BLOGS: The High-Tech Patent Agent: A View from the Trenches in Silicon Valley

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Friday, March 22, 2013, 1:45 PM

“Kitchen Sink” Patent Applications

Should every possible detail about every possible aspect of every possible variation of every possible embodiment be thrown into the detailed description of a patent application?  We’ve seen examples of these so-called “kitchen sink” applications, which can run 50 to 100 pages or so in length.  A client or patent practitioner who insists upon writing and filing such an application may believe that doing so will protect the equivalents of elements being claimed.  Is there a downside to such an application?  Certainly, costs of writing the application increase, and these increased costs are either borne by the client or written off by the patent practitioner or law firm.  Another technique is to write a detailed description focusing on the point or points of novelty of the invention, with sufficient support to satisfy the enablement requirement, and listing a reasonable number of embodiments, alternatives and implementations.  It should suffice to discuss general aspects generally, in the detailed description, without needing to list every last possible detail of these.  For example, if a claim recites a first member attached to a second member as part of a structure, the detailed description should talk about how the members might be attached to one another, but not necessarily list every last possible nut, bolt, nail, screw, glue, welding technique, dovetail joint and so on, and how these are produced, prepared, used, measured, supplied, cured, repaired…  Unless, of course, there is novelty in the process of attachment, the materials of attachment or some other aspect of the attachment, in which case this should be discussed in much greater detail.  What constitutes a reasonable amount of detail in any of this?  Intuition and experience are guides.  This is part of the art of writing patent applications.

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Wednesday, March 6, 2013, 1:11 PM

Canonical Form of Patent Claims

Patent claims are in the form of a very curious compound run on sentence.  The canonical form of a claim set begins with an opening phrase “I/we claim:”, “In the claims:”, "What is claimed is:" or “It is claimed:”, for example.  This is followed by an enumerated list of compound, modified nouns.  Each such compound noun has a number, in sequence, identifying it as a single claim.  These compound, modified nouns are each in the form of a subparagraph or set of subparagraphs, generally with each subparagraph, except the final one, ending with a semicolon or less frequently a comma.  If there are two or more subparagraphs, the next to last paragraph ends with the conjunction “and” (after a semicolon ending that subparagraph).  The final subparagraph (or the first one if there is only one) ends in a period.  Thus, one can think of a claims set as a list, with each entry on the list having a number and ending in a period, and the list being introduced by an opening phrase.  Structure claims such as apparatus, system, device, compound of matter and so on have claims that relate one noun to another in terms of physical connectivity, capabilities, aspects and functionality.  Method claims, also known as process claims, have claims that relate to actions and use the gerund forms of verbs as nouns, often modifying these nouns with adverbs.  Placement of commas to separate phrases can introduce clarity and improve the likelihood that a subparagraph can be parsed unambiguously.  Sometimes, introduction of a comma introduces ambiguity, especially when it is unclear as to where in the subparagraph an offset phrase connects.  There is a trade-off between repeating clauses and sub phrases explicitly versus implying them through grammatical structure.  A claim with too much repetition can seem redundant and clunky.  Paradoxically, such a claim may have been written with the intent of removing ambiguity but may wind up introducing ambiguity.  An elegantly written claim with little repetition can be very clear and unambiguous.  Or, such a claim might have a crucial sub phrase that could be interpreted as possibly modifying or affecting more than one parent phrase or clause.
As a thought-provoking exercise, what might the effects be of changing the claims format to allow writing claims in the form of sets of sentences?  Each sentence could stand on its own.  Each single claim could be one or more sentences, at the discretion of the writer.  Would claims then be clearer?  Would the writing of claims require less effort?  Such a drastic change in how claims are written would doubtless cause unanticipated problems.  Without the conventions of the canonical form, would litigation of patents increase as a result of increased ambiguity of the claims?  Meanwhile, until or unless the claims format is changed, we write claims in the canonical form.  This is the art of claiming.

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