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).
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.
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.