is why I said Does not answer the question.

                8. Well, Blue anon, as long as you know what it was you were trying to say, that’s the important thing.

                9. The better question would be why in your mind would you think it not better for you to keep up?

                10. That’s an easy question, Blue anon. It is because trying to parse through word salads is a huge waste of time.

                11. Just because your own understanding is limited, does not make anyone else’s posts be “word salads.”

                  You are doing that lazy and being off thing again.

                  (It does not work for you)

                12. Blue anon, your insult generator is off in the weeds and making no sense. It needs a good debugging. Let me speak to Green anon.

                13. My shifting historical pseudonym friend.

                  YOU are engaging in the Malcolm-meme of Accuse Others.

                  YOU are the one “off in the weeds.”

                  Speak to whomever you want, but you need to realize that THAT Accuse Others meme f001s no one.

                14. Grey anon, my shiftless snowflake friend. Are you the slow cousin? Let me speak to Green anon.

                15. more mis-aimed ad hominem and distraction from you, my ever-shifting historical pseudonym friend…

                  a reply with a pointless question won’t change the plain “black and white” here.

                  All that you are doing is confirming the attempted blight that you have been called out for.

                16. And now comes Blue anon, my ever-shiftless snowflake friend. How goes the debugging?

                17. “Shiftless” is clearly not an appropriate word for you to use about anyone else (especially me), and only evidences the liege your bafferny serves (hint: the Accuse Others meme).

                18. Well, Blue anon, as long as you know the secret meaning of the words you make up, that’s the important thing.

                19. Yet again, your own laziness and use of the Malcolm Accuse Others show up.

                  There is NO “my secret understanding” here.

                  Sound the word out. Use some effort. Once you sound the word out, the meaning is clear and anything but secret.

                20. I did not allege that slow cousin Grey anon was not privy to the secret meaning of Blue anon’s made-up words, slow cousin Grey anon.

                21. Your use of “secret meaning” in and of itself is simply not appropriate and only shows YOUR laziness.

                  Can you at least try to Tr011 better?

                22. Obviously, when one writes “secret meaning” it does not mean “secret meaning” in the dictionary sense if they were thinking of some other meaning. Sound it out and it will come to you, slow cousin Grey anon.

                23. It is apparent that this is merely MORE of your Accuse Others Malcolm meme following.

                  Nothing in your post is written in words that require sounding out to avoid a George Carlin filter, and your position NOW is one that YOU are somehow having secret meanings.

                  Your blight is noted.

                24. Blue anon, why have you no shame about your obsession with this “Malcolm” person? How many posts can you go without saying that name?

                25. There is no “slow” anon.

                  That you “think” otherwise is merely error in the first on your part.

                  Then again, one thing that is consistent about you IS your errors.

                26. The black and white of your attempts here make clear that what you consider “confident” has no tether between what you may (or may not) be thinking and reality.

                  It really does not matter one whit what YOU consider.

                27. I’m not following, Blue anon. You’re saying Green anon is not capable of clearing this up?

                28. You keep on wanting to beg the question that something needs to be cleared up.

                  As that “something” is entirely within your own little mind, it is entirely up to you to be “cleared up.”

                  Do you think that anyone could do that?

                  Should anyone bother?

                  (the answers are already here — in black and white)

                29. Since Green anon appears to be indisposed, Blue anon, how do you think Green anon would answer the following question: if the number five were a color, what color would it be, and why?

                30. If given the choice, Blue anon, do you think Green anon would rather have a trunk like an elephant or a neck like a giraffe?

                31. Your questions perpetuate the errors of a first instance in your thinking.

                  Are you enjoying your role as jester?

                32. Blue anon, what if Green anon walked into a bar with a minister, a priest, and a rabbi? Wouldn’t that be funny?

                33. When Green anon returns, slow cousin Grey anon, tell him to always remember and never forget, when it’s bacon and eggs the chicken made a contribution but the pig made a commitment.

                34. No offense, slow cousin Grey anon, but they say you’re not exactly the brightest crayon in the drawer.

                35. SC Grey anon, do you think Green anon would or would not giggle if he came across the word “pusillanimous?”

                36. You would be far better off if you put the dictionary away and cracked open a patent law book.

  9. 3

    Re: “Query: How would our patent system adjust to applying this [reissue] written description standard in all cases, not just reissues?”

    I think that is already indicated to some extent by the outcries against the current Senate committee 102(f) amendment proposal allegedly intended to limit all functional language to specification disclosures? [Especially if retroactive.]

    As to this Forum US v. Flow Valve (Fed. Cir. 2019) decision’s repetition of the Fed. Cir. prior assertions that the pre-1952 reissue requirement has not “in any way been altered by the [1952] legislative changes” I fail to see how that makes statutory interpretation sense given the clear language change in the statute. Apparently no one ever took that to the Supremes?

    1. 3.1

      P.S. Reissue decisions like this defeat a principal purpose of broadening reissues, which is to give patent owners a brief period of two years after issuance to remove unnecessary limitations from their claims rendering the claims defectively narrower than the actual invention coverage and protection to which they are entitled.

      1. 3.1.1

        …reminds me a little of the Office’s dual modes of inadvertent//unavoidable.

    2. 3.2

      …repetition of prior assertions…

      On another thread is a link to an article by Judge Leval on the dangers of dicta as law.

      To go along with that article, I would posit that FAR too many people do not understand the limitations of Common Law law writing in the US legal system.

  10. 2

    How would our patent system adjust to applying this written description standard in all cases, not just reissues?

    It would be improved, of course. Vastly improved.

    But the patent maximalists’ heads would explode, which would be sooooo sad because, really, nothing is sadder than when a rich white guy’s precious patent rights are diminished in any way, especially if the rich white guy is a gob-fearing xian on top of that. It’s like telling them that their religious symbol is, in fact, a religious symbol and so they have to take it off the public property. You just can’t do that without considering the incredible sadness that will result to the most entitled people ever who need their entitlement to be constantly reinforced.

    In any event, according to a couple rich white entitled p r*c ks on the Supreme Court, the entire patent system is probably unconstitutional insofar as it’s not administered entirely by Congresspeople. As are teams of clerks for Supreme Court justices (nothing in the Constitution about that!). As is the patenting in any field of technology that didn’t exist in 1787. What a bunch of incredible desperate power-hungry ign 0 rant p-s-y-c-h-0-tic shirttstains the Re-pyuk-k-k-es have managed to saddle us with. Nobody could have predicted.

    1. 2.1

      Your Isms are noted.

      (Noted as well is the fact that your lead in having posts be expunged due to their improper nature has been increased with expungements in several threads. How do you feel about that? )

      1. 2.1.1

        How do you feel about that

        I could care less.

          1. 2.1.1.1.1

            Mellow,

            For some reason ( ), the direct link to the hyperlink emoticons were disabled after about a month or so of their introduction. If you know the proper “tag” characteristics, you can still enter them manually.

        1. 2.1.1.2

          LOL – I imagine that you may very well “could” care less, but apparently, your Ism-feelings were very much tr1ggered here.

          Of course, this could be just (another) case in which you are not even aware that your feelings are out of control.

  11. 1

    The query evokes a repeated misperception on the normal level of NON-heightened standard of written description, for which fairly standard boilerplate suffices to cover most any amendments that may come up in standard prosecution.

    This of course is fairly widely accepted based out of prudence and the fact that no applicant can read the minds of any examiner or foretell the future and discern just how an examiner may come up and cobble together any variety of references. In MOST art units (outside of those for which excessively “Picture Claims” may already be an “accepted” norm, this merely reflects pragmatic limitations and needs no “right-sizing” changes.

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