15 thoughts on “Patent Terms – Means, Said, Whereby, Wherein”
3
I wonder how that first chart would look if it tracked “unit” along with means. Especially in applications out if Japan, where it feels like everything is a “unit configured to” do something.
3.1
I’d like to see one for “effective amount.”
3.2
I’d like to see a Jepson update.
2
the graphs by themselves are not very helpful without any commentary or relevant caselaw developments. Maybe this is just filler because there’s nothing else to post? How does this help me as a practitioner?
1
Three out of the four curves I can understand, even though I’m in Europe.
The one that surprises me is “said”.
What is it that leads drafters in the USA to shun use of this word? What is the negative consequence that flows from resort to it? I think we should know.
Who would like to explain to readers from outside the USA?
1.1
It’s unnecessary legalese and can be replaced by “the” without any loss in meaning. No one uses “said” in their everyday conversation.
1.1.1
Well yes, Randall, that much I know. But that was always so, wasn’t it, just as much in the year 2005 as in 2020? So why did 60% of all claims back then contain “said” whereas less than 20% do now?
Is it mere puff? Just fashion? Or something more important, like keeping on the right side of a judge or a jury?
Or is it the clients, that react negatively to patent attorneys who resort to the word “said” to pimp up their claims?
Or is it that increasing numbers of claims in issued US patents are being written by patent attorneys not within the USA?
Or perhaps all these reasons, cumulatively?
As to your reference to “normal conversation” I doubt that eschewing the word “said” is enough to bring a patent claim back into the realm of everyday colloquial language, which people who are not patent attorneys use when they communicate with each other.
1.1.1.1
“But that was always so, wasn’t it”
The obvious answer is that RS is saying an emphatic “NO” to this question, MaxDrei.
As to “Or is it the clients, that react negatively to patent attorneys who resort to the word “said” to pimp up their claims?” — I found this to be the most amusing of your comments.
As to: “ Or is it that increasing numbers of claims in issued US patents are being written by patent attorneys not within the USA?” I would wonder what is your basis for this. The rising proportion of foreign filers alone? Do you really think that foreign filers do not use US attorneys to write the US claim sets? On what basis do you make that supposition?
As to your last comment, I see more misdirection than direction there, as no one ever indicated that a move to ‘more colloquial’ requires a “single change” type of analysis as a driver, let alone that “single change” being any one particular word.
Certainly, the relative use at the start indicates a difference in kind for “said” as opposed to the charted words; although pairing “said” with “means” is a bit odd, given that “means” carries its own more fully (and direct) set of legal guidelines. Perhaps the most glaring point here is the absence of another more fully (and direct) set of legal guidelines and the related trend of the Jepson claim format (which should be on the graph with the optional “means plus” claim format.
What would also be beneficial to the larger discussion is a trend line as to what Malcolm likes to push: claims which delineate SOLELY single** objective physical structure.
** I have modified Malcolm’s “objective physical structure” to reflect the more ardent level of “solely” and “singular” to reflect the fact that once one entertains claims that cover more than “solely” or “singular,” one HAS employed the Ladders of Abstraction which is the mechanism that covers the Vast Middle Ground of using terms sounding in function (be those terms on their own OR reaching to full and proper use of the ‘Means’ option — that is, zeroing in on Malcolm’s actual grouping of his preferred – yet still optional – claim format.
1.1.1.2
Clearly, “said” was used more by older patent attorneys like me in the past, trained that way, and is apparently dying out per this chart. One rationale for it was that it should remind patent attorneys to check to see if it really was “said.” That is, was there is a proper antecedent expression of the same “said”? [It may be my imagination, but I do seem to see more missing antecedent expressions in some claims on this blog, risking ambiguity defects, but that may not be related to the demise of “said.”]
I suppose one can argue that using “the” instead of said might make a claim slightly less intimidating to a jury as well as inventors and clients? I cannot see why it would help with PTO examiners or APJs?
1.1.1.2.1
…left hanging in the air from the very last sentence:
“… that were trained like me.”
I would note that perhaps no one should be more careful with that ‘hanging phrase’ than should be MaxDrei.
1.1.1.2.2
I think the biggest reason for the decline in the use of “said” is to make the claims easier for a jury to follow. That’s the reason I was given when I learned to draft claims.
1.1.1.2.3
Perhaps said retired with Irving Kayton.
1.1.1.2.3.1
Not a bad theory!
1.1.1.2.3.2
Ha Ha. Good one!
1.1.1.3
At least when I was in law school (2008-11), there was a conscious effort by the legal writing professors to push modernized legal language in general, and I got the sense this was a relatively new but enthusiastic shift in teaching. For example, this was one of our textbooks: link to amazon.com
The big thrust of this book is a lot of traditional legalese does not provide any real benefit at all over more modern, easier to read English, and just makes it harder for a layperson (or even a fellow lawyer) to quickly and efficiently read a document.
I have noticed a shift in style when looking at published patent documents towards more modern/plain English language, especially in the last 15 years or so. It seems to mirror the trend in the larger legal industry.
Given the weird contortions sometimes required to get a claim through to allowance, I’m all for modernizing spec language, especially when the subject matter itself has a steep learning curve. It’s very helpful not to have to decode extensive legalese when I’m trying to figure out what the reference actually teaches.
I wonder how that first chart would look if it tracked “unit” along with means. Especially in applications out if Japan, where it feels like everything is a “unit configured to” do something.
I’d like to see one for “effective amount.”
I’d like to see a Jepson update.
the graphs by themselves are not very helpful without any commentary or relevant caselaw developments. Maybe this is just filler because there’s nothing else to post? How does this help me as a practitioner?
Three out of the four curves I can understand, even though I’m in Europe.
The one that surprises me is “said”.
What is it that leads drafters in the USA to shun use of this word? What is the negative consequence that flows from resort to it? I think we should know.
Who would like to explain to readers from outside the USA?
It’s unnecessary legalese and can be replaced by “the” without any loss in meaning. No one uses “said” in their everyday conversation.
Well yes, Randall, that much I know. But that was always so, wasn’t it, just as much in the year 2005 as in 2020? So why did 60% of all claims back then contain “said” whereas less than 20% do now?
Is it mere puff? Just fashion? Or something more important, like keeping on the right side of a judge or a jury?
Or is it the clients, that react negatively to patent attorneys who resort to the word “said” to pimp up their claims?
Or is it that increasing numbers of claims in issued US patents are being written by patent attorneys not within the USA?
Or perhaps all these reasons, cumulatively?
As to your reference to “normal conversation” I doubt that eschewing the word “said” is enough to bring a patent claim back into the realm of everyday colloquial language, which people who are not patent attorneys use when they communicate with each other.
“But that was always so, wasn’t it”
The obvious answer is that RS is saying an emphatic “NO” to this question, MaxDrei.
As to “Or is it the clients, that react negatively to patent attorneys who resort to the word “said” to pimp up their claims?” — I found this to be the most amusing of your comments.
As to: “ Or is it that increasing numbers of claims in issued US patents are being written by patent attorneys not within the USA?” I would wonder what is your basis for this. The rising proportion of foreign filers alone? Do you really think that foreign filers do not use US attorneys to write the US claim sets? On what basis do you make that supposition?
As to your last comment, I see more misdirection than direction there, as no one ever indicated that a move to ‘more colloquial’ requires a “single change” type of analysis as a driver, let alone that “single change” being any one particular word.
Certainly, the relative use at the start indicates a difference in kind for “said” as opposed to the charted words; although pairing “said” with “means” is a bit odd, given that “means” carries its own more fully (and direct) set of legal guidelines. Perhaps the most glaring point here is the absence of another more fully (and direct) set of legal guidelines and the related trend of the Jepson claim format (which should be on the graph with the optional “means plus” claim format.
What would also be beneficial to the larger discussion is a trend line as to what Malcolm likes to push: claims which delineate SOLELY single** objective physical structure.
** I have modified Malcolm’s “objective physical structure” to reflect the more ardent level of “solely” and “singular” to reflect the fact that once one entertains claims that cover more than “solely” or “singular,” one HAS employed the Ladders of Abstraction which is the mechanism that covers the Vast Middle Ground of using terms sounding in function (be those terms on their own OR reaching to full and proper use of the ‘Means’ option — that is, zeroing in on Malcolm’s actual grouping of his preferred – yet still optional – claim format.
Clearly, “said” was used more by older patent attorneys like me in the past, trained that way, and is apparently dying out per this chart. One rationale for it was that it should remind patent attorneys to check to see if it really was “said.” That is, was there is a proper antecedent expression of the same “said”? [It may be my imagination, but I do seem to see more missing antecedent expressions in some claims on this blog, risking ambiguity defects, but that may not be related to the demise of “said.”]
I suppose one can argue that using “the” instead of said might make a claim slightly less intimidating to a jury as well as inventors and clients? I cannot see why it would help with PTO examiners or APJs?
…left hanging in the air from the very last sentence:
“… that were trained like me.”
I would note that perhaps no one should be more careful with that ‘hanging phrase’ than should be MaxDrei.
I think the biggest reason for the decline in the use of “said” is to make the claims easier for a jury to follow. That’s the reason I was given when I learned to draft claims.
Perhaps said retired with Irving Kayton.
Not a bad theory!
Ha Ha. Good one!
At least when I was in law school (2008-11), there was a conscious effort by the legal writing professors to push modernized legal language in general, and I got the sense this was a relatively new but enthusiastic shift in teaching. For example, this was one of our textbooks: link to amazon.com
The big thrust of this book is a lot of traditional legalese does not provide any real benefit at all over more modern, easier to read English, and just makes it harder for a layperson (or even a fellow lawyer) to quickly and efficiently read a document.
I have noticed a shift in style when looking at published patent documents towards more modern/plain English language, especially in the last 15 years or so. It seems to mirror the trend in the larger legal industry.
Given the weird contortions sometimes required to get a claim through to allowance, I’m all for modernizing spec language, especially when the subject matter itself has a steep learning curve. It’s very helpful not to have to decode extensive legalese when I’m trying to figure out what the reference actually teaches.
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