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Introductory Note: Welcome back to “Gear Grinder with Danny Rooney.” We aim to bring this series to you on the first and third Thursdays of the month. Here are our previous installments: #1, #2, #3, #4, and #5. Previously, my cousin Stevie filled in. This post is based on a fictitious character, and readers should be aware of the underlying snark and sarcasm. Just think of it as a way to have fun and let loose with some frustrations with life as a patent professional. We know you can relate!
While I wait for the inevitable backlash from my friends who support Chelsea and Arsenal, and the blank stare from my American comrades that don’t know what I am talking about, some things this weekend got me thinking about some obvious mistakes that are made all the time in the patent realm. There are some mistakes made on patent applications that are simply avoidable and I’ll share five juicy ones with you today, if you read on…
Today is one of those weird days filled with both excitement and disappointment. If you’ve been following the column, you know Danny (yes, I referred to myself in the third person) is a footie fan, and especially of my fifth cousin Wayne’s team, who advanced to the Champion’s League final. This was thanks to a brace by the goal-less wonder, Anderson. Man U failed to get it done in the league, especially after its main title rival won on two goals that were not, including one by good old Fat Frank. Even my third uncle Andy, who has disappeared from the face of the planet, would have a good grumble about those goals. Even my cousin Stevie had a look at goal-line technology. On to the patent application mistakes that raise my hackles…
One of my goals is to constantly increase my knowledge of the patent universe. There are many specialized areas of patent knowledge, but they are all interconnected. Knowing a little about every area makes you that much more effective in your own specialized area because you can see things from different perspectives. I decided to take a ride on the USPTO rocket ship known as PAIR, and see what some of the most common clerical mistakes are in applications filed with the USPTO. Much like the assistant referee incorrectly seeing the ball cross the line, or failing to spot an offside, patent applications have a variety of simple errors or annoyances that can be fixed with just a little extra effort (and maybe some help from technology).
1) Misspellings
This appears to be the most common type of error. Casting aside differences between English spellings and American spellings (color or colour), misspelled words are easy to catch with some simple proofreading. Unfortunately, our over-reliance on spell-check makes these typographical errors more and more common.
2) The correct spelling of a word, but incorrect usage of the word
“A food product where the favoring used can be from a group consisting of beef, chicken, or fish.” In this case the correct word to use is “flavor,” rather than the incorrect “favor.” Since the word is spelled correctly, spell-check does not catch this mistake.
3) Claims referring to the incorrect claims
This seems to occur when the ordering of claims changes due to a new direction taken in an application. For instance, claim 7 might have referred to claim 4 in the original application, but the patent drafter decided to change directions, added in a new claim 4, and then failed to renumber claim 7 and/or refer claim 7 to the new number taken on by the old claim 4. Often times this will lead to a lack of antecedent basis in the claims.
4) Improper multiple dependent claims
Some times this is unintentional, but this also often occurs in PCT cases, where the rules are different between the US and Europe. I understand that you want to file the same case in the both the US and Europe, but why not take the time to remove those improper claims before you file in the US, and save your client some money. If anyone knows of a good reason why you would intentionally file improper multiple dependent claims in the US, I would be interested in hearing the reason.
5) Putting line numbers next to each line of a claim…
creating a left column of numbers that have no real use OR writing one claim that is several pages long in order to get a patent. These aren’t so much of errors as annoyances. I understand the little tricks claim drafters put in there to make the examiners take a bit more time in examining, but these little things remind me of the petty, fifth-grade antics of politicians. I know that examiners do the same thing back also, which just perpetuates the cycle. Call me a Pollyanna in this area, but I think that we, as patent professionals, are better than that, and can just do our jobs.
Next time: Danny is either jumping for joy or bashing in the windows, depending upon how the game on Sunday goes. Also he hopes the drama from The Decision will be cast upon Stevie next season.
This post was contributed by Registered Patent Agent Dan Wolka. The Intellogist blog is provided for free by Intellogist’s parent company, Landon IP, a major provider of patent search, technical translation, and information services.
Filed under: Items of Interest | Tagged: patent, patent application, patents, top 5 |
The Intellogist Blog 
Both my partner and I, who have worked as proofreaders in the past, are amazed in other companies we have since worked in when documents such as official form letters or as part of the company spiel on a website are not proofread before publication. It really does make them look stupid. I always say that documents from your company represent you when you are not present, so a document with errors reflects badly on you.
Regarding point 4 the claim saying “any invention as hereinbefore described” etc is added to force an action from an examiner to prevent the application from going straight to acceptance. It gives the applicant time to consider amendments. That was in NZ anyway; not sure about other countries.
The insertion of a deliberately informal claim like the one you mention seems to be characteristic solely of NZ practice in my experience. Yet it seems to make sense in other countries too, especially countries such as Japan where you *cannot* amend after allowance. I think there is a general assumption that either the as-filed claims are acceptable or that we will get an opportunity to amend (there will be some rejection needing response) anyway.
My perspective on it, from 30 years of practice –
(1) True spelling errors (“teh” or “te” for “the”) are comparatively rare now, because of spell checking – even this comment tool is underlining the two errors above.
On the other hand,
(2) The use of incorrect words – words which Danny, wrongly to my mind, refers to as “correct spelling but incorrect usage” – is increasing because of spell checking. If I type “favor” for “flavor” (a spelling error), the spellchecker does not see it as an error. So it is missed except by “simple proofreading”, which is in fact not at all simple – we tend to “see” what we expect to see and not what is actually there, especially if we are reading our own writing. I’m told proofreaders sometimes used to hold the text upside-down just to help avoid this problem.
And the use of an automated spellchecker is fraught with problems, as it may suggest an alternative word that is nonsensical in context when it encounters a word it does not recognize, so a too-quick “change” or, even worse, “change all”, can make a real mess. Also, unless you carefully build a scientific vocabulary into your spellchecker it will not recognize a lot of the *important* words that are used in patent applications. Nobody cares about “teh” for “the”, you can correct it and the examiner won’t complain; but try to correct “propinyl” to “propanyl” (or “propenyl” or “propynyl”), whichever the correct one is, if you don’t have some good reason elsewhere to make the change – and plain-vanilla Word not only doesn’t recognize the three correctly-spelled chemical words there, it doesn’t even recognize “propyl” .
(3) Shouldn’t occur, but does. Patent attorneys are humans too.
(4) I have deliberately filed cases with improper multiply dependent claims in the US PTO any number of times, including in original US national (non-PCT) cases. First, it means that I can use the same claim set for PCT and US, and concentrate my effort on getting only one set right rather than diluting it over two – I’ll fix dependencies later on a country-by-country basis (and it’s not just US versus EPO, or even US versus rest-of-world, there are a number of flavors of dependency rules). Second, it doesn’t really cost much in the US to file with improper multiple dependencies – the PTO treats any improperly multiply dependent claim as a single claim for fee purposes even if I don’t fix the problem before the filing fee is paid. Third, it ensures that I have literal support for many of the possible amendments I might want/need to make by combining claims. Fourth, if I’m doing PCT-to-national, unless I file the US national as a continuation of the PCT rather than a 371, I have to file the PCT as it was written, multiple claims and all. And finally, I can always file a preliminary amendment either with the case or before (preferably) or after paying the filing fee to get the claims in better US form – sounds like a little more work but could well be worth it in the end. For similar reasons, in pharma cases I might file a claim set that includes claims to compound, composition (both acceptable everywhere), method of treatment (US and Australia), compound for a use (EPO, Canada, and Taiwan, for example), use of a compound (“Swiss” claim – most countries but not EPO or US), etc. – get it all in ipsis verbis first and you won’t have to argue later that it’s somehow supported in the specification.
(5) Line numbers next to lines of a claim are an anachronism in the US, from the time when (and yes, I’m a dinosaur and was practicing back then) you amended a claim by an instruction to the examiner something like “At claim 2, line 5, please correct “flour” to –four–.” For long claims, line numbering for each claim made a lot of sense: it doesn’t now. I hold no brief for unnecessarily long claims but, in the absence of evidence to the contrary, I’ll assume the inventor/prosecuting attorney felt the length was needed. And no-one I know puts “little tricks . . . in there to make the examiners take a bit more time in examining” – we want the examiner to examine, allow, get their count, and let us get on to the next great invention.
Insomniac and Mr. Freyberg,
These are both great comments. Its always good to get other people’s opinions, especially from the prosecution perspective, since my background is in the examination end of things. I think in general I tend to hover to the recent US rules, since that is what I am most familiar with. Call me a cynic, but I feel like there is quite a bit of bickering between attorneys and examiners sometimes. Anytime you can get perspective from the other person’s point of view, I think both parties gain something out of it.
Dan
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thanks Derek re purposful us pct multiple dependencies, good strategies that are the opposite of textbooks and dogma