by Dennis Crouch
In re Float’N’Grill LLC, 2022-1438 (Fed. Cir. 2023)
Just in time for my early August floating trip down in the Ozarks, the Federal Circuit has affirmed the USPTO’s rejections of Float’N’Grill’s proposed reissue claims. The problem: the reissue claims omit an “essential element” of the original invention in violation of 35 U.S.C. 251. The case here is quite similar to the maligned essential elements test of Gentry Gallery, but relies upon the reissue statute rather than the written description requirement of Section 112(a).
Float’N’Grill’s US 9,771,132 covers a floating grill. In patent lingo, we call this a “floating apparatus with grill supports” to allow grilling while floating in water. The disclosed embodiment uses magnets to removably secure the grill to the grill supports, and the original claims required a plurality of magnets. After the patent issued, the patentee recognized that the magnet limitation was unduly narrow. The broadening reissue was filed within the two-year 112(d) deadline and replaced the magnet limitation with one requiring the portions to be “removably securable.”
This is a Shark Tank innovation that got investment (video below). Before getting an investor, these guys filed a low quality initial patent application that had unduly narrow claims that were exploited by knock-off versions and really just disclosed a single embodiment. They got a notice of allowance within a year and paid the issue fee without a continuation. In its decision, the Federal Circuit rejected their reissue patent claims on what is clearly a technicality and one that is extremely biased toward those who spend more on patent prosecution. Patent holders with more money would drafted a more “lawyerly” initial patent application that included wiggle room boilerplate statements and additional prophetic embodiments; and would have kept a continuation application alive. Either of those strategies would have saved the broader claims.
The Original Patent Requirement: Section 251 requires that the reissue claims be directed to “the invention disclosed in the original patent.” And here, the problem, according to the PTO and Federal Circuit, is that the magnets was essential to the invention as originally disclosed.
The key precedent on point is U.S. Industrial Chemicals, Inc. v. Carbide & Carbon Chemicals, Corp., 315 U.S. 668 (1942). In that case, the Supreme Court rejected a set of reissue claims on similar grounds. The original specification highlighted the inclusion of water to improve the efficiency of a reaction. Later, in the reissue, the patentee removed the water requirement. In its analysis, the Supreme Court concluded that water was “a necessary step” in the invented process “essential in the original patent.” As such, the claim omitting water was improperly added in the reissue.
In US Industrial Chemicals, the court also remarked that the original patent requirement goes beyond the ordinary limits of Section 112. The test is not passed simply by showing that the proposed invention “might have been claimed in the original patent because it was suggested or indicated in the specification.”
The Federal Circuit reaffirmed these principles in Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346 (Fed. Cir. 2019). In that case, the original patent document disclosed several different machining implements, each having multiple arbors. The patent also described advantages of the multiple-arbor arrangement. In the reissue though the patentee attempted to remove the multiple-arbor requirement in favor of a more generic support. In its opinion, the Federal Circuit concluded the proposed claims were invalid for failure to satisfy the original patent requirement. The court noted that the patent document failed to suggest anywhere “that arbors are an optional feature of the invention.” See also Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354, 1358 (Fed. Cir. 2014).
No guarantee that much broader original claims would have been allowed, since an application filed with only narrow claims is normally only getting a PTO prior art search for those narrow claims. Was the broad concept of any kind of floating grill new? That seems unlikely.
Thanks to No. 6 below, we now have indications of the real problem here.
Many hundreds of private inventors have been expensively shafted by responding to the TV and other adds of “invention promotion companies” and using the kind of patent attorneys they deal with. [Then the inventors blame the patent system.]
Below Malcolm had quipped, “Hilarious and also utterly predictable” — which I had chosen to 1gn0re as clearly it was his typical emotive rant displaying the cognitive disassociation of one who’s professional practice offends their deeply held philosophical convictions (as a professed patent attorney, he is active in creating personal property of a nature that he routinely shows an utter disdain for, as backed up by his rampant Sprint Left diatribes).
Your quip though Paul of “many hundreds” raises the question in my mind (also given that such a ‘scourge’ had retreated from the headlines MANY years ago):
How bad (how many people) are affected by such ‘fly-by-night’ shoddy representations?
Might be a good item for some Academics to research.
I think you devalue the skill it takes to claim an invention and to understand the invention. A good patent attorney is worth the money.
For me, having looked at the patent, the tragedy is that the two friends unable to pay for a patent attorney could have nevertheless generated an effective patent if only somebody had pointed out to them that your patent specification has to be a description to defeat the design arounders. Night: inventors, not patent attorneys, are best placed to explore that area.
Instead, the two friends seem to have been under a misapprehension that the only thing a patent specification has to do is describe their own prototype in exhaustive detail. Wrong, wrong, wrong.
Does not the USPTO website offer a page of advice to those who have no reasonable alternative to writing and filing their own patent application?
Max –
See Reply #6 below. The original patent application on the Float ‘N’ Grill product was filed (and therefore probably prepared) by a patent attorney who was registered with the USPTO at the time. The two inventors apparently relied upon her as a professional.
Not all patent attorneys possess the same level of knowledge, skill and experience. The same is true of surgeons, dentists, civil engineers, architects, etc. It is prudent to seek referrals and to check credentials before engaging any professional.
In my opinion, good patent attorneys do not accept clients referred by invention promotion companies like InventHelp.
Here is a link to the UPSTO decision excluding Tarley G. Stevenson, Reg. No. 72,618, from practice before the USPTO in patent, trademark and other non-patent matters. It recites details regarding her representation of clients referred to her law firm by InventHelp.
link to foiadocuments.uspto.gov
>>Night: inventors, not patent attorneys, are best placed to explore that area.
Max, inventors often lack the ability to express themselves. Often, I’ve found, that inventors don’t even realize what they have invented.
The best person to write a patent application is a well-trained patent attorney who is knowledgeable about the subject area. I know how to write patent applications to get around the prior art and maximize the claim scope and to write a specification so we can write a claim chart.
It is a lot of work writing a good patent application.
Not just”express themselves,” but also — and this goes to the ongoing discussion that Greg seems to always miss — but the practice of legally using the ladders of abstraction (remembering that the legal document not only looks AT the inventor’s inputs, but is ALSO concerned with the full future timeframe of protection. Inventors also may tend to think of a patent right as some “physical thing,” as opposed to its true nature of a negative right.
Agreed to all of that, Night. But does not any half-competent drafting patent attorney ask the inventors a stream of “what if….” questions to tease out of the inventors (the party for whom the patent attorney is working) what elements are essential for realising the invention and which are merely desirable, preferred or optional? Which category does “magnetic” fall into, for example.
Or does the patent attorney know all that, would you say, without needing to ask?
Or perhaps it depends on the subject matter. A water-borne grill platform is one thing. Something like, say a catheter to deliver a cardio-vascular stent might be different, an area where the inventors can answer “what if” questions with more assurance than can the attorney.
The great legal answer: “It depends.”
The underlying answer is a rather dull, but also “Motherhood and Apple Pie” type of thing: It is the interaction between the technical and the legal that yields the ‘best result.’
I would be remiss were I not to also add here that the Gold Standard is to advise the client to spend as much as they deem worthy to run a (non-Patent Office) prior art search so as to best inform the writing of an application.
I would also be remiss were I not to remind the general readers that such is always the call of the client, and client’s have a spectrum of reasons to engage in a spectrum of such activity (including — by some very large entities, a prohibition against any effort to conduct a prior art search).
Cheaper filing fees for micro-entities is unleashed Marxism and also an example of illegal affirmative action. ONE FEE FOR ALL. Freedom is just another word for you infringed me.
I suppose that is Malcolm’s attempt at humor.
The company appears to be defunct, there’s no evidence it ever made any significant amount of money, I can find no competing products to suggest there’s a market for infringement litigation, and even if they’d succeeded in removing the magnetic-attachment requirement, the claims would be easily designed around since they include other superfluous limitations like left and right (vs. front and back), u-shaped (vs. solid) supports, and a cup holder in a square platform. So what was the point of this hopeless legal exercise and why would anyone fund it?
What did I miss?
The point is “you get what you pay for” and “stay away from Invent Help.”
See the comments at: link to ipwatchdog.com
Say more. They filled a pointless broadening reissue and pursued this appeal to show that you get what you pay for?
Definitely — read more in the links provided and as provided by others below.
No. Because you’re missing the point entirely. I’m not asking what lesson you’d like us to learn from this ordeal. I’m asking what was the purpose of filling, and spending money fighting for, an amendment that wouldn’t ensnare any current infringers nor make it any harder to design around the useless claim. Someone knows why the company really wanted to remove the “magnetic” limitation, and I’d like to hear the reason.
You are trying too hard to delve into why THEY wanted something, whereas I offered a lessons learned – and that lesson is available regardless of what THEY may have been aiming for.
I am not in a position to delve into THEIR minds to give you the answer that you want, and frankly, the lessons learned offered is more valuable than what you seem to be aiming for.
You don’t have to keep replying just to say you don’t know the answer to my question.
I am not doing that – I am pointing out what I offered from the beginning is far better than what you want to aim your question towards.
> In its decision, the Federal Circuit rejected their
> reissue patent claims on what is clearly a
> technicality and one that is extremely biased
> toward those who spend more on patent
> prosecution
What you call a “technicality” that is “extremely biased,” was really just following longstanding and controlling precedent. Not the type of charged and result-oriented language befitting of a law professor.
Admittedly, one could certainly make a principled argument that, given how much more prevalent continuation practice is today than it was in 1942, the holding in U.S. Industrial Chemicals does not make much sense and should be reexamined. You could certainly make that argument that “the invention” in Section 251 should be interpreted consistently with written description under Section 112. But the decision to overrule U.S. Industrial Chemicals is one for the Supreme Court, not the Federal Circuit. It’s somewhat ironic to criticize the Federal Circuit for actually acknowledging and adhering to established Supreme Court precedent, something they’ve repeatedly (and justifiably) been criticized for not doing in the past.
Someone downthread writes: “You likely have invented more than you realize.”
This is nonsense.
Agreed. Now that the USA has joined the rest of the world, in having a First to File patent system, the invention is what the patent application declares it to be, in the patent application as filed. No more, no less.
That declaration is made on the filing date of the patent application. That is a date LATER than i) the date of conception ii) the date of reduction to practice iii) the date the drafting patent attorney commissions a patentability search iv) the date the patent attorney assesses the inventor’s subjective idea what they invented v) the date the attorney compared the inventor’s conception with the prior art and vi) the date the patent attorney scrivened a claim confined to subject matter that is arguably non-obvious over the prior art brought to light by the patentability search.
So the notion that one has invented “more” than one “realized” one had invented is, indeed, illusionary.
You have misunderstood BOTH what the original writer wrote AND what Malcolm whines about MaxDrei.
“a technicality and one that is extremely biased toward those who spend more on patent prosecution”
The patent system is run by patent attorneys for patent attorneys.
says the examiner “examining” for examiners….
The patent system is run by patent attorneys for patent attorneys.
An interesting comment that lacks a certain … how should I say … factual support.
My guess is that the number of patent attorneys at the District Court level is probably less than 1%. Although I could figure it out (I won’t spend the time), my guess is less than half the Judges on the Federal Circuit are qualified to sit for the Patent Bar. The Supreme Court has no one even remotely qualified to sit for the Patent Bar. The patent laws are voted upon a Congress that maybe has a handful of people who could be qualified to be patent attorneys.
As for the USPTO, the vast majority of the people examining are not patent attorneys.
So please explain how the patent system is run by patent attorneys for patent attorneys?
This is a very good point.
I think that what Ben really meant was that the patent examination system is run by patent attorneys, for patent attorneys. As far as that goes, he is basically correct. While you are correct that “the vast majority of the people examining are not patent attorneys,” in common parlance we speak of management as the ones who “run” an organization, and by definition the examiner corps are not management. The senior management of the USPTO is almost entirely staffed by patent attorneys, including the absolute top job. Therefore, it is not wrong to say that patent attorneys “run” the USPTO.
That is just the examination side of the patent system, however, which is really the less important half of the system. The enforcement side of the system is ultimately more important to the actual success of the system, and it has (as you rightly note) hardly any patent attorneys at all. I doubt that even 1% of the Art. III judges would have described themselves as a “patent attorney” prior to their elevation to the bench.
Greg – as usual – is nothing but nonsense on stilts.
Even if one were to ign0re Ben’s intended slight, Greg’s defense is ultra-slipshod.
And that’s even for the “half-measure” that Greg chooses to defend.
First, the more critical portion of FOR patent attorneys has no bearing to reality and Greg is entirely silent on that point.
Second, the large majority of those (expressly) running the Office are not in fact patent attorneys, and even the head lady is not a currently active patent attorney. Were she to be, there would be a clear ethical conflict of interest.
Bottom line is that Ben — as usual — is deep into the weeds, and for whatever odd reason, Greg is keen on joining him.
… what’s funnier than Greg’s OMB-TDS Drum obsession are the comments to Greg’s OMB-TDS Drum obsession.
I’ll get back to you once you get back from explaining to the employees at your local McDonalds how they run they McDonalds corporation because the vast majority of the people flipping burgers are not corporate executives.
That just does not make sense, Ben.
It was your (rather silly) assertion to begin with. Wt did you a(n undeserved) kindness in guiding you to seeing your error.
Six of the 12 active judges have a technological background. Only two of those seem to have more than a few years on the prosecution side.
The patent attorney who wrote the patent application on the Float ‘N’ Grill product, Tarley G. Stevenson, had only two years of experience at the time she filed the application for her clients. She was apparently not being supervised by an experienced patent attorney.
Ms. Stevenson received many referrals from InventHelp, and apparently charged sub-standard legal fees for preparing and prosecuting the patent application on the Float ‘N’ Grill invention. She was later excluded from practice before the USPTO based on a pattern of gross misconduct before the Office in a formal decision dated December 13, 2019. Ms. Stevenson was also suspended from the practice of law by the State of New York.
Note that the BACKGROUND OF THE INVENTION section of the patent application largely mirrors Claim 1. The examiner could have rejected Claim 1 of the patent application for lack of novelty and/or obviousness over applicants’ admitted prior art (AAPA).
The inventors of the Float ‘N’ Grill product learned the hard way that the old adage that “you get what you pay for” applies to legal services. Kudos to the USPTO for preventing this patent attorney from harming even more inventors.
Hilarious and also utterly predictable. Thank you for sharing the info! Reminds me of the Snail Halling story.
My own version of the Float n Girl uses a mixture of cookie dough and raw hamburger to attach the grill to the floaters. This provides two advantages over the prior art: it’s a source of emergency food, and will also serve as a protective distraction (or warning) in the event that the waters are infested with piranha.
“She was later excluded from practice before the USPTO based on a pattern of gross misconduct before the Office in a formal decision dated December 13, 2019. ”
That would explain when I found her name and reg. no. in the ADS in the prosecution history and attempted to look it up, it came back as “No records found”.
Personally, I think the names of “disbarred” patent attorneys should remain in the register, along with a link to their disciplinary decision.
By the way, the patent was granted as a first action allowance. The inventors must have thought they had the best patent attorney in the world, and could not understand why so many people had told them that getting a patent is hard.
Enjoy the vacation! I hope the weather is decent. August in the Midwest can be brutal.
“In its decision, the Federal Circuit rejected their reissue patent claims on what is clearly a technicality and one that is extremely biased toward those who spend more on patent prosecution.”
Excuse me? They decided to tackle this on their own rather than engage competent counsel, and they lost. Bummer for them, but unsurprising. “Rule of law” means we’re all subject to the same legal regimen. The fact that they didn’t engage counsel, for whatever reason, is irrelevant. They don’t get do-over that rich people wouldn’t be entitled to. Had they used their noggins just a little bit, they could have thought of, and described in their patent application, other ways of attaching the the grill. But they didn’t do it.
I suppose that next you’re going to be telling us that there should be a different set of patent laws for people with high melanin content skin (just like in some big cities you only get charged with crimes if you’re light-skinned)?
“I suppose that next you’re going to be telling us that there should be a different set…”
“next” is the wrong word, as one can easily see from the (comment-blocked) virtue-signaling series on Equity (the infection is present and demandssuch things as racyism (in the thin veneer of ‘anti-racyism’).
They decided to tackle this on their own rather than engage competent counsel, and they lost. Bummer for them, but unsurprising. “Rule of law” means we’re all subject to the same legal regimen.
+1
The Kool-Aid is strong in Chait (and of course, Greg is simply addicted ==> the ending “ in [“Rule of law”]
Unsurprising…?
Certainly.
Greg I believe you had posted a link to an article stating that cali had somehow miraculously got back to the same numbers of minorities in their admissions without AA or outright discrimination (banned by cali voters). Turns out that the equity fix is in. I’m so glad bro.
link to youtube.com
Nope 6, not Greg (hint: me).
That is correct. I linked to a Noah Smith article that contained a chart showing that the racial make-up of the UCLA incoming class was only temporarily affected by the passage of Prop 209 in 1998.
As usual, your idiosyncratic argot has left me with no clear sense of the point that you are trying to make now. I suspect that you are capable of writing in actual English, so if you care to clarify, I would be interested to read your response.
“I suspect that you are capable of writing in actual English, so if you care to clarify, I would be interested to read your response.”
Just that the equity fix is in, comrade. I was wondering how they made it so that the numbers magically got back to where they were.
They boosted the number of accepts by ditching math reqs, and likely pulling other little levers (which we/I don’t know about right now) that will totally never come back to bite anyone in the behind ever. You can, as we saw, literally ban lef toids from raci sm, and they’ll just go right back to raci sm in different ways.
And fyi, another candidate informs people what the US’s interests are in Ukraine (fighting russians with ukranians).
link to youtube.com
>“Rule of law” means we’re all subject to the same legal regimen.
I think you’re missing the point. A rule can be “uniform” and still favor big players in practice (or just plain be stupid).
Now, I’ll admit I’m a bit biased in favor of the common man. These two, in particular, were obviously working on a shoestring budget (e.g., the horrible shirts and the ‘lack of inventory’ issues mentioned on the show) and $10K+ up-front is a lot for someone like that.
I was told they used InventHelp which is a scam. Nevertheless, the Professor’s point remains valid. Even spending tens of thousands of dollars with capable attorneys yields patents that are vulnerable to nin-infringement and invalidation. I disagree with Atari man’s assertion that we have a “rule-of-law” patent system. Rather, we have a Kafkaesque patent system that can only be navigated with immense wealth and political influence.
While this case it seems fair to “blame the inventor”, the analysis and outcome is indistinguishable thousands of other competently prosecuted patents that failed to secure exclusive right to the invention.
There are lots of “gotchas” in many areas of law, and that’s why people hire specialists to represent them. And the particular issue here is hardly a “gotcha”: if you don’t describe something in your application, you’re not entitled to protection on it. That’s part of patent law 101, and it’s not unique to the USA. This can be found out with some googling. If you’re going to represent yourself, then you need to invest the time in finding things out.
In this case, the inventors decided to represent themselves, and they missed the part about the patent application needing to describe variations in the implementation. That stinks for them. But there’s nothing discriminatory in patent law about that, and Dennis’ implicit suggestion that the relevant statutory requirements and judicial doctrines should be bent to help these inventors because they didn’t have money is absurd.
The fact that the US patent system requires applicants to spend lots of $$ to get a patent and then many times that to find out, in court or before PTAB, that the patent is worthless, is p@thetic and lamentable. But that’s where we’re at.
As with many things in life, if you have money, it makes things easier. But the patent statute, rules and judicial doctrines don’t discriminate between rich and poor.
“In this case, the inventors decided to represent themselves,”
Not in their efforts to obtain the patent – and (as noted) – they obtained a first action allowance.
Otherwise, I tend to agree with you, albeit the US Patent system was built to be an exception to the general rule that ‘mo money/ makes things ‘mo easier.’
Atari Man: are you tripping? Just total nonsense. Any attorney worth his or her salt will tell you that to get justice in our legal system that you need money.
And therefore there should be different legal standards for people of different incomes? Nope.
Money always helps. Duh. But the legal rules are the same across the board.
I agree with AM.
+1 to Josh.
Interesting choice of words in this piece from the good professor. My eye was particularly caught by the comment that boilerplate would have made a decisive difference to the outcome. No wonder then, that the cases I receive from the USA for filing at the EPO are so lengthy, full of padding which helps the case in Europe not at all but no doubt impresses the client in the USA that the law firm has done a fine job drafting the patent application.
When are the US courts going to start signalling that all the boilerplate in the world is not going to make any decisive difference to the outcome?
Off thread but do we have here a thread on the recent Novartis case reported recently on the Watchdog blog. Enablement vs WD, for a complex of two heart drugs working together? I ask because that looks to me like another example of the courts making patent law more complicated rather than simplifying it.
Definitely an “interesting” word choice, but not necessarily “full of padding”. Small solo inventors that I have worked with are often so focused on their invention that they don’t consider easy ways to design around their invention. While it helps them from the invention perspective, it may be an impediment from the business perspective. Although the Doctrine of Equivalents is one possible way to preclude copycats, a good patent attorney will consider those design around possibilities and draft the application accordingly. It can look like padding in some cases (and it definitely can be in some instances), it can also be what saves the day in the end.
Well yes, indeed. What is the core purpose of a patent? To claim your own product or to write a claim that covers any conceivable design around, a claim directed to the underlying inventive concept which is inevitably exhibited by any competitive “design around”.
The inventor supposes the former while the patent attorney ought to be focussed on the latter. With a specification that fully supports the full width of that useful claim.
By “padding” I meant something else entirely, namely padding, verbosity, repetition, fluff, verbal diarrhea, boilerplate. i imagine an AI could generate as much of it as you think appropriate to include in your specification.
Yes, that.
My fellow independent inventors, follow David’s excellent advice.
Do not be myopic about just what your invention is / can encompass.
You likely have invented more than you realize.
And unless you want to find yourself in the same deep hole as these two inventors, do not utilize those invention promotion firms you see advertised on TV and other media . . . or patent attorneys or patent agents who are willing to write and prosecute your patent application for less than $5,000 – 10,000.
DO NOT.
“When are the US courts going to start signalling that all the boilerplate in the world is not going to make any decisive difference to the outcome?”
That’s not the correct question to be asking, and in fact signals that you really do not understand what ‘boilerplate’ is for.
Good attorneys recognize that some boilerplate is not only ‘good,’ but proper and serves excellent functions.
Were it not so, it would have expired L O N G ago.
It is true that ‘boilerplate’ can be inexpertly and even inappropriately wielded.
But to jump from that happenstance to denigrating it full-scale is nothing but f00lish.
I’m curious what is the “some” boilerplate that is good and proper to include in a patent specification where it will serve excellent functions.
When we discussed patent “thickets” it turned out that I was labouring under the misapprehension that the patents in the thicket need not all be under the same ownership. So now, with “boilerplate” let’s first find out if we are thinking of the same thing.
With your “some”, I wonder, do you have in mind nondescript text, intended to be catch-all, but text that is nevertheless individual and specific to the invention being described? Is this “boilerplate”? I would have said not.
Or do you mean standard sentences and paragraphs of text that is not specific to the particular invention, that one injects into the document once you have finished describing the particular subject matter of the set of claims you have written?
I also wonder what these excellent functions are, that you have in mind. Mark Twain apologized for writing long specifications, pleading that he not enough time to write them shorter. I imgine that I am not alone, in finding many patent specifications written in the USA insufferably verbose, grossly detrimental to their proper function. It is up to the courts to put a stop to it, to influence drafting for the better, but as we see, they are incompetent to perform that good, proper and excellent public service function.
“I’m curious what is the “some” boilerplate that is good and proper to include in a patent specification where it will serve excellent functions.”
And
“I also wonder what these excellent functions are, that you have in mind. ”
Very fact specific – that you are asking indicates to me that you do ZERO drafting (and not just applications).
The short answer is that boilerplate reaches to items that transcend any ONE particular (in this case) application. If – for example – you draft in the computing arts, then you likely have boilerplate sections that largely (but not entirely) assist you with enablement aspects.
Other types of things may transcend specific arts. For example, in the US (as opposed to your notions of ‘generalized combinations,’ or whatever term it was that you use), it is common boilerplate to be able to use a very “mix and match” approach to described elements – one need not have a painstaking description of every permutation of combination of elements when a boilerplate directive will suffice.
“With your “some”, I wonder, do you have in mind nondescript text, intended to be catch-all, but text that is nevertheless individual and specific to the invention being described? Is this “boilerplate”? I would have said not.”
I have nothing “nondescript” in mind, and do not understand your choice of that word. As to “catch-all,” there are certain (very much) ‘descript’ phrasings that can apply, depending of course on what you are attempting to catch.
The very notion of text “individual and specific to the invention being described” is the opposite of boilerplate – pretty much under ANY definition of that word.
“… that one injects into the document once you have finished describing the particular subject matter of the set of claims you have written?”
Timing is just not that critical. In fact, I prefer to START with a template, boilerplate language keyed such that I can revisit later and tweek as necessary.
Part (and parcel) of effective use of boilerplate is to NEVER presume that ANY boilerplate can be used for EVERY situation. One simply must verify all use.
“Mark Twain apologized for writing long specifications, pleading that he not enough time to write them shorter. I imgine that I am not alone, in finding many patent specifications written in the USA insufferably verbose, grossly detrimental to their proper function.”
While I definitely chuckled at the Mark Twain quote (having used that myself), your assertion of “grossly detrimental” is one that makes me question what YOU think to be ‘proper function.” With proper inoculation (yes, with certain boilerplate), any such problems of verbosity are easily mitigated, and it is OFTEN better to have too much rather than too little.
“It is up to the courts to put a stop to it, to influence drafting for the better, but as we see, they are incompetent to perform that good, proper and excellent public service function.”
Well I will definitely callout B$ on your view of a duty of the court. There is NO SUCH nanny-like ‘this is too verbose and could be drafted better’ PER SE legal function of the courts – and your supposition of one is most suspect.
Well, anon, thanks for taking so much time to answer.
If you jump up to item 12, from NW, you will see my comment in reply. Looking at the patent in suit here, I’m not yet convinced that freighting the specification with reams of boilerplate would have helped the two entrepreneurs much, if at all. What a pity that they failed to grasp what is the very purpose of a patent, before they started to write it.
“not yet convinced that freighting the specification with reams of boilerplate would have helped”
Can you really be that dense?
Nowhere have I indicated any such “stuff with reams” notion.
Exactly the opposite has been my stance.
Not you, anon. I had in mind Dennis. See his:……Patent holders with more money would drafted a more “lawyerly” initial patent application that included wiggle room boilerplate statements……..
In the meantime, having scrolled through another blog, I see that the floating grill specification was written not by the inventors themselves but by a registered US patent attorney. Scandalous, no?
How does a private inventor find a trustworthy patent attorney that doesn’t charge an arm and a leg for writing an over-blown specification that still doesn’t do a competent job of sorting out those elements that are essential to the invention from those elements that are not? Over here, there are stats on the performance of every individual EPO Examiner and every EPO attorney. Are there any such public stats available for the USPTO, I wonder.
You don’t have to go anywhere else – post 6 here captures the background well.
That being said, you continue to write oddly, “force-fitting” a narrative not in evidence with phrasing like, “ for writing an over-blown specification”
If anything, the suggestions hew to a vastly UNDER-blown writing (the type of thing that Inventhelp leans towards – and why the lesson-learned of “you get what you pay for” is so apt.
[T]he Federal Circuit rejected their reissue patent claims on what is clearly a technicality…
If you think that this is a “technicality,” it is a good thing that you do not practice in wills & trusts. Your hair would curl at the sort of “technicalities” that decide cases there.
… and one that is extremely biased toward those who spend more on patent prosecution.
Does §103 reflect a “bias” against people whose inventive outputs are obvious relative to the state of the art at the time of filing? Does the first-sale doctrine reflect a “bias” against patentees whose inventions have active secondary markets?