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May 23, 2008


There appears to be a rampant addiction to poor claims drafting, injecting claims with vague language, unnecessary legalese, and unbounded scope. This addiction spirals downward into a vat of confusion during prosecution, and eventually hits rock bottom during litigation as judges try desperately to resuscitate claim meaning. Examiners refuse to help, acting as enablers to this dangerous obsession.

A prosecutor holds the responsibility to draft claims "distinctly claiming the subject matter," staking terms with either definitional support from intrinsic evidence, or plain meaning in context of the claims. More importantly, it is an examiner's responsibility to enforce this requirement.

During claim construction, judges are too often forced to review prosecution history, hunting for clues of applicant intent. Judges shouldn't have to do this. They should instead construe the claims as written, setting aside prosecution history. If the claims drafter made a mistake, too bad.

Unfortunately, under the current system, this may excessively punish the applicant, since they are not entirely to blame. Years of lax §112 ¶2 examination has led to claim language that appears as written by squirrels on acid. Instead of rejecting claims that do not distinctly claim the invention, examiners allow applicants to write a nice little note, explaining the meaning of each squirrelly term, and why the particular terms chosen sneak by the prior art.

But applicant arguments should not replace claim amendments, and examiners shouldn't allow it. Convoluted arguments supplementing shoddy claims cannot replace clear, concise claims.

Examiners must rehabilitate prosecutors, by putting the fear of clear English behind §112 ¶2. Examiners must not allow applicants to supplement their claims with explanation, assuming the prosecution history will be properly interpreted come litigation. Clarity must reign.

Posted by Mr. Platinum at May 23, 2008 9:50 AM | Prosecution


Mr. Platinum:

Could we have an example, please?

Posted by: Kevin E. Noonan at May 23, 2008 5:11 PM

"Clarity must reign". If it doesn't do now, why is that? Look no further than the USPTO file wrapper as an "aid" to claim interpretation. If you sincerly want clarity, then do what Europe does, namely, 1)insist at the PTO that the claim is clear on its face, standing alone, aided ONLY by the specification and drawings of the issued patent, 2) in the courts minimise the use of the PTO wrapper for putting a meaning on the claim and 3) be severe on the enforceability of unclear claims. That way, prosecuting attorneys get into a virtuous habit, and the American public finds, for the first time since long ago, that it can make good sense (unaided by lawyers) of the issued patent. Intelligent, educated, engineer and scientist readers derive directly and unambiguously from the publication of the issued patent, unaided, what the contribution to the art is, and what the scope of the claimed territory is. District court judges will increasingly be able to manage it too.

But all that's happening already, right?

Posted by: MaxDrei at May 23, 2008 11:47 PM


Some examples from recent CAFC cases:
May 22, 2008 - CAFC 2007-1292, -1293, -1294, -1295
May 8, 2008 - CAFC 2007-1334, -1337, -1376
May 8, 2008 - CAFC 2007-1277
May 7, 2008 - CAFC 07-1391

Poor claims drafting led to uncertain claim construction; the judges forced to rely at least in part on prosecution history. Thanks for your interest.

Posted by: Mr. Platinum at May 24, 2008 12:04 PM

Clarity must reign.

In my office clarity reigns. 112 is on speed dial. If there is any question as to if a 112 is needed then it is made, let the app argue, not "explain", if he wants. As to the rest of the corps the only reason 112 isn't used more than it is is because there is a perception that an amendment in response to only a 112 requirement (as opposed to being in re the 102/103 that might have also been applied) cannot be the basis of switching your grounds of rejection and then making the next action final. While this isn't strictly the case, it can be hard for many to see the line between the two situations. And if they cannot then they see 112's as being just a waste of time if they can possibly figure out one interpretation that resembles what is in the spec.

What I believe would help to solve the problem is the courts lessening the reliance on the history and instead smacking them with a 112 straight up at the DC level. Yes it introduces some uncertainty into the system but that is a small price to pay to reform the current drafting practice.

Posted by: e6k at May 25, 2008 3:13 PM

6K thanks but I don't follow your "introduce uncertainty" point. Maybe you mean "Introduce uncertainty whether a patent already issued, and thought to be 112-proof, is now 112-vulnerable". In other words, is it fair on patent holders to change the rules of the validity game, part way through the game? But what about aggregate uncertainty? A small increase in uncertainty for some patent holders is outweighed by an overall increase in the level of certainty, for everybody else. The EPO, which always insists that Applicant "conform" his specification to the allowed claims, would agree.

Posted by: MaxDrei at May 25, 2008 10:29 PM

This is by far the stupidest post ever on this site.

Most examiners already view 112, 2nd paragraph as their personal license to rewrite applicants claims.

When I get rejections under 112, 2nd, my usual response is, "Go pound sand. The claims are perfectly clear."

Shame on you for advocating that examiners make even more silly rejections. We have enough of that already without your nonsense.

Posted by: JD at May 26, 2008 2:35 PM

Sorry to get on my same old bandwagon again, but if we want examiners to "put[] the fear of clear English behind 112/2", the examiners are going to have to themselves be fluent in English.

Words have meaning. Patent prosecution and litigation is all about meanings of words. It is beyond essential that the examiners be highly literate English speakers, readers, and writers. If this requires native-English-speaking only, so be it.

Believe me, I have no business reading much less giving an opinion on patents in any language other than English. I should never be a patent Examiner in China, no matter how much Chinese I study. I wouldn't get the connotations behind the words.

Posted by: pikkumatti at May 27, 2008 6:14 AM

One more thing, claims are written to be understood by those of ordinary skill in the art. The fact that some USDC J who got a BA in Italian Renaissance poetry back in 1973 can't understand the claim is not a reflection on patent prosecutors' ability to write claims.

Posted by: JD at May 27, 2008 6:51 AM

Calm down, boy. Calm down. We all recognize your work as a paragon of lucidity, and that a Markman hearing on your claims wouldn't require 30 minutes of the judge's time, including the time it takes the court reporter to get organized. I believe the comments here were restricted just to the other 25,000 prosecutors.

As I've argued before, and I believe Max agrees, requiring US claims to be written in the 2-part European style would go a long way to improving claim clarity and simplifying construction. Force the applicant to set forth and identify in the claims the matter he thinks is novel, with ample opportunity to narrow if examination proves him to be overly optimistic. The thought of having to make such an admission scares us US prosecutors witless.

After prosecution is completed, or any examination appeals finalized, the file wrapper ought to be burned.

Posted by: Babel Boy at May 27, 2008 8:11 AM

I'll try to remain calm.

I think the two part form will only work if the examiners are working off of D1. EP examiners have no trouble finding and applying D1. U.S. examiners are rarely working off of D1.

Judges definitely need more help in claim construction. Even judges who have technical educations can't be expected to understand and appreciate the nuances of terms of art that exist throughout the spectrum of patentable subject matter.

We should be getting judges that help, not putting the burden on practitioners to write claims for the blacked robe class.

Posted by: JD at May 27, 2008 10:04 AM

Copy you on that last comment, JD. Did you see this line in Hawk's note today on the Cornell litigation:

"A judge experienced with patent cases flew in from Washington, D.C."

I don't think I've ever heard of that being done before. Maybe this is a start of something brilliant. Think of it -- a stable of tech-educated and patent savvy USDC judges or magistrate judges standing by to be flown to any USDC around the country to handle complex patent litigation. They could even parachute in with Barry what's his name singing the Ballad of the Green Berets in the background. (What was his name, anyway? Probably before your time.)

I've been belly-aching for a special IP trial court in each circuit answerable to the CAFC, but this idea seems to me to be better and cheaper. Not sure I'd want Dudas folding the parachutes, tho'.

Sgt. Barry Sadler, that was it.

Posted by: Babel Boy at May 27, 2008 11:24 AM

The EPO is unique in numerous ways. Consider the following:

1. Hardly any EPO Examiners have English as their first language

2. Hardly any litigation, on a patent issued in English by the EPO, is in an English-speaking country

3. Thus, both before and after issue by the EPO, patents in Europe are English but adjudicated by persons using English as a foreign language

4. In Europe, the patent attorney is not an attorney at law but, rather, a person with a science or engineering degree who has subsequently passed extremely difficult examinations in drafting, prosecution and opposition, to qualify as an EPA

5. Patent Office Examiners are also not attorneys at law

6. There is no appeal from any EPO Appeal Board decision to revoke a patent, to any court of law

7. The EPC Art 69 sets a mandatory requirement on courts to balance fair protection for the patent owner with legal certainty for the ublic intimidated by the patent

8. The patent law of Europe is uniquely high in legal certainty.

Posted by: MaxDrei at May 27, 2008 12:50 PM

Unfortunately, there are a few reasons for the decline in the clarity of many claims.

1) Lawyers are trying to make the claims so that they can be litigated to meet whatever the infringer may be doing. The clearer the language, the harder to make the correlation.

2) The courts pushing (at least according to management) the emphasis away from 112, 2. According to what the corps has been told over the last decade is "if you have to read it 10 (or 100) times & can understand it then, there is no 112, 2nd, issue". They say it is from court rulings but never are able to produce "what" rulings. They insist that instead of making 112 to just make a rule 75 objection to the claim. (Not excusing it, just telling what has happened.)

3) The office (upper management) telling us according to 2)

4) Like "pikkumatti" states, English being a 2nd language is a problem. However, it is at least as big a problem with LAWYERS as it is with examiners. There are now a lot of lawyers that do not have English as a 2nd language, so they have many of the same issues that examiners do on this.

5) The quality of the claims initially being submitted has drastically gone down hill over the last decade or so. Due to, in my opinion, the quality of many (not all) lawyers that are writing the claims as well as many (most) foreign applicant's not wanting to pay for the claims to be "cleaned up" at filing & figure that "the examiner will take care of it".

6) Most examiners put more emphasis on finding art than on 112 (partly because of 2 & 3 above, partly because of time).

Just some thoughts. I think that there is plenty of blame on this to go around to everyone.



Posted by: Lazarus Long at May 27, 2008 3:16 PM

LL, thanks. Point (1) on your list is key, and explains the superiority of the US patent machine, in which the patent owner's litigation lawyer is top stakeholder. "The more obscure and uncertain are the metes and bounds, the better are my chances" he cries. In that case, I wonder, why are so many people crying "The US system is broken"? As far as I can see, it's working better than it ever did before.

Posted by: MaxDrei at May 27, 2008 9:49 PM

Roger all that, LL. And especially your expansion of my point about lawyers. I'd add that many lawyers (incl. native English speakers) are hampered both by their inability to write and also by their lack of understanding of the invention that they are writing about.

Mix in someone telling the lawyer to write ambiguous claims because of LL's (1), toss in a dose of unwillingness to amend claims because of Festo-fear, and you end up with issued patents, or a boatload of cases on appeal, with nonsense for claims.

Posted by: pikkumatti at May 28, 2008 6:23 AM

On "ending up with nonsense claims" Pikkumatti (and I agree with your analysis) doesn't the remedy lie fully within the power of the judges? Thus, if the problem remains unremedied (or even gets worse) it is ONLY because the judges are not clear-thinking and public-spirited enough to do something about it.

Posted by: MaxDrei at May 28, 2008 9:58 PM