Understandable Patents?

Dennis Crouch asks why so many patents seem indecipherable and what can be done about it? Good questions, indeed.

Always willing to speak the truth, however unpleasant it may be, I'm here to provide my answers.

In reality, this is just a variation on the ancient question why supposedly silver-tongued lawyers write in the convoluted, asinine way they do. The answer is, bitter experience demands it.

Consider: You write a simple contract wherein Bob Jones agrees to sell his house and Fred Smith agrees to buy it. All's well until Bob claims that "house" doesn't include the unattached garage -- and the court agrees. (Hmmm, better spell that out clearly next time...) Later, someone else says that "house" and "garage" don't include the tree-house in the back yard -- and again the court agrees. You get the idea. Nothing changes when patents are involved -- prudence and bitter experience suggest you better spell things out in detail.

Until that, too, trips you up.

The dirty little secret of patent prosecution is that clear statements in a patent application are anathema and the clear sign of a rookie drafter. The rules of thumb are legion: "Never use the word 'invention.'" "Never say 'is.'" "Don't call a resistor a resistor -- call it 'an impedance means' instead." The ironic joke is that the language used in patents is supposed to be that of persons "skilled in the art," but I have never once heard a real engineer ask for "an impedance means" or suggest replacing the "active element that preferably, but not necessarily, takes the form of a three-terminal semi-conductor or similar device."

But the real blame for this lies not with patent prosecutors but with a judiciary that, on the one hand, claims it is fully capable of deciding highly technical cases, but on the other refuses to develop the skills needed to do so. As long as courts can be bamboozled into thinking that manganese and magnesium are the same, and that adding 2 plus 3 is somehow completely and materially different from adding 3 plus 2, some lawyers, with the full encouragement of their clients, will continue doing so. And those who have learned the hard way what can happen when they naively assume common sense will prevail, soon learn not to make the same mistake twice. The result is the ineffable twaddle that now passes for the "full, clear, concise, and exact terms" required by law. The courts simply don't require clarity and they punish it when it appears.

On a related subject, why do we still follow the nonsensical rule that a patent claim must be a single sentence? (And yes, I'm aware that it's supposed to be the object of a sentence beginning, "I claim...") Wouldn't it be a lot better for a patentee simply to say in paragraph form, "My invention is this. It includes this. It doesn't include that. It differs from the prior art in that it has this. I consider these to be equivalents."? Why the Patent Office insists on an obscure rule that probably stopped making sense shortly after it was adopted has always left me baffled.

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Steve - June 3, 2005 2:56 AM

Phil:

Great blog and very insightful comments about patent spec writing. You are probably the most experienced patent litigator in the blogosphere, so let me ask you this question: What in your opinion is the easiest type of patent to litigate (as plaintiff counsel). Is it one whose technical content has been "dumbed down" so as to be readily understandable to the average judge and juror? Or is it one that is written in the manner you describe in your post (with highly dense legalese)? Or is there another type that I haven't considered? I'd be very interested in hearing your comments - I'm always looking for new ways to improve my writing and giving the client a first-rate product.

Phil Mann - June 3, 2005 8:21 AM

Steve, many thanks for the kind comments.

Personally, I prefer understandable patents for one simple reason: it's easier to evaluate the real merits of a case that way. Also, juries seem to prefer understandable patents as well. (It is, of course, possible to win before a jury with a densely written, indecipherable patent, but even there you have to distill the key concepts down to clear, understandable ideas.) The problem is that clear language in a patent is much more likely to keep you from getting to a jury in the first place and is much more likely to have your victory overturned on appeal when the case gets to the CAFC. The obfuscation in most patents comes not because the drafters can't write clearly, but because they are trying to avoid the latest trap set by the CAFC and Supreme Court.

My personal view -- and others may well disagree -- is to try to write the spec and claims as clearly as possible, and then include enough "weasel word" boilerplate to give you at least some argument that you shouldn't be held strictly to what you have said. It's admittedly an imperfect solution to what may indeed be an unsolvable problem.

This is an interesting topic and other views are, of course, welcome.

Thanks again,

Phil

Russ Krajec - June 4, 2005 8:39 AM

Phil, I really enjoy your views on patent litigation and read your blog regularly.

One of the biggest reasons why patent drafters do not write comprehendable applications is because they have only a cursory understanding of the technology.

The patent drafter is asked to draft a document explaining the most advanced technology at that time. The attorney does so with an hour or two interview from an expert who assumes the attorney has a technical knowledge at least as vast as his own. To do a complete job, the attorney must understand the technology more thoroughly and with a better perspective than the inventor, who is by definition the most advanced person in the field.

From this perspective, it is easy to understand why some patent applications are very vague and nearly incomprehensible. The attorney, who often has never worked in the field, has only a cursory knowledge of the technology, and has only a few short hours to spend writing the application.

Drafting a clear, concise patent application is one of the most difficult tasks in the legal field. It is much more easy (and lazy) to write a cluttered and confusing application that uses all the buzzwords but doesn't paint a clear picture.

Richard A. Holub - June 4, 2005 9:39 AM

The exchanges are interesting. I suspect that quite a few indecipherable patents are so because they are not meant to be enforced or litigated but because they are meant to put some "buzzwords" together so as to constitute "prior art" for later applicants who might actually have an invention. In other words, the disclosure is meant to serve the purpose that articles in corporate technical journals sometimes serve, namely, to produce a defensive disclosure in an area where the corporation may not want to expend all the resources needed to secure protection while reducing corporate vulnerability to an outsider who does seek patent protection. Consider the matter from the perspective of responding to a rejection during prosecution:It is my understanding (I'm an inventor) that the arguments "It couldn't work" (i.e., there are intrinsic contradictions) or "It's not enabling", etc. are not generally"winning" arguments in a reply. One result may be that an applicant who is providing a substantive contribution to the public understanding in a technical area may have to settle for narrower claims (poorer protection) than (s)he should have to.

Phil Mann - June 8, 2005 8:36 PM

Touch?ゥ, Goon. The Federal Circuit never said that. It was the Supreme Court in Graver Tank. And they didn't say manganese and magnesium were "the same," as you astutely observed, they said they were equivalent -- despite one being an alkaline earth metal (which the claim actually specified) and the other not.

(Well, they didn't exactly "say" that either. They more-or-less found that "'in the sense of the patent' manganese could be included as an alkaline earth metal" -- even though it isn't. Guess I'm just going to have to split more hairs and be more careful in my writing from now on...)

SRC - June 14, 2005 12:46 PM

Great post, Phil.

I would dispute the characterization above of a comprehensible application as one that is "dumbed down." It's actually harder to write something comprehensible than to write the convoluted stream of consciousness rubbish that one encounters only too frequently. I try to write applications as clearly and compellingly as possible for several reasons.

First, I'm compulsive about decent writing. I admit it.

Second, well-written applications often cruise through prosecution, even with broad claims. I don't waste time correcting the examiner's misapprehensions, because they rarely arise (and if they do, I consider that to be my fault). I also don't generally encounter (e.g., in examiner interviews) the typical wariness of an examiner who's trying to figure out whether he's being conned. He's not, and he knows it. The argument is clearly set out in the case.

Third, while I'm not a litigator, if I were I'd rather argue from a clearly written case that the judge and jury both had a hope of understanding for themselves. I'd have thought that an impenetrable case would be more problematic, because it would tend to throw the decision to whichever side's expert witnesses were more credible, and that's unknowable until trial.

So my question is...am I being na?リve?

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