Squalls of claim construction confusion
howl in the halls of patent courts. The problem originates with incompetent prosecutors
fond of squirrely claim language, and inventors failing to appreciate that precise language
is essential to breathing life into their inventions.
While prosecutors typically perform the write-up, both in the specification and claim drafting, inventors are not without their share of burden. An inventor must view his claims as more than just legalese to be glanced over,
presuming his hired hand has performed his job well. An inventor must grasp the
critical importance of claim language, and employ his technical expertise to assure that his invention is claimed completely and distinctly.
Failing their presentation from a prosecutor, an inventor must insist on
Besides creativity, discipline and a fluency in English are key ingredients for an inventor to benefit from the
U.S. patent system. Invention is the genesis, not the omega. Great innovation + shoddy claim language that does not adequately bound the invention = a worthless patent.
Claims must be exact, staking terms with either definitional support from intrinsic evidence, or plain meaning in context of the claims.
Patent claims drafting is the highest level of storytelling. Claims must be broad enough to anticipate future infringement, while succinct enough to insure clarity and distinct representation of the invention. A single word
badly chosen or out of place can result in the death of a claim, or even a patent during litigation. One bad term in undifferentiated claims can be a unstoppable bleeding wound.
An inventor's job is made significantly easier by carefully selecting a patent agent. There is no substitute for choosing a disciplined prosecutor with a knack for careful storytelling and a thorough understanding of
how claim construction plays throughout the patent life cycle.
Mr. Platinum is a former patent examiner, and works extensively in both prosecution and litigation. Having such holistic experience with all aspects of patents enables Mr. Platinum to craft Platinum Patents, with enforceable claims.
Posted by Mr. Platinum at May 19, 2008 11:40 PM
Naked self aggrandizement is so tacky.
Posted by: T at May 20, 2008 1:03 AM
I dunno - Hawkie provides a nice service to the patent community by maintaining this blog - hell, you and I don't maintain a blog, and we don't even comment using our real names !!!
I would say that in general these guys know what they are talking about (even if on some existential level we are competitors), and many many many practitioners out there lack very basic skills (and basic knowledge of the technologies in which they draft). Often these less than competent practitioners are, in fact, newbie attorneys at big-law firms that do the "back-end" work (i.e. the real work) which is sold to smaller clients by the partners in the context of a good-ole' bait-and-switch.
I would say that the work of maintaining this Patent Prospector blog gives them the right to toot their own horn every once in a while.
Posted by: anonymousAgent at May 20, 2008 5:16 AM
Makes perfect sense to me.
I'm currently a patent examiner in the computer software arts, and here's a brief summary of the quality of claim drafting that I see in the applications that I examine: pure sh*t.
Want an example? I saw a Claim 1 the other day for a method comprising the steps of reading file #1, reading file #2 and reading file #3. Such a claim is a waste of my time and your client's money.
(I could give you many, more specific, examples from published patent applications. However, I don't want to reveal my identity.)
Your equation above could also be expressed as:
Great innovation + shoddy claim language = NO patent.
Your advice that an inventor MUST closely read, and understand, the claim language before filing an application is DEAD-ON. If an inventor cannot understand Claim 1, then the inventor MUST have Claim 1 written in a way that the inventor can easily understand.
To assist prosecutors/inventors in filing well-written claims, I present the following two questions:
1) With respect to the prior art, what is DIFFERENT about the invention?
2) Is the DIFFERENCE recited in Claim 1 (and every other independent claim)?
Too often, I read applications filed by applicants who have not bothered to answer Question #1. These applicants should be prepared for an extensive, COSTLY prosecution of their applications.
In 99% of the applications that I examine, the answer to Question #2 is "no." Filing such claims makes for a slow start in obtaining a patent.
Free advice to patent attorneys and inventors: determine the NOVEL/UNOBVIOUS FEATURE of the invention, and SPECIFICALLY RECITE the novel/unobvious feature of the invention in EVERY independent claim of the application BEFORE filing the application. Doing this will speed up prosecution of your application exponentially.
More free advice to those patent attorneys who have Japanese clients: find a Japanese/English translator WHOSE FIRST LANGUAGE IS ENGLISH and WHO HAS EXPERIENCE IN WRITING PATENT APPLICATIONS FILED AT THE USPTO. Have this translator do ALL of your Japanese clients' translation work. Insist on it. Do not take "no" for an answer.
Posted by: Boss12 at May 20, 2008 5:31 AM
Boss12 nicely supplements Platinum's gripes. But the real gripe is with the US system, as always.
In Europe the required claim 2-part format is to set forth (essentially) the existing art in the preamble, then the lead-in "characterized by" and then the novel features. Jepson, essentially, using "characterized by" instead of "the improvement comprising".
Why can't Congress, the courts, or the PTO require the 2-part format from the US in order to focus everybody's attention on what the inventor considers to be new? For some reason whenever I've used Jepson claims with US examiners, I got absolute cr*p rejections to the nth degree. I gave up.
You want patent reform? We'll give you patent reform. Change the easy and obvious idiocies first.
Posted by: Babel Boy at May 20, 2008 8:19 AM
Babel - agree 100%. Clarity could be greatly improved with this simple requirement. Some will argue that the Jepson form would be an awkward fit in some instances but Europe has apparently made it work.
The real problem with patent claims is that there is little disincentive to making claims as vague as possible. The goal of the typical prosecutor is not to prepare a claim that is accurate and reasonably commensurate with what the application discloses. It is to obtain allowance of the broadest possible language. Why not? Once it's allowed, the presumption of validity applies, and in the absence of dead-on anticipatory prior art, the claim will have at least some leverage against anyone upon whom it may arguably read. The state of claim construction and invalidity law is such that in many cases the "correct" interpretation of a claim won't be known with any real certainty until the Federal Circuit has ruled on it, and so the resultant cost and risk of litigation give lots of junk claims a nuisance value that is often not insignificant.
I've always felt that the examination system could address this problem by making more liberal use of 112 rejections. In my experience, unduly broad or vague claim language is typically rejected under 103 using unlikely combinations of references that ultimately don't hold up. Examiners - why not just reject unreasonably broad/vague claims under 112 and force the applicant to narrow their claims by amending to use more precise language and/or providing definitions of terms in the prosecution history?
Posted by: ep0non at May 20, 2008 9:21 AM
Just as long as nobody thinks that an EPO c-i-t two part form of claim is in any way comparable to a Jepson, you all should be fine. The admission that the pre-characterizing features of a c-i-t are in the prior art is confined to admission relative to a single prior art source, D1, and no admission that any pre-characterising feature is anywhere else in the art (much less common general knowledge to the target PHOSITA). Thus, a correctly written c-i-t claim is not an admission at all, unlike a Jepson. That transatlantic misunderstanding, BTW, is why Europe favours c-i-t claims, and Americans misguidedly forbid them.
Posted by: MaxDrei at May 20, 2008 11:25 AM
How many patent claims has the CAFC invalidated because they do not comply with 112 2nd Pararagph? Good luck with that one.
Posted by: anon at May 20, 2008 3:43 PM
I run a translation agency serving law firms, with a speciality in patents. I concur with "anonymous" who suggests finding an experienced Japanese>English patent translator and train him or her in your material.
Most translators are freelancers and work through agencies like ours, but if you have enough work to have a direct relationship with the translator, your product will be even better.
The only issue you might face is when high volume or quick deadlines leave the individual unable to satisfy your request.