37 thoughts on “What’s your story?

  1. 4

    Decades ago, the partners and senior associates told newbie prosecutors to “tell a story.” After Festo, the rule of thumb was to say as little as possible. I know some prosecutors who do not give a “Background of the Invention.” Sone won’t even include a “Summary”.

    1. 4.1

      Absolutely.

    2. 4.2

      Can someone explain why nobody pushes for undoing festo etc. legislatively?

    3. 4.3

      The standard for a patent application with high-tech companies is very short background that lays out the big problems, no summary, and a technical problem/solution framing as part of the specification.

      That is standard now.

      1. 4.3.1

        This tends to be my experience. I think it’s part of recognizing that the “why” of the invention is likely more important than the “how” of the inventive process in certain areas.

        I’ve had some success in avoiding 101 issues (and staying out of 101-heavy art units) with a slightly modified approach for the software/software implemented business method inventions I work with: Short background that lays out the big-picture problem(s), a “brief summary” section that converts the claims into sentences (which seems to smooth some aspects of our international filings), and then using the first part of the detailed description to lay out the technical problem/solution in relatively plain language with the minimum required “patent profanity”, mapping features of the invention to the various problem/solution aspects. This has seemed to serve two functions well: (1) the inventors who ultimately review and sign off on the application readily recognize the invention early in the spec and understand that whoever drafted the app understands the invention from at least the same perspective as the inventors, and (2) provides some evidence in the spec to push back on some of the common 101 rejections.

        1. 4.3.1.1

          + 1

        2. 4.3.1.2

          BH yes the first part of the spec needs lots of general information that can be used by portfolio managers to understand the patent and the inventors to review the patent.

          But let’s not forget that for 101 you need to point to the spec for advantages or new functionality.

          Plus, actually, I usually write a spec assuming it will be filed as a PCT so the technical problem/solution is a must. For China you really need to consider the combination of elements problem, e.g., explicit support for claim amendments.

        3. 4.3.1.3

          Great comment explaining why you need a readable patent application for 101 which is the elephant in the room. The TKO approach to patent app drafting just made me more likely to reject the application since I figured the applicant was likely hiding something.

      2. 4.3.2

        Yeah I’ve seen that. It is annoying.

        1. 4.3.2.1

          6 it annoys me too. But I’m guessing that my reason for being annoyed is different from yours.

          My reason is that it makes no sense (except to a US litigator) to place within that part of the specification which is the detailed description of the illustrate embodiments the “story” of problem addressed, and concept identified, which concept is a solution to that problem.

          Or think of the basic principle of disclosure in return for time-limited exclusive rights. Applicant must disclose i) the concept as such and ii) at least one way to put ithat concept into effect. The “detailed description” is included to comply with the “at least one way” disclosure requirement, and NOT the requirement to announce the inventive concept, as such.

          One can retort that it is the job of the claims to define the inventive concept, and that that should suffice. But these days, it doesn’t, does it? One has to tell the reader what the claimed concept contributes to the technical field. Otherwise put, or what technical effect it delivers. Otherwise put, technical problem it solves. So where in the specification are you going to explain that? It really does not belong in the detailed description of one particular way to put the invention into effect, does it? That’s what annoys me. You?

          1. 4.3.2.1.1

            I mean, I’m fine with them putting it down there in the detailed desc of an emb or whatever, but I would appreciate them just coming out and saying what all the invention is up in the summary, and maybe dropping the improvements they think it achieves etc. there as well. Most of my inventions could have their main inventive “concept”/emb summed up in a slightly longer than normal sentence, a paragraph at longest. Fact is, there should be some structure that gets agreed upon by the courts and the PTO and all and then have that generally done. Particularly if all countries could agree to harmonize.

            1. 4.3.2.1.1.1

              6, I agree. But what you wish for is already done and dusted, so long as the USA remains a member of the PCT. See its Rule 5.1. Here a Link:

              link to wipo.int

            2. 4.3.2.1.1.2

              The older patent drafting style produced documents that were so much easier to pick up and understand. 95% of the time, you could understand the claim language by just skimming the background section.

              Now, all to often, you need to find that same material buried in paragraph [0037] of the specification, after pages of (probable) cut-and-paste boilerplate.

              1. 4.3.2.1.1.2.1

                Boilerplate need be there — if there is a reason for it.

                As to the wistfulness of a pre-patent profanity era, what good does that do?

      3. 4.3.3

        “Standard” in that the AIPLA or some other IP organization has recognized this as a model to follow or “standard” in that this is the format that one or more technology companies have dictated for you to follow?

  2. 3

    I think that the vast majority would be about as engaging as a local-news human interest story. Pass.

    1. 3.1

      Funny you say that. Back in the day at the USPTO, Examiners used to joke about allowing applications that were a TKO (as in the boxing term). If you read an application, and it was so boring that you started to pass out and face-planted onto the top of your desk, the application was a TKO and needed to be immediately allowed. While I never face-planted, there were some close calls where an application was so incredibly boring that I could feel the very life draining from my body and several cups of extremely hot coffee were barely able to keep me awake. It’s a lesson I took with me when I left the Office.

      1. 3.1.1

        Patent applications have to be actively read.

        You are building the invention in your head and the application is not to be read like a novel.

        I’ve notice there are two types of people. Those novel readers become obsessed with the language used and complain endless about too many “in an example” or “in an embodiment” phrases.

        But the active readers that understand the purpose of patent application know how to scan a patent application in minutes and focus on what is disclosed and any narrowness.

        I’ve noticed that the people that tend to do real claim charts/licensing/litigation are the active readers.

        1. 3.1.1.1

          It’s important to know your audience. In the case of a patent application, your audience comprises patent examiners, patent litigators, Federal Judges and their clerks, PTAB judges, jurors, etc. There is no guarantee that any of them is one of your preferred “active readers” or that most of them “understand the purpose of patent application”.
          Now, before you fire back with one of your hot-headed comments, take a moment, calm down, and take a few deep breaths so you realize my comment is not a personal attack on you or an assault upon the validity of your continued existence. It’s just a recognition that its a total crap shoot as to who along the “novel reader”-“active reader” spectrum actually reads the application.
          Again, please calm down before you reply.

          1. 3.1.1.1.1

            Could you be more patronizing?

            1. 3.1.1.1.1.1

              What did I tell you about calming down before you post a comment?

              1. 3.1.1.1.1.1.1

                Right ipguy. As if my reactions are excessive given what is going on. NOT.

                1. You did ask ipguy to be more patronizing to you so why are you complaining?

            2. 3.1.1.1.1.2

              Could you be more patronizing?

              Could you be more sensitive?

              Any time some one provides a counter point to you (even — or perhaps especially — when that person is typically a pro-patent person), you seem to have conniptions.

          2. 3.1.1.1.2

            It’s important to know your audience. In the case of a patent application, your audience comprises patent examiners, patent litigators, Federal Judges and their clerks, PTAB judges, jurors, etc.

            I completely agree. A patent is a legal document that must be drafted for multiple audiences over the course of projected legal terrain.

            Which is why being on top of patent profanity and curbing and wistfulness for bygone days is imperative.

  3. 2

    “I should like balls infinitely better,’ she replied, ‘if they were carried on in a different manner; but there is something insufferably tedious in the usual process of such a meeting. It would surely be much more rational if conversation instead of dancing were made the order of they day.’

    ‘Much more rational, my dear Caroline, I dare say, but it would not be near so much like a ball.”

    (Jane Austin, Pride & Prejudice)

    1. 2.1

      This could either be a “Once upon a time…” story or a “You have the right to remain silent…” story.

      Greg appears to be head down the “it was a dark and stormy night…” type of story. Considering you work in the area of pharmaceuticals, wouldn’t something along the lines of “Don’t take the brown acid…” be more appropriate? 🙂

  4. 1

    If litigators and/or judges would not use those to punish and limit applicants I would agree. However, as we all know, every word in an application needs to be weighed carefully because they can and will be misconstrued. No thanks.

    1. 1.1

      Right. There are good reasons why patent applicants don’t do this.

    2. 1.2

      Exactly my thought: patent profanity anyone?

    3. 1.3

      If litigators and/or judges would not use those to punish and limit applicants I would agree.
      The problem patentees/applicants face these days are different than when KSR came out. Right now, patents are being killed off left and right before they even get to 103 — obviously, because of 101.

      Telling the story under 101 is helpful in establishing that your invention is more than “do it on a computer” and is, in actuality, an improvement to computer technology.

      Back in the day, you worried that telling your story would be used against you in a 103 combination. However, these days, most applicants/patentees would love to be merely facing a 103 rejection. With this in mind, I would (carefully) tell the story in a patent application. Of course, if your patent won’t face 101 issues, then proceed as normal — bearing in mind that the technology that would never be rejected under 101 today might not fare as well 5 years from now under the same provision based upon the current trajectory of the Federal Circuit.

      1. 1.3.1

        The “can’t tell the future” bodes just as much as the ‘longed for’ 103 (for today’s 101 stories) as much as anything.

        The patent profanity related to 103 did not go away.

        Granted, getting to the “just 103” might invite some story-telling (and feel free to read that as “scrivining,” for all those who would chastise the Supreme Court), but one must remain careful, even in the 101 ‘setting.’

      2. 1.3.2

        Honestly, any invention that has a “computer” involved can be obliterated under Alice. Just call the main idea “Abstract”, and the claims are toast.

        Some panels seem to give weight to the technical problem/solution idea, but many do not. Video transcoding for instance — It’s obviously “abstract”.

        While I include some “background”, it’s tough to know right now whether this is a benefit or detriment.

        1. 1.3.2.1

          Best practices are definitely to include benefits of a technical solution.

        2. 1.3.2.2

          Given that courts seem to have turned the 101 analysis into a combination of 103/112/kitchen sink analysis, perhaps there should be secondary considerations for 101 subject-matter eligibility just as there are for 103. Commercial success tied to the claimed solution to the technical problem would be an example.

          1. 1.3.2.2.1

            Lol — or maybe we do not suffer this muck and raise our hackles at every opportunity BEFORE too many people cop an attitude of “well, let’s just roll over and take it”….

            (And yes, I do chuckle at the seeming disparity between this and other patent profanity)

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