Been there, done that, got the t-shirt. I had to use a magnifying glass on patent drawings while working either as a patent examiner or working with patent attorneys on the prosecution side. I miss the draftsmen and women at the PTO who used to screen patent drawings so that they would comply with the regs but they were slowly phased out of the office. FYI: Magnifying glasses now come with built in LED lights that really help.
11
Perhaps the easier question to answer: Anyone not been in this position?
11.1
+1
10
I have been in this position and frankly, I think that most attorneys with enough experience have been at some point.
I beg to differ with those who would systematically attribute this situation to sloppy or bare-bones drafting.
Sometimes you can also have a well-crafted, detail-rich specification but still have trouble, because some prior art neither you or the inventor(s) knew about happens to read on your broadest claims, and (1) it’s just hard to amend around it, precisely because you’d never thought you’d have to, and (2) you don’t want to amend to your narrowest fallback positions, because that prior art isn’t *that* relevant either.
As I like to say, “the first time you see the prior art is the first time you know how you should *actually* have drafted the application”…
10.1
I used to tell inventors that there are at typically five layers of prior art: (1) the references you know; (2) the prior art your in-house counsel or the patent searcher you or they hired finds; (3) the references I find when I do a ‘sanity check’ search; (4) the prior art the PTO examiner finds; and (5) the references that an accused infringer finds.
And by the time you initially claim or subsequently amend to cover all that prior art, the patent claims are often so narrow that it is a trivial task to design around.
MHO, YMMV, etc. Be well.
10.1.1
“And by the time you initially claim or subsequently amend to cover all that prior art, the patent claims are often so narrow that it is a trivial task to design around.”
You are most likely not doing it correctly.
10.1.1.1
One generally has to do what a client wants them to do. E.g., after a FOAM, the client may wish to file continuations for several narrowly claimed applications rather than RCEs and/or appeal on a more broadly claimed initial application.
Also, I generally dealt in rather mature technologies with little remaining white space.
MHO, YMMV, etc. Be well.
10.2
“it’s just hard to amend around it, precisely because you’d never thought you’d have to”
You think they would tell you guys to always plan ahead for this. But apparently some people miss the memo.
9
We’ve all been there.
8
Meh. Looks to me like a roomful of Russian generals trying to figure out how in the world Putin was able to father children.
7
Re: Desperately searching the specification for needed support for a needed claim amendment needed to distinguish prior art.
Common enough, primarily in patent applications filed by a client stupidly thinking they were being cost-efficient by filing patent applications without any pre-filing prior art search that would help define what might be validly claimable and provide distinctions over the prior art. Or, scientist inventors claiming they knew all the prior art, so no need for a prior art search.
7.1
You have been away from prosecution for a long long time, haven’t you Paul?
It is in fact more rare than common for clients (and I am talking some MAJOR clients) ‘spring’ for prior art searches.
Is that “best practice” — not in my book.
And I certainly have that conversation with the client. But as others here have noted – many have discounted what they are willing to pay for, and some even recognize that they are no longer shopping for top-end “cars.”
What many though will refuse to recognize is that THIS TOO is a result of the non-stop anti-patent propaganda from the Efficient Infringers.
6
This predicament does not only arise because of weak drafting. It can arise because of cited art that one is trying to carve around.
But I agree with anon. Prosecution has become a commodity practice in the U.S. – high volume low return. IMO, it began when universities began filing patent applications prolifically in the early 90s. Tech transfer people did not want to make the hard decisions on what to file on, without having a licensee in place. Around the same time, provisional applications came into use. A perfect solution arose. One could put together a provisional for a low cost, and have a year to decide what to do. The problem is, you get what you pay for, even if you fool yourself into thinking otherwise. Years ago, one university tech transfer head told us he wanted cadillacs for the price of chevettes. We laughed. He was serious.
It takes time to draft a solid application with support for the invention, to get the broadest coverage that will survive challenge.
6.1
“We laughed. He was serious”
You should have loled with him and told him you agree, you’d also like old school caddys for old school chevy prices. Of course nowadays a nice chevy might out price the caddy. My car I’m getting, likely a stingray, will outprice many caddys. Also MM will note that there will be no women enticed by said vehicle. At all. Ever. Nor will any plumbing turn on. At all. Ever.
fwiw I actually agree, but these girls looking to predate on me apparently do not.
5
Definitely I have been in this position, usually when handling the U.S. phase of an application that some CN/EP/JP attorney drafted.
5.1
Agree. Some of the worst applications I have ever seen come out of the EP.
They enable the claims and that is just about it.
5.1.1
I hear you.
Unfortunately, I also see this in a fair amount in inherited US cases**.
These DO tend to come from the “you get what you pay for” clients though, and if clients are operating at a bottom-budget level, they are certainly culpable in that “enable the claims and that is just about it” mode that is out there.
** I would estimate that over the last few years that I have had more than 8% of my cases have Office Actions with a higher page count than the application’s detailed description.
5.1.2
Well, at least specifications written in Europe do enable what is claimed. That’s something, I suppose.
Indeed, what more is the specification there to do, other than that? How is it that such enabling descriptions represent the nadir of claim drafting expertise?
The thought occurs, that your comment, WT, was intended as sarcasm. But that surely can’t be, can it? So, if it was not, what do specifications drafted in Europe so signally lack, which those written within the USA automatically include? Can you say more? I’m here to learn.
5.1.2.1
“Indeed, what more is the specification there to do, other than that?”
(I really need my face palm emoji)
Hmm, let’s try:
🤦
5.1.2.2
Indeed, what more is the specification there to do, other than that?
Provide additional depth as to the invention. The claims can be amended in the US. Perhaps, because of an unreasonable interpretation, one needs to expound upon a limitation to get around the prior art.
5.1.2.2.1
Good answer. Thanks, WT. Yes, the eternal Sisyphal burden of the prosecutor, to amend the claims to “get around” the prior art and impart more “depth” to “the invention”. As you say.
The interesting question is whether the drafter of the as-filed patent application, in pursuance of the quest to impart more “depth” to the claimed subject matter, scrivened a set of dependent claims that was, unfortunately, a total failure in that very task. Yes or no.
If no, just amend to a dependent claim. Simples.
If yes, why should amendment be allowed, to an intermediate generalisation of the best mode that the original drafter completely failed to envisage. This is amendment to an invention NOT within the possession of the drafter at the filing date.
If the interpretation of claim is “unreasonable” though, why not just refute it instead of narrowing the claim.
5.1.2.2.1.1
Re: “If the interpretation of claim is “unreasonable” though, why not just refute it instead of narrowing the claim?”
Not always easy to do, even if not just a subjective difference of opinion. The terms used in a claim you want to read more narrowly are often not clearly or narrowly enough defined in the spec itself, and dictionary definitions may not help. Collecting and demonstrating usages of those terms from a substantial numbers of patents in the same art at about the same time may work, but takes time and effort. “Just refute it” might even get you a prosecution history estoppel that would prevent infringement but not a successful prior art distinction in an IPR claim interpretation?
5.1.2.2.1.1.1
Paul, you end with a question mark but what do you want from me? I’m lost for an answer.
5.1.2.2.1.2
An example of someone with a complete lack of a mind open to understanding:
“If yes, why should amendment be allowed, to an intermediate generalisation of the best mode that the original drafter completely failed to envisage. This is amendment to an invention NOT within the possession of the drafter at the filing date.”
It must be nearly a decade now that I have chastised MaxDrei about this odd sense of his that applications somehow cannot capture this “intermediate generalizations.”
This is a pretty basic skill for US practitioners.
Near as I can tell, this is an offshoot of the (different Sovereign) need for some ipsis verbis “possession.”
5.1.2.2.1.2.1
Near as you can tell, is it, anon, on the subject of disclosure in the application on the filing date, specifically of enhanced patentability of specific intermediate generalisations.
OK. Stick around. After twenty or so years of experience of priority contests under a First to File regime, the penny will eventually drop, both in your consciousness and that of the courts of the USA. Already the WD requirement is ratcheting tighter. The process will continue. It’s a foregone conclusion and a direct consequence of the shift to First to File.
…
No.
No it is not.
You would have been better off noting a polyglot nature of the EPO.
The US just does not have that, and our “no requirement for ipsis verbis” simply paints a wider swath.
5.2
The other place where I used to encounter this phenomenon all the time was applications that were filed pre-Mayo, where the invention that the application was drafted to support is now ruled out of court. Suddenly, you need to pretend that the applicant has invented a method of treatment, rather than a method of diagnosis. You would often find yourself poring through the disclosure (and through the disclosures of incorporated-by-reference documents) looking for treatment details that you could redact into your diagnostic method claim. Mostly that cohort of applications has moved through the pipeline by now, so this does not come up as much anymore.
4
Common enough occurrence — granted, it is far more typical for those prosecution matters that we inherit.
3
Almost sure a few attorneys across from me have done that going by what they’ve said.
2
Yes. Most definitely.
1
Great question, Dennis. My answer is Yes. But then that might be because much of what passes for “support” under US law falls lamentably far below what is required here in Europe. I have always averred, that the switch to FItF will ramp up what is needed to meet the WD requirement under the US statute.
For these reasons alone, I am curious what other answers to your question you will receive.
1.1
MaxDrei,
Your “wish” will not come true – as long as the US continues to have its client drive for a lowest cost prep and pros route.
And by the way – this miserly attitude more often comes from the bigger clients.
1.1.1
anon, as far as I can see with large US corporations, they are becoming ever more expert at putting outside counsel into a position where self-interest (the fear of losing the client) drives the law firm to strive for best practice while surviving on miserly set fee levels. It is self-interest which will prompt a law firm to deliver good quality drafting even when the remuneration from the client is squeezed ever lower.
Or do you disagree?
1.1.1.1
+1
Market competition working as advertised.
1.1.1.1.1
^^^ spoken like a LOT of inside counsel folk DRIVING the dreg.
1.1.1.2
Completely disagree.
What you more get often than not is a piece of CR_P, corners-cut-to-be-pieces thing that then gets transferred to another firm after the “firm that meets cost targets” Never delivers patents.
Yes, my firm delivers – hence I tend to see a lot of this dreg.
1.1.1.3
George Carlin filter sensitivity is a bit high…
Your comment is awaiting moderation.
August 24, 2022 at 2:48 pm
Completely disagree.
What you more get often than not is a piece of
C
R
P
corners-cut-to-be-pieces thing that then gets transferred to another firm after the “firm that meets cost targets” Never delivers patents.
Yes, my firm delivers – hence I tend to see a lot of this dreg.
1.1.1.4
anon, as far as I can see with large US corporations,… the fear of losing the client… drives the law firm to strive for best practice while surviving on miserly set fee levels.
This point might be less apt when addressing anon, who holds himself out as a software patent professional. What really counts as “best practice” in software patents?
The difference between a “well” drafted patent and a “poorly” drafted patent is that the “well” drafted holds up when asserted, but the “poorly” drafted does not. With that in mind, there are so few “well” drafted software patents that it is not meaningfully possible to abstract a set of “best practices” from that meager data set.
1.1.1.4.1
Greg being Greg…
Imbibe that “software is the Bad” kool-aid much?
Maybe check out how that “bad” software runs to WELL OVER 50% of patented innovations.
Get out of your Big Pharma- bias closet.
1.1.1.4.2
And in the epitome of self-embarrassment, Greg vomits his own gaslighting over at PatentDocs, and Dr Borella NAILS him with the same type of, ‘Dude, are you not aware of the breadth of innovation featuring software?’
As Greg uses his real name, I have to conclude that he has NO friends – leastwise those who care enough about him to counsel him to stop embarrassing himself.
Maybe someone higher up in his firm…?
1.1.1.4.3
Your comment is awaiting moderation.
August 25, 2022 at 4:21 pm
And in the epitome of self-embar ra ssment , Greg v0m1ts his own gaslighting over at PatentDocs, and Dr Borella NAILS him with the same type of, ‘Dude, are you not aware of the breadth of innovation featuring software?’
As Greg uses his real name, I have to conclude that he has NO friends – leastwise those who care enough about him to counsel him to stop embarrassing himself.
Been there, done that, got the t-shirt. I had to use a magnifying glass on patent drawings while working either as a patent examiner or working with patent attorneys on the prosecution side. I miss the draftsmen and women at the PTO who used to screen patent drawings so that they would comply with the regs but they were slowly phased out of the office. FYI: Magnifying glasses now come with built in LED lights that really help.
Perhaps the easier question to answer: Anyone not been in this position?
+1
I have been in this position and frankly, I think that most attorneys with enough experience have been at some point.
I beg to differ with those who would systematically attribute this situation to sloppy or bare-bones drafting.
Sometimes you can also have a well-crafted, detail-rich specification but still have trouble, because some prior art neither you or the inventor(s) knew about happens to read on your broadest claims, and (1) it’s just hard to amend around it, precisely because you’d never thought you’d have to, and (2) you don’t want to amend to your narrowest fallback positions, because that prior art isn’t *that* relevant either.
As I like to say, “the first time you see the prior art is the first time you know how you should *actually* have drafted the application”…
I used to tell inventors that there are at typically five layers of prior art: (1) the references you know; (2) the prior art your in-house counsel or the patent searcher you or they hired finds; (3) the references I find when I do a ‘sanity check’ search; (4) the prior art the PTO examiner finds; and (5) the references that an accused infringer finds.
And by the time you initially claim or subsequently amend to cover all that prior art, the patent claims are often so narrow that it is a trivial task to design around.
MHO, YMMV, etc. Be well.
“And by the time you initially claim or subsequently amend to cover all that prior art, the patent claims are often so narrow that it is a trivial task to design around.”
You are most likely not doing it correctly.
One generally has to do what a client wants them to do. E.g., after a FOAM, the client may wish to file continuations for several narrowly claimed applications rather than RCEs and/or appeal on a more broadly claimed initial application.
Also, I generally dealt in rather mature technologies with little remaining white space.
MHO, YMMV, etc. Be well.
“it’s just hard to amend around it, precisely because you’d never thought you’d have to”
You think they would tell you guys to always plan ahead for this. But apparently some people miss the memo.
We’ve all been there.
Meh. Looks to me like a roomful of Russian generals trying to figure out how in the world Putin was able to father children.
Re: Desperately searching the specification for needed support for a needed claim amendment needed to distinguish prior art.
Common enough, primarily in patent applications filed by a client stupidly thinking they were being cost-efficient by filing patent applications without any pre-filing prior art search that would help define what might be validly claimable and provide distinctions over the prior art. Or, scientist inventors claiming they knew all the prior art, so no need for a prior art search.
You have been away from prosecution for a long long time, haven’t you Paul?
It is in fact more rare than common for clients (and I am talking some MAJOR clients) ‘spring’ for prior art searches.
Is that “best practice” — not in my book.
And I certainly have that conversation with the client. But as others here have noted – many have discounted what they are willing to pay for, and some even recognize that they are no longer shopping for top-end “cars.”
What many though will refuse to recognize is that THIS TOO is a result of the non-stop anti-patent propaganda from the Efficient Infringers.
This predicament does not only arise because of weak drafting. It can arise because of cited art that one is trying to carve around.
But I agree with anon. Prosecution has become a commodity practice in the U.S. – high volume low return. IMO, it began when universities began filing patent applications prolifically in the early 90s. Tech transfer people did not want to make the hard decisions on what to file on, without having a licensee in place. Around the same time, provisional applications came into use. A perfect solution arose. One could put together a provisional for a low cost, and have a year to decide what to do. The problem is, you get what you pay for, even if you fool yourself into thinking otherwise. Years ago, one university tech transfer head told us he wanted cadillacs for the price of chevettes. We laughed. He was serious.
It takes time to draft a solid application with support for the invention, to get the broadest coverage that will survive challenge.
“We laughed. He was serious”
You should have loled with him and told him you agree, you’d also like old school caddys for old school chevy prices. Of course nowadays a nice chevy might out price the caddy. My car I’m getting, likely a stingray, will outprice many caddys. Also MM will note that there will be no women enticed by said vehicle. At all. Ever. Nor will any plumbing turn on. At all. Ever.
Love the dig at Malcolm.
But I doubt that he will take the bait.
Maybe have a tune play out…?
Soon as you get a bag
link to youtube.com
Hahahaha
But THIS is 6 (making it up in denial):
link to youtu.be
fwiw I actually agree, but these girls looking to predate on me apparently do not.
Definitely I have been in this position, usually when handling the U.S. phase of an application that some CN/EP/JP attorney drafted.
Agree. Some of the worst applications I have ever seen come out of the EP.
They enable the claims and that is just about it.
I hear you.
Unfortunately, I also see this in a fair amount in inherited US cases**.
These DO tend to come from the “you get what you pay for” clients though, and if clients are operating at a bottom-budget level, they are certainly culpable in that “enable the claims and that is just about it” mode that is out there.
** I would estimate that over the last few years that I have had more than 8% of my cases have Office Actions with a higher page count than the application’s detailed description.
Well, at least specifications written in Europe do enable what is claimed. That’s something, I suppose.
Indeed, what more is the specification there to do, other than that? How is it that such enabling descriptions represent the nadir of claim drafting expertise?
The thought occurs, that your comment, WT, was intended as sarcasm. But that surely can’t be, can it? So, if it was not, what do specifications drafted in Europe so signally lack, which those written within the USA automatically include? Can you say more? I’m here to learn.
“Indeed, what more is the specification there to do, other than that?”
(I really need my face palm emoji)
Hmm, let’s try:
🤦
Indeed, what more is the specification there to do, other than that?
Provide additional depth as to the invention. The claims can be amended in the US. Perhaps, because of an unreasonable interpretation, one needs to expound upon a limitation to get around the prior art.
Good answer. Thanks, WT. Yes, the eternal Sisyphal burden of the prosecutor, to amend the claims to “get around” the prior art and impart more “depth” to “the invention”. As you say.
The interesting question is whether the drafter of the as-filed patent application, in pursuance of the quest to impart more “depth” to the claimed subject matter, scrivened a set of dependent claims that was, unfortunately, a total failure in that very task. Yes or no.
If no, just amend to a dependent claim. Simples.
If yes, why should amendment be allowed, to an intermediate generalisation of the best mode that the original drafter completely failed to envisage. This is amendment to an invention NOT within the possession of the drafter at the filing date.
If the interpretation of claim is “unreasonable” though, why not just refute it instead of narrowing the claim.
Re: “If the interpretation of claim is “unreasonable” though, why not just refute it instead of narrowing the claim?”
Not always easy to do, even if not just a subjective difference of opinion. The terms used in a claim you want to read more narrowly are often not clearly or narrowly enough defined in the spec itself, and dictionary definitions may not help. Collecting and demonstrating usages of those terms from a substantial numbers of patents in the same art at about the same time may work, but takes time and effort. “Just refute it” might even get you a prosecution history estoppel that would prevent infringement but not a successful prior art distinction in an IPR claim interpretation?
Paul, you end with a question mark but what do you want from me? I’m lost for an answer.
An example of someone with a complete lack of a mind open to understanding:
“If yes, why should amendment be allowed, to an intermediate generalisation of the best mode that the original drafter completely failed to envisage. This is amendment to an invention NOT within the possession of the drafter at the filing date.”
It must be nearly a decade now that I have chastised MaxDrei about this odd sense of his that applications somehow cannot capture this “intermediate generalizations.”
This is a pretty basic skill for US practitioners.
Near as I can tell, this is an offshoot of the (different Sovereign) need for some ipsis verbis “possession.”
Near as you can tell, is it, anon, on the subject of disclosure in the application on the filing date, specifically of enhanced patentability of specific intermediate generalisations.
OK. Stick around. After twenty or so years of experience of priority contests under a First to File regime, the penny will eventually drop, both in your consciousness and that of the courts of the USA. Already the WD requirement is ratcheting tighter. The process will continue. It’s a foregone conclusion and a direct consequence of the shift to First to File.
No.
No it is not.
You would have been better off noting a polyglot nature of the EPO.
The US just does not have that, and our “no requirement for ipsis verbis” simply paints a wider swath.
The other place where I used to encounter this phenomenon all the time was applications that were filed pre-Mayo, where the invention that the application was drafted to support is now ruled out of court. Suddenly, you need to pretend that the applicant has invented a method of treatment, rather than a method of diagnosis. You would often find yourself poring through the disclosure (and through the disclosures of incorporated-by-reference documents) looking for treatment details that you could redact into your diagnostic method claim. Mostly that cohort of applications has moved through the pipeline by now, so this does not come up as much anymore.
Common enough occurrence — granted, it is far more typical for those prosecution matters that we inherit.
Almost sure a few attorneys across from me have done that going by what they’ve said.
Yes. Most definitely.
Great question, Dennis. My answer is Yes. But then that might be because much of what passes for “support” under US law falls lamentably far below what is required here in Europe. I have always averred, that the switch to FItF will ramp up what is needed to meet the WD requirement under the US statute.
For these reasons alone, I am curious what other answers to your question you will receive.
MaxDrei,
Your “wish” will not come true – as long as the US continues to have its client drive for a lowest cost prep and pros route.
And by the way – this miserly attitude more often comes from the bigger clients.
anon, as far as I can see with large US corporations, they are becoming ever more expert at putting outside counsel into a position where self-interest (the fear of losing the client) drives the law firm to strive for best practice while surviving on miserly set fee levels. It is self-interest which will prompt a law firm to deliver good quality drafting even when the remuneration from the client is squeezed ever lower.
Or do you disagree?
+1
Market competition working as advertised.
^^^ spoken like a LOT of inside counsel folk DRIVING the dreg.
Completely disagree.
What you more get often than not is a piece of CR_P, corners-cut-to-be-pieces thing that then gets transferred to another firm after the “firm that meets cost targets” Never delivers patents.
Yes, my firm delivers – hence I tend to see a lot of this dreg.
George Carlin filter sensitivity is a bit high…
Your comment is awaiting moderation.
August 24, 2022 at 2:48 pm
Completely disagree.
What you more get often than not is a piece of
C
R
P
corners-cut-to-be-pieces thing that then gets transferred to another firm after the “firm that meets cost targets” Never delivers patents.
Yes, my firm delivers – hence I tend to see a lot of this dreg.
anon, as far as I can see with large US corporations,… the fear of losing the client… drives the law firm to strive for best practice while surviving on miserly set fee levels.
This point might be less apt when addressing anon, who holds himself out as a software patent professional. What really counts as “best practice” in software patents?
The difference between a “well” drafted patent and a “poorly” drafted patent is that the “well” drafted holds up when asserted, but the “poorly” drafted does not. With that in mind, there are so few “well” drafted software patents that it is not meaningfully possible to abstract a set of “best practices” from that meager data set.
Greg being Greg…
Imbibe that “software is the Bad” kool-aid much?
Maybe check out how that “bad” software runs to WELL OVER 50% of patented innovations.
Get out of your Big Pharma- bias closet.
And in the epitome of self-embarrassment, Greg vomits his own gaslighting over at PatentDocs, and Dr Borella NAILS him with the same type of, ‘Dude, are you not aware of the breadth of innovation featuring software?’
As Greg uses his real name, I have to conclude that he has NO friends – leastwise those who care enough about him to counsel him to stop embarrassing himself.
Maybe someone higher up in his firm…?
Your comment is awaiting moderation.
August 25, 2022 at 4:21 pm
And in the epitome of self-embar ra ssment , Greg v0m1ts his own gaslighting over at PatentDocs, and Dr Borella NAILS him with the same type of, ‘Dude, are you not aware of the breadth of innovation featuring software?’
As Greg uses his real name, I have to conclude that he has NO friends – leastwise those who care enough about him to counsel him to stop embarrassing himself.
Maybe someone higher up in his firm…?
Comments are closed.