Indecipherable Patents

The June 2005 Corporate Legal Times includes an interesting roundtable discussion on patent reform.  The participants were all in-house patent counsel.  In the discussion, Richard Rodrick of S.C. Johnson raised an issue that has not been touched by any of the proposed patent reforms.

You can write a patent application today that is almost indecipherable, and you’ve got a good chance of getting it out of the patent office with a patent. 

Anyone who regularly reads patent documents knows that Rodrick is right on the money.  Should the Patent Office be issuing more rejections based on a lack of clarity in the specification based on the requirements of Section 112?

LINKS:

• Kim Weatherall provides an Aussie Academic perspective
• Corporate Legal Times
• Phil Mann’s straight talk
• Peter Zura on the topic

• 35 U.S.C. §112. Specification: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

Comments

[Anonymous]

That would be nice, but it won't happen because examiners would actually have to begin reading specifications.

[Occam's Beard]

Absolutely.

An outbreak of common sense. Judgement Day must be nigh.

[Jay]

"That would be nice, but it won't happen because examiners would actually have to begin reading specifications."

And examiners might be able to pay closer attention to the specifications if they were clear and well written. Sounds like a Catch-22 to me. It's easy to give the PTO a hard time, but I for one certainly wouldn't want their job.

Besides, if you can't write a clear and concise explanation of something, you shouldn't be charging $200+/hr to do it.

[Dennis Crouch]

One problem is that there are be some strategic reasons to intentionally draft confusing patent specifications. Of course, if that intent was ever revealed in court there would be a charge of inequitable conduct.

[Dennis Crouch]

I agree with Jay that patent examiners (and even the PTO) should not receive the brunt of the blame for this issue.

[Steve]

One of the big reasons ndecipherable patents are written is because the author believes that the only people who need to understand it is one of ordinary skill in the art. However, as any patent litigator will tell you, the people who really need to understand it are the judge and jury. If they can't at least grasp the basic concepts of the invention, then you're fighting with one hand tied behind your back.

[Dennis Crouch]

Great comment Steve. Even if a patent is only sought for "defensive" purposes, its value is directly linked to whether the patent will stand-up in litigation. One problem with many attorneys/agents handling patent prosecution is that they overly focus on getting the patent allowed without worrying about the future value in litigation.

[Arnold Yeonyong Chung]

Most examiner used to write on Office Action as unclearify for clause 112 just like Korea.
According to Pleading in court, clear specification is really more important.

Y.Chung IP and Law firm
in Korea

http://www.brandtop.com

[justsomeguy]

One problem is the level of skill in some arts is very high, and it does require a Ph.D. to understand it, and since most litgation lawyers lack this background...what is confusing to some makes perfect sense to others.

[anon]

Justsomeguy is on to something here. There are many many scientific articles lack the same general comprehensability.

[Dave Metzger]

I find this comment interesting in the context of at least one of the patent law "reforms" being considered. As I understand it, there is a constituency that would like to get rid of the best mode requirement. Yet that very requirement does help ensure that specifications include a description of something more specific than merely an enabling embodiment. I hope Rodrick is among those opposing the removal of this requirement in our patent law.

[joe]

I hope the PTO begins to focus more on the written description and to reject unclear and ambiguous specifications. Too many patentees/practioners draft applications so unclear and so general that they are only tangentially related to the actual created invention. There appears to be a concentrated effort to obfuscate the actual invention in hopes of "hitting the lottery" by capturing an alleged infringer who is actually miles off the mark of the original invention. Foreign patent offices do a much better job of narrowing both the claims and the disclosure to the actual physical or reduced-to-practice invention.

[Dave Metzger]

Joe:

What you notice is a difference between the example based system and the claims based system of defining the "invention."

What I think really is happening is that with our claims based system, we want a specification that can be expanded to cover the full invention, which might not be fully appreciated at the time of the filing of the application. Hindsight is 20/20, and to provide for the equity of not having hindsight when filing the application, our system allows for the Doctrine of Equivalents and encourages specifications that support same.

[John]

I'm not sure any system that doesn't place the burden and price on the drafters, or whomever pays the drafters, can improve the overall clarity of the specification.

An Examiner rejection for lack of clarity would be difficult to respond to without the risk of opening oneself up to adding subject matter after filing.

Ultimately the burden is on the court system, if litigated, to place a penalty on lack of clarity.

And if not litigated, the burden is on the practicioners to file 501 citations and instigate re-examinations to place a price on lack of clarity.

Ultimately I would like to see a period during which the public can provide comments and provide prior art references concerning the patentability of the published application, in a similar format as a brief, within 6 months of publication of a pending patent application. Where during this period the Examiner has to reconsider the application inlight of the submitted matter.

John

[Jim]

As an Examiner, I will note that we're more concerned with examining the claims. If the claims are understood, we will search and make the appropriate rejections, and scan the Specification to clarify any ambiguities, or confirm a claim amendment does not comprise new matter. In some arts, especially mechanical, there is little that can't be understood of the invention, just from reading the claims, assuming the Attorney has claimed all major features of the invention, and from scanning the Specification. If provided more time, Examiners could actually read the entire Specification, and make all applicable 112 rejections, just like examining the claims with respect to 102/103. But until that happens, most Examiners will use their extra time to search for Prior Art, instead of checking the specification for statutory compliance.

[Mike Trettel]

As another examiner, I will second what Jim has said. I am not given sufficient time to prepare a deluxe examination-as I have repeatedly told my SPE:"Good, fast, or cheap-you get to pick two." I also find it curious that some people are quick to blame the examiners and/or the PTO for this problem, when it's the agents and attornies who write the specifications up. I know that when I have made a 112 rejection/objection to an application specification, the attorney will fight me to the death over it. Dealing with this burns up time-and that's one thing I don't have a lot of when I'm examining an application. So, I read the specification, note any glaring editorial/typographical problems, point them out in the first action, and deal with it as best I can. I will make a 112 rejection based upon a confusing spec if needed, but it's not going to happen simply because the language is obtuse and/or mangles the English language.

[Joe]

I agree with the Examiners that posted comments that a fundamental problem in the examination process is a lack of resources (i.e., time) dedicated to providing a quality examination of the patent application. Any patent reforms will fall short until this fundamental issue is addressed. Applicants will continue to get short shrift of their inventions, Examiners will be forced to do a halfway examination, and the courts will continue to be ad-hoc examination arbiters of validity and obviousness until the PTO is able to provide a quality examination to each and every application. It is up to the patent bar to ensure reforms address this issue.