Friday, February 1, 2013

USPTO and Patent Argot - Clearing the Fog

USPTO is seeking comments on ways to improve the quality of issued patents.  To achieve that goal, the Office is looking at new ways to improve the quality of the application and how the specification supports the claims.

One of the topics on which USPTO is seeking comments is on Clarifying the Meaning of Claim Terms in the Specification:

"The best source for determining the meaning of a claim term is the specification. See Phillips v. AWH Corp., 415 F.3d 1303, 1315-16 (Fed. Cir. 2005). The specification should clearly define the claim language so that the scope of each claim can readily be determined, ensuring the public notice function of the patent claims is best served. In this regard, the USPTO is seeking public comments on advantages and disadvantages of applicants employing the following practices when preparing their patent applications:
1. Indicating whether terms of degree--such as substantially, approximately, about, essentially--have a lay or technical meaning and explaining the scope of such terms.   
2. Including in the specification a glossary of potentially ambiguous, distinctive, and specialized terms used in the specification and/or claims, particularly for inventions related to certain technologies, such as software.  
3. Designating, at the time of filing the application, a default dictionary or dictionaries (e.g., a technical dictionary and a non-technical dictionary) to be used in ascertaining the meaning of the claim terms."

Having spent considerable time dealing with patent argot, patent semantics and the nature of the vocabulary found in patents over time, here is our two cents worth.

1) On Indicating whether terms of degree have lay or technical meaning and explaining the scope of these terms.  

The Patentista, when providing instructions on how to get through an expert witness deposition on a complex software patent infringement case made the point about these kinds of words very clearly - No adjectives and no adverbs.  If the word ends in "ly" don't say it.  And the word the Patentista hated the most was "substantially." Substantially was the patent kiss of death word because it let the honorable opposing counsel narrow the scope of what the claim was (or wasn't).

However, adverbs and adjectives are very helpful in creating patents that stand the test of time enabling the invention to morph to cover different permutations of the invention.  Requiring more clarity within the patent on the terms of degree and their scope, while hard to achieve, is an admirable goal.

2)  On including a glossary.

It would help examiners, applicants, and the regular joes if patents were required to have an explicit glossary of terms preferably right up there with the list of Figures before you get to the detailed description of the invention.  The glossary requirement should also include a requirement for any synonyms that apply.  No synonyms, no expanding the scope of the patent later when something new comes along.  The examiner should be able to add synonyms known to those skilled in the art when the applicant doesn't include them.  So, the "multi-media object" can be a video, a movie, an animated Powerpoint presentation, but not some future walking talking hologram avatar gizmo, unless of course, it meets the definition in the glossary.

This will also speed up the patent litigation process because one of the first thing you do when you start tearing apart a patent is to find all the places where the inventor has defined the terms in the claims or where terms are defined that aren't in the claim.  Having the definitions up front will cut down the building of the glossary when the enforcement action is game on.

On the glossary front, one of Way Better Patents' data wizards dug out all of the definitions of terms found in the body of the US Patent Classification System.  It's organized by class so you can see the way different terms are defined based on the scientific and technical domain in which they are used.  You can read it here.

3) On designating, at the time of filing the application, a default dictionary or dictionaries.

We love old dictionaries (and technical dictionaries) and have been known to troll the used technical book stores to find them.  It's One of the best terms to illustrate how things change over time is to look at the term "mass storage" as in disk drive type storage.  Mass storage circa 1980 was a 600MB removable drive that was stored in a thing that looked like a layer cake carrier.  Today "mass storage" goes into the petabytes and beyond.

We also have all four volumes of the Dictionary of American Regional English in case we need to have all the permutations of the a large sandwich made of a long crusty roll split lengthwise and filled with meat,  cheese, lettuce, tomato, onion and other yummy stuff - hero, grinder, bomber, sub, hoagy, hoagie, po boy.  (Another reason to have synonyms in the glossary.)

While we have been cynical of some of the patent quality initiatives, this one looks reasonable, not overly burdensome to implement, and one that will improve the quality of patents.  Good work USPTO.