The Director of the U.S. Patent and Trademark Office has announced that in her zeal to prevent substandard patents from issuing, she will insist on clarity of the record. Every word of every patent will have to be defined. And every word stated in the patent process—in the give and take (or “prosecution”) between applicant and examiner—whether oral or written—will have to be recorded.
This article explains the purpose and effects of the new quality initiative. If you’d like to skip ahead to the take-aways—see my “3 Tips for Patent Applicants” at the end of the article.
The purpose of the new quality initiative is to stop patent owners from going on frolics. The Patent Office means to pin inventors down. In the name of clarity, the Office will require wordiness. All of the words will be recorded. Why? To be used against inventors when they assert their patents against infringers.
In criminal cases, the accused are read their Miranda rights: “You have a right to remain silent.” Not so in patents, where wordiness will be imposed as a prerequisite for the grant of a patent. In criminal cases, suspects are warned, “Everything you say can and will be used against you.” The same warning should be given to patent applicants.
The new quality initiative contradicts the statutory requirement that a patent must must be written in “such full, clear, concise, and exact terms” as to enable a skilled person to practice the invention. 35 USC 112(b). Verbosity is the antonym of conciseness. More words, more definitions, more dialogue, more record—all of this will add up to more confusion, more fodder for sophistry in legal arguments.
Rule of thumb: If your patent claim is longer than your thumb, you’re in trouble!
Again, the statute requires that every patent “shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor … regards as the invention.” 35 USC 112(b). Every patent practitioner knows that shorter claims are usually broader than long claims. This can be stated as a “rule of thumb”: If your claim is longer than your thumb, it is too easy for an infringer to get around it.
Wordiness creates confusion, not clarity
Suppose your claimed invention is an improved TV set that also works with a standard remote control.
Your patent claim might include the word “remote.” Everyone knows what a remote is. Now, try to define “remote.”
Imagine the following dialogue at home, where it might seem silly and trivial, or at the Patent Office, where it would be recorded with formality and consequences:
“Hand me the remote, please.
You know, the TV remote control device.
Yes, television, an electronic system of transmitting transient images of fixed or moving objects together with sound over a wire or through space by apparatus that converts light and sound into electrical waves and reconverts them into visible light rays and audible sound.
Not the entire broadcasting system?
No, here, we just want to control one TV receiving set.
Yes, from a distance.
More than a foot, less than 20.
To direct the actions or function of the TV, that is, to cause it to act or function in a certain way, for example, to change the channel or to modify the volume.
A piece of equipment or a mechanism designed to serve a special purpose or perform a special function.
How does it work?
Infrared—using rays of light that cannot be seen, longer than the rays that produce red light—here, typically having a wavelength of between about 930 and about 950 nanometers.
O.K., here it is—you can have the remote. But don’t think you’re going to get away with anything. I’ve recorded everything you’ve said!”
⇒This dialogue would seem silly at home. But at the Patent Office, it will be required in the name of clarity, and it will be observed with formality and with real consequences.
Patent Office Moves Against Inventors
The Patent Office has enormous power. Its 8,261 examiners can insist that inventors define every word in their patents. Their demands will be met unless and until some brave inventor proves to a federal court that examiners are abusing their discretion.
Henceforth, if any inventor mentions that his or her improved TV set can be controlled with a remote, the examiner will cross-examine the inventor or his or her representative and make a record of it in writing.
So what if everybody knows what a remote is? The Patent Office intends to make sure that inventors will not get away with anything, that big tech companies will be protected from liability for trespassing on inventors’ rights. Again, the Office means to pin inventors down.
This “claim construction” process will be repeated for every word of every claim of every patent, at every stage of proceedings—in the Patent Office, on appeal to the Federal Circuit, again in enforcement proceedings in the district court, and in post-grant review before the Patent Trial and Appeal Board.
There is a place for definitions and for dictionaries. Most of the definitions in the dialogue above come from Merriam-Webster.com. But when the meaning of a word is clear to everyone, there’s no need to resort to a dictionary. So held the Federal Circuit in Phillips v. AWH. Yet disputes over claim construction remain a huge distraction from central issues of validity and infringement.
Big Data to Ensure Rejections
From now on, the Director states that she intends to capture three to five times as much information during patent prosecution alone. The Patent Office already has one of the largest databases in the world. These computer systems will continue to grow, and that will come at a huge cost—in higher fees to be paid by inventors, who are discouraged already by the Patent Office practice of rejecting at least 90% of all patent applications filed, almost regardless of merit. Now there will be even more rejections, based on alleged lack of clarity and insufficient disclosure under 35 USC 112. This will add months of additional delays on top of the years that it already takes to obtain the grant of a patent. It will multiply fees and costs suffered by inventors and their companies. It will add to the backlog of 550,000 unexamined applications pending in the Patent Office.
Any examiner who is caught being easy on applicants will be detected by “Big Data,” which the Director promises to use against examiners and inventors. Examiners who allow worthy patents to issue without a fight will be branded as “outliers” and punished. As the season advances into late autumn, an Orwellian chill is settling over the Patent Office.
It’s easy for government authorities to make things complicated, but they’re not making things better. Instead of advancing the progress of technology by securing to inventors the exclusive rights to their inventions, as envisioned in the Constitution, Art. I, Section 8, Clause 8, the Patent Office is holding inventors down. The Office is raising the barrier to entry into new technical fields. The new insistence on clarity will create a distraction and an encumbrance on patents.
When someone asks for the remote, everyone knows what they mean. It won’t add clarity or improve quality to define one word with 50, or ten words with 500.
3 Tips for Patent Applicants
In the face of the Patent Office crackdown on patent applicants, what’s an applicant to do? Here are 3 tips:
- Prepare your patent application thoroughly, with detailed disclosure, commonly understood words, and well drafted claims, all with a view toward prosecution, survival of post-grant review, and enforcement;
- Expect to negotiate, knowing that everything you say can and will be used against you; and
- Aim for issuance of claims commensurate with the scope of invention.
It is still possible to obtain grant of good patents–you just have to work a little harder to get them issued.
For more on patent claims, see my article, How long should a patent claim be?