Conventional Patent Wisdom Revisited

By Daniel Hanson
July 18, 2020

“According to the ordinary and customary meaning, is Earth’s Moon ‘white’? The answer depends upon which ordinary and customary meaning you use.”

Patent Wisdom - https://depositphotos.com/26343203/stock-photo-moving-to-the-light.htmlThe time is upon us when young patent professionals, many of them fresh out of law school (or out of engineering school) begin their professional lives as patent prosecutors.

These new members to our profession quite naturally look to senior patent professionals for practical guidance. The guidance often is in the form of adages that form the Conventional Wisdom of patent prosecution.

Much of this Conventional Wisdom, as it turns out, is often not very practical and some of it is not all that wise. In most cases, the Conventional Wisdom is not exactly wrong; it’s just that there may be other ways of doing things that may be more practical or effective for a particular practitioner.

I’m going to talk about some pieces of Conventional Wisdom that I received that turned out to be, well, not-all-that-helpful advice. I will share what advice I would offer in its place.

My hope is that readers will share their experiences as well.

Conventional Wisdom: Draft the claims first.

The idea behind this adage is reasonable enough. The claims define the scope of the patent coverage. Drafting the claims first helps the drafter have a better understanding of the invention and what must be disclosed in order to support the claims that will be made.

In practice, however, this principle is hard to apply. Try as I might, I was never able to write a workable set of claims as the first thing.

Better: Draft some claims early, but not first.               

Many inventions are simply too complicated for a patent prosecutor to identify, at the outset, what the claim elements might be or how they are to be arranged. In some cases, the invention is readily understandable but operates in a complicated environment. Sometimes it is unclear what an element is to be named, or the invention records omit mention of important factors. Circumstances such as these make it difficult to draft a claim at the very beginning of the case.

For me, the best way to understand an invention is usually to draw a picture. If the invention is a device, the picture can show all of most of the parts. If the invention is a method, the picture can show a diagram such as a flow diagram. The pictures then help me outline some claims.

My practice usually has been to take these rough claims, and the pictures, with me when I interview the inventor. The inventor can use them to help me to understand those things that I don’t understand or give names to elements that didn’t have names.

While this technique works for me, it is not the only technique out there. Some practitioners draft the detailed description first. Others outline the scope of coverage, using language that is neither as formal nor as rigorous as claim language.

For those of you who can draft workable sets of claims right out of the chute, more power to you. For those of you who find it to be a challenge, remember that it is possible to get a handle on the invention, and prepare a rough claim set, by doing something else first.

Conventional Wisdom: Don’t argue the law before the Examiner.

I have already written (twice) about preserving constitutional arguments before the Patent Office, noting that there are some who think that this is an exercise in futility. Along similar lines, there is a line of thought that no legal issues of any kind should be argued to the examiner.

There are a number of reasons for this view, but the most common reasons underlying this bit of Conventional Wisdom seem to be: examiners don’t give much attention to nuances in the law, they only care about technical issues; and examiners tend to get miffed when the law is argued (and a miffed examiner is not a good thing).

Better: Preserve your arguments; but use tact.

The easiest way for a reviewing body to dispose of a legal issue is to find that the issue was waived by non-argument. As a general matter, a reviewing body is unlikely to overturn an action of an examiner unless the argument was fairly presented to, and rejected by, the examiner.

A better course is to make your legal arguments to the examiner, whether you think the examiner will be persuaded by them or not.

There is nothing wrong with arguing technical issues foremost and in greater detail (since that may be where many examiners’ foci tend to be). In many office action responses, legal issues can be handled later in the document, and can be handled relatively tersely. In many cases, legal issues can be argued in the alternative with technical issues.

Preserving legal questions does not require writing a treatise or composing a brief. But you do have to lay out the legal principles of which you believe the examiner is running afoul, and why you think the examiner has erred, so that the examiner has a fair opportunity to do it right. It may help to view your audience for these arguments not as the examiner, but rather your audience includes those who have power to reverse the examiner’s decisions.

Conventional Wisdom: Always claim as broadly as you can.

Who has not heard this adage? There are clear good reasons for it, such as to get the maximum patent protection allowable. But is this the best way to proceed in every case?

Better: Claim as broadly as you can WHEN you can … which is NOT always.

There are many times when it may be advantageous to claim more narrowly than necessary. For example, it may be in the client’s interest to get a patent quickly (swapping claim scope for rapid allowance), or to get a patent that can be used against copycats who don’t bother to do any designing-around(in which case a narrow-in-scope picture claim might be the first claim that your client wants to be enforceable), or to get a thorough search of the art from the examiner (especially if the technical area is thought to be crowded), or to get a patent less vulnerable to overbreadth challenges in post-grant proceedings.

Sure, claim broadly as a default. Just don’t lose sight of the client’s interests.

Conventional Wisdom: There Is No Need to Explain Ordinary and Customary Terms. 

When a claim term is not further explained in the description, the default is to give the term its ordinary and customary meaning. Therefore, if you want a claim term to have its ordinary and customary meaning, either say so explicitly or simply omit any definition.

Better: Explain Any Claim Term That Might Cause Trouble.

Referring to the “ordinary and customary meaning of a term” makes it sound like there is only one ordinary and customary meaning. It often happens, however, that a seemingly run-of-the-mill claim term might have multiple ordinary and customary meanings, some of which might be against your client’s interest.

This can be illustrated by a simple riddle: According to the ordinary and customary meaning, is Earth’s Moon “white”?

The answer depends upon which ordinary and customary meaning you use. If you say “white” has the ordinary and customary meaning of “pale or lighter in color than the surroundings,” then the Moon is most certainly “white.” Indeed, most people would agree that, in comparison to the deep blackness of space, a full Moon appears “white,” without question.

But “white” has at least one other ordinary and customary meaning. If the intended meaning of “white” is “the color of milk or snow,” or “reflective of almost all incident light,” then the Moon most certainly is not “white” at all! Indeed, the Moon is much closer to black. The Moon is a dark body, reflecting considerably less than fifteen percent of the visible light that hits it; most lunar soil has a dark gray color like graphite.(According to Andrew Chaikin, the dark color of the lunar soil was something of a surprise even to the Apollo 11 astronauts; a bag of soil brought back from the surface looked like “black soot” and the rocks were covered with “powdered graphite” or “charcoal-colored dust.” “You’d never have guessed, huh?” remarked Neil Armstrong to Mike Collins. A Man on the Moon (1998), pp. 210, 225, 233.)

The moral of the story is that sometimes you cannot even rely on “ordinary and customary meaning” for a well-understood and widely-used word like “white.”

There Are More

This is far from an exhaustive list of aphorisms that get tossed at new patent professionals. Others tossed at me included, for example: “Don’t explain what a PHOSITA would know”; “Getting the patent is the most important thing”; “Put the claim language in the description verbatim to support the claims”; “Don’t worry about potential obviousness rejections”; and “Try to say as little as you can in a patent application”. Each of these I have come to question.

How about you? What Conventional Wisdom has been presented to you that turned out not to be especially helpful? What advice would you give in its place to budding patent practitioners?

Image Source: Deposit Photos
Author: digitalstorm
Image ID: 26343203 

The Author

Daniel Hanson

Daniel Hanson is an attorney who has worked with a number of law firms and corporations, including BlackBerry Ltd. in Canada. His practice focuses upon patent preparation and prosecution.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 27 Comments comments. Join the discussion.

  1. Josh Malone July 18, 2020 12:28 pm

    Conventional Wisdom: A patent secures to the inventor exclusive right to their invention.

    Better: Large corporations are permitted to infringe your patent and the USPTO will deny or revoke your patent if it is deemed “pioneering” or very valuable. If you pay lawyers tens of millions of dollars over a period of 10-15 years and if the big corporation does not go bankrupt, they will pay you a few cents on the dollar for the value of your invention.

  2. MaxDrei July 18, 2020 2:00 pm

    Great article. I do hope that it stimulates readers to comment. The suggestion to rough out some tentative claims and some sketches and then discuss them with the inventor before writing the specification I agree with 100%.

    My special interest is in reconciling US drafting style with that used everywhere else in the world. You only get one chance to draft optimally for the client. Shall you optimise for the USA and ignore the conflicting RoW drafting imperatives? Or will you go for some sort of compromise?

    Example: For RoW, you certainly do have to worry, when doing your drafting, about obviousness.

  3. AUTRIGE DENNIS July 18, 2020 6:48 pm

    Very good article. Will share. I like this part..

    “For me, the best way to understand an invention is usually to draw a picture. If the invention is a device, the picture can show all of most of the parts. If the invention is a method, the picture can show a diagram such as a flow diagram. The pictures then help me outline some claims.”

    Even as a patent illustrator I can see a lot of what specifically the client invented while preparing the patent drawing….The pictures do help outline some claims.

  4. Anon July 18, 2020 10:06 pm

    Nice article.

    I find that a variety of techniques is best to have, as some inventions lend themselves differently to different techniques.

    My favorite though is to draft an initial story of the specification in storyboard format.

    Once I have that I again review the intake material with an eye for the deepest protection of the underlying concepts. Often times inventors themselves may not be aware of the depth of their invention, and may have focused only on a ‘gizmo’ embodiment.

    Here, the primary focus is the claims, but rough sketches and the specification are each “side by side” and all three develop in tandem.

    Once the claims are more finely captured, then the specification and drawings are reviewed afresh with a view towards alternatives and development of possible backup positions.

  5. MaxDrei July 19, 2020 7:33 am

    Yes, but let us be in no doubt that it is the special skill, talent and aptitude of the professional patent drafter that is key. Identification of what anon calls the “underlying concepts” is no trivial matter. Identifying reliably that combination of technical features which encapsulates the contribution to the art, and why it should be accepted as inventive, takes years of practice, learning and experience. Claim 1, the “envelope” around the client’s embodiment, has to be extensive enough to capture all the variations on the concept that a competitor can dream up, yet compact enough for there to be a distinct gap between its periphery and everything in the prior art universe.

    An elegant set of dependent claims follows more or less automatically.

    And then, after that high skill input, a machine can write the specific description (or so I am told).

  6. Anon July 19, 2020 9:40 am

    I will most definitely disagree with you in regards to any sense of “dependent claims follow automatically.”

    As to the ability of taking inputs and putting them into the form of a patent application, you can easily do more than merely “or so I am told.”

  7. Amitkumar Dharia July 19, 2020 10:12 am

    I am no a patent lawyer, but as an inventor, I worked with and sought the advice of senior patent attorneys. I have noticed that different attorneys have different styles, and there are no conventional rules but wisdom. After all, most of them are engineers and scientists!! The golden advice is – get a patent with the broadest claim (battleground) and with some narrower ones (minefields )approved such that claimed matter lures potential competitor to the battle, but finish when they step on mines.

    Traditional wisdom is not to drafts claims first but to “draft one broad independent claim” first based on the understanding of the disclosure. Inventors love to talk about their inventions but hardly pay attention to what they claim as their key invention. Drafting an independent claim and reviewing with the inventor can clarify a lot of miscommunication. The claims must read upon and supported by the specification, so drafting one large but independent claim can significantly improve the specification.

    The conventional wisdom is not Not to argue with the examiner but to “discuss the matter” with examiner when there is an in the impasse and ask what he/she considers the allowable matter and then present facts supported by law and technology that support your position. I am told that the interviews with the examiner can quicken the prosecution.

    Having the broadest independent claim is good advice as far as specification supports it, and it is on the borderline of the prior art. The most important thing is to claim what the inventor/applicant considers most valuable to him/her. One can easily get narrower claims approved, but it may not protect the primary invention. In that case, the patent is of no value.

    I have asked many of these to John White, Gene Quinn, and David Boundy. Any newbie who has a strong engineering/science background – I would advise joining NAPP. Many senior attorneys often answer questions with answers which are full of wisdom, techniques, and nuances which one can only learn from Gurus!!

  8. Paul F Morgan July 19, 2020 10:39 am

    There is lots of bad application drafting advice for new patent attorneys still out there. Like “here, use this application drafting format we developed [years ago]” [with a PTO-recommended “Summary of the Invention” subtitle].
    Or, “this inventor is a leading scientist – he will know all the prior art – so you don’t need to do a pre-filing patent search.”

  9. MaxDrei July 19, 2020 10:41 am

    Thank you #6 and #7. There we have it: the gulf that lies between drafting for the USA and the sort of drafting needed for the acquisition of effective patent rights elsewhere in the world

    The writer of the post, Daniel Hanson, reports that he is:

    “..an attorney who has worked with a number of law firms and corporations, including BlackBerry Ltd. in Canada”

    Daniel, you say:

    “My hope is that readers will share their experiences as well.”

    Is it time yet, for you to respond to such sharing as has happened so far? How about Canada? Is US-style drafting optimal for Canada? I’m curious.

  10. Jeff Sheldon July 19, 2020 12:53 pm

    I agree with the comment get some claims drafted early on with the inventor so an agreement is reached regarding terminology and distinguishing over the known prior art. I even use that claim for ordering a patentability search.

    Old conventional wisdom – a long background building up the invention. Too many times background statements can come around and bite. Takes efforts and rarely does anything with the examiner.

    Old conventional wisdom – call a follow-on application a cip. When patent lasted 17 years from issue date there was no downside. Now it cuts term and if the parent does not support the new claims, no upside. (There are exceptions of course)

  11. Anon July 19, 2020 9:04 pm

    MaxDrie,

    We’ve been over this – patent law is, was and always shall be Sovereign-centric law.

    Last time we visited this topic, even David Boundy took you to task for a too-much ROW view of patent law, as if there was some type of “One World Order” (hint: there is not).

    The takeway from a recent conversation on this also was on point in that for certain items, the US market very much outweighed any other specific sovereign coverage (of course, very much depending on the specific innovation, and the interplay thereof – be it ‘technical’ [however undefined that you want to leave that word], or to Useful Arts, as ever more encompassing than mere ‘technical.’)

  12. MaxDrei July 20, 2020 7:29 am

    All I’m trying to do is to tease out of the man from Canada (as well as any other reader who has some knowledge and wants to contribute) how to draft a patent application that will reconcile the more or less contradictory requirements of drafting for the USA and drafting for elsewhere, and thereby secure the client proper patent protection not only in the USA but also elsewhere on Planet Earth. You mention David Boundy. He it was, you will recall, who wanted to get in touch with me personally, to talk in more detail on the subject.

    Completely irrelevant to the issue is the debate whether “technical” and “useful arts” are or are not co-terminous.

  13. AAA JJ July 20, 2020 8:59 am

    I only make one argument to the examiner: “The error(s) in the rejection is (are)…”

    That’s it. There are no “legal” arguments. There are no “technical” arguments. Whenever I hear people say “I only make technical arguments to the examiner” I know they are terrible practitioners.

  14. Just some thoughts July 20, 2020 9:11 am

    Love the article.

    One I have to stress, from observations and having experience both prosecuting and examining, is the deadly combination of (1) trying to get the broadest claims in the world, and (2) saying as little as possible in the specification.

    Often examination focuses on the first claim. Which is usually the broadest. So if you have a ridiculously broad Claim 1, then the examiner’s search may be woefully lacking, because it doesn’t take much to find art for a super short/broad claim. Then for the dependent claims, the art found may not be very good, but the examiner will force it to work for the claims. So naturally, the attorney, seeing the weak rejection/arguments for the dependent claims, will try to just roll one of them into the independent claim. The examiner then, not wanting to do much more work, will just maintain the weak argument from before. Essentially, a full round of prosecution has been wasted. Even with an RCE, you might never get the full and thorough search of the “actual” invention, because you started the negotiation with such a ridiculously broad and unfocused Claim 1.

    The other scenario is that the examiner actually does a good search and finds good art. So now you actually need to amend your claims. But if your specification is essentially a copy-paste of the claims, with generic filler words to expand it to 10 or 20 pages of repeating the claims, then there is no support for any amendments. I see this a lot, where the attorney (hopefully a newbie) looks at the art used in the rejection, finds a simple and clear distinction, and adds that into the claims, without actually looking to see if it was described in the specification. The inventor usually goes along with the strategy because it looks like with what they think they invented. Only the drafter was so “clever” that all those additional details were left out of the specification “to avoid estoppel” or some other nonsense excuse.

    Just some thoughts.

  15. TFCFM July 20, 2020 10:23 am

    DH: “Conventional Wisdom: Draft the claims first.

    Yeah, we’ve all heard that. I always thought it was bone-headed (or at least poorly worded): how can one write a sensible claim before understanding the invention, and how can one genuinely understand an invention before writing about it, at least a little.

    I’ve always taught my co-worker pupils to start with one or more examples (usually starting with an invention disclosure or a model taken from the inventor), drawing up one or more draft figures (often little more than doodles) where necessary, and keeping a running parts-numbers list as you go. The examples don’t always make it into the final specification, but they give the drafter the advantage of at least writing about the technology (and often fooling with variations in figures) before trying to formalize the invention in a single sentence.

    The notion that some proponents of “claims-first” appear to hold (that something close to a “final claim set” should precede drafting of the specification, so that the latter can be ideally drawn to the former) seems to me possible only for the simplest of inventions (which are rare these days). I’ve always taught that claim- and specification-drafting is an iterative process:
    – Start with something (usually example(s))
    – Draft some claims that you think cover your understanding of the ‘invention.’ Highlight or otherwise-mark terms and issues that you think might bear further thinking/explaining.
    – Write up your spec, keeping in mind full explanation of what you’re claiming; explore the highlighted/marked sections, often with lots of questions for the inventor(s) in a draft.
    – Modify the claims as you realize what’s “really necessary” (rather than optional) and as you appreciate variations.
    – Double-check your spec for full support prior to filing.

    Of the several-hundred original specs I’ve drafted in my career, I’d estimate that I had something akin to a “final claim set” prior to most of the spec-drafting no more than a handful of times. Most of the time, after a bit of futzing about with examples (and/or sometimes background to understand what I’m claiming against), I start the main body of spec-drafting with a ‘pretty complete’ (but ALWAYS subject to modification) set of claims.

    (These numbers reflect a primarily biotech/chemistry focus — and in these, I’d wager I NEVER had a “complete” set prior to drafting; probably all “complete-claim-set-first” applications were for relatively simple mechanical devices.)

  16. Anon July 20, 2020 10:31 am

    Um, ok I guess. I thought that Mr. Boundy was clear (from the exchange of comments that everyone had access to) in regards to my description. If you indeed had more conversations off-line, it would be beneficial to share those (although I suspect that you would not share those things that do not support the way that you would prefer things to be).

    As to any ‘irrelevancy’ vis a vis ‘technical’ and “Useful Arts” (capitalized for a reason, as this very much is a legal term of art), it is you that appears to be attempting to insert obfuscation of this point (and not just on this blog). I suggest that you do not try such things if you do not want to get called out for trying such things – that way any sense of relevancy will not come up in the first place. And again, this is tied to your advocacy efforts, and your desired narrative more than anything else.

  17. Pro Say July 20, 2020 10:40 am

    AAA JJ @ 11: Same here. Errors are errors.

    I call ’em all out; and make every possible argument against them.

    Every. Single. One.

    If you don’t do so during prosecution / examination, they won’t be available for appeal.

    Use ’em or lose ’em.

  18. Lisa Schreihart July 20, 2020 11:21 am

    Nice article. I’m a newbie patent practitioner (2 years in) and have worked with a number of experienced veterans who each work the drafting process slightly differently. I am very discerning though, so I ask a lot of questions and try to separate the wheat from the chaff. But I honor it all. I have successfully drafted patents various ways – picture first, picture and claim(s) first, claims first, one independent claim first, and spec first when a thorough initial description is provided (say, from cobbled-together detailed technical papers). I agree there is no one best way. It’s on a case-by-case basis. When an inventor gives you very little, even in a discussion, the best way I’ve found to go about it is a picture and first claim to tease out more. What I do not appreciate is veterans being inflexible to the process. It makes it very difficult to learn and work with people who insist on only one way but don’t really explain why with regard to that matter.

    My second comment regards “to search or not to search.” I’ve been trained “don’t you dare.” I’ve read it may be useful to improve the patent. I do understand the nuances but also recognize the inflexibilities of some practitioners. So, as it goes, my search skills stink, because I’ve not really been trained on best searching practices.

    My third comment regards “to discuss other art or not to discuss other art in the background of the disclosure.” I had one principal suggest that it should not be done, and the best background is one short paragraph, and another want me to cite every single reference in the spec. I understand what the EU does, and I understand implications of admissions of prior art. I just find it wild that there would be such general disagreement on this without considering the specific invention/case at hand.

    This newbie (me), who asks a lot of questions because I want to understand the whys and the strategies, asks you veterans to please consider us before generalizing without more. It may be a detriment to our learning.

  19. young attorney July 20, 2020 1:47 pm

    This was very interesting as a “young” attorney (five years of practice) I appreciate this. I find myself usually writing claims in combination with the spec and drawings. Write a few claims, write some spec draw pictures talk to inventor – rewrite claims spec – talk to inventor – process much more iterative than I expected.

    On Claim scope I do a lot of work with startups with very limited funds so I often write one or more sets of claims of various breadth and explain to the client the chance of office actions with each costs involved and let the client choose the claim breadth. Seems to keep my clients happy.

    One question I have – on office action responses do you keep them short? Couple partners I work with like to keep them as short as possible in case of litigation – for example you have a 102 and a 103 where the 103 is the 102 reference plus a reference: argue the 102 reference then for the 103 say the new reference doesn’t overcome the deficiencies with the 102 reference. This is eve when there are obvious arguments with the new 103 reference. My feeling is to put all arguments in the response. Thoughts?

  20. MaxDrei July 20, 2020 2:30 pm

    Two points in response to anon at # 16.

    Nothing I have written, anywhere in this thread, has anything to do with the question whether or not “useful arts” is synonymous with the “all fields of technology” in GATT-TRIPS. anon’s mention of it yet again reveals her obsession with it, harping on about it, willy-nilly, every time he sees one of my comments here. Methinks it’s another example of a Shakespearian lady that doth protest too much.

    As to David Boundy and me, as you surmise, I am not in a position to publish here any private discussions I might have enjoyed off line.

  21. Anon July 20, 2020 3:57 pm

    Excellent comment Lisa.

    One item that I hope that you develop an ability to push back on that “don’t dare search” mindset that you might run into.

    I will agree with Paul Cole when he discusses that the ‘gold standard’ in patent drafting occurs when you have the very best possible inputs, and that includes the best possible search up front.

    I DO ‘get’ that not every client sees things this way, and that it is — at the end of the day — the client that makes the call as to any level of search (if one is even undertaken at all). But our role is to advice the client such that the work product is the best that it could be. Once advised, the client will decide how they want to decide, but we should be giving them the best advice.

  22. MaxDrei July 21, 2020 1:05 am

    As to the value of a patentability search prior to drafting, it indeed brings enormous benefit to the level of satisfaction of the drafter. But that’s not something that greatly interests the client. If the purpose of filing at the PTO is more defensive than offensive, more to get a PTO A-publication of the technology as a way to keep the way ahead clear of other people’s patents, then the costs of i) searching ii) assessing the search references brought to light and iii) drafting with those references in view, to craft (more time, more cost) claims all patentable over the now known prior art, then the extra outlay is wasted costs.

    But conversely, if the requirement is a patent to be enforced against infringers, then IMO the costs of searching are proportionate and the benefits of such searching are large and, likely, crucial to the achievement of the business objective.

    Dangerous to generalise but, in general, Applicants from Asia file for defensive reasons, Applicants from Europe don’t know whether their filing is for offensive or defensive reasons, while Applicants in the USA think of nothing else but offence. Agreed, anon?

  23. Anon July 21, 2020 6:15 am

    I would ascribe that the range of desires is not limited to the generalized geographic descriptors.

    There is a reason the client makes the final decision, and the aim of the client may well indicate that searching is not undertaken.

    As you may recall MaxDrei, the US Sovereign does not require a search of any kind.

  24. Anon July 21, 2020 8:34 am

    MaxDrei,

    One part of your comment deserves some additional attention.

    In some dialogues past, you seem to want to make the point that the “China Method” is to simply flood the world with printed items that have no connection with actually being enabled – a type of “wishful thinking” that serves more to ‘clear the path’ and eliminate anyone from obtaining a patent on something that MAY be enabled in a later field application.

    In a sense then (and please correct me if I am not translating this correctly), what we have is an abuse of the system and putting nothing more than fiction (science fiction or otherwise) into the patent system with filings that never have any intention of being prosecuted.

    Why I call this abuse is that the aspect of obviousness (which while I know that we do not see eye to eye on in regards to all aspects, I do think that we both can agree is a far more ‘subjective’ or difficult call to make, especially if the PHOSITA is not rigorously controlled), has TYPICALLY in the past been also tied to a presumption that is different between Non-Patent Literature and granted patents. Some have attempted a ‘camel’s nose under the tent’ approach and moved for the same level of presumption for mere published applications that fully granted patents have.

    Your comment points out why such lowering of equivalence of presumption from those items that are truly vetted (examined and allowed) to those that are merely presented would be a serious mistake.

    If one engages in nothing more than writing science fiction, submitting such fiction to patent offices in droves and then turning around and engaging in clear abandoning of huge swaths of those filings, then it is clear that the writings are NOT meant for anything but to block actual progress from those willing to share their innovations in a TRUE Quid Pro Quo manner.

    I lay a substantial blame for this tactic on those patent offices that want their version of Quid Pro Quo to be an exchange of the innovator divulging their end for the mere chance of being examined, rather than the US approach of exchange for the actual grant of full property rights.

    What care does (or in Rational Actor mode, should) a patent office have for ANYTHING after they have had their end of the bargain and are able to publish ALL of what an innovator has? This type of turning a blind eye to a TRUE exchange only encourages the gaming by such as the “China Method.”

  25. MaxDrei July 21, 2020 10:42 am

    Sorry, you’ve lost me there, anon. Never mind China. Don’t get fixated on that country. Since time immemorial, Japanese companies have filed at the Patent Office for defensive reasons. 18 months later comes the PTO A-publication, typically the first time the world knows what is in the R&D pipeline. So, all those A publications promote the progress. The patent system is working as it should. After Japan came South Korea. Now we have the PRC.

    Not all those A-published pending applications go through to issue. But a good proportion of them do. With their relatively narrow claims well-supported by a detailed description of the stuff which Applicant is bringing to market, they serve as potent KEEP OFF THE GRASS legal notices and can be asserted in the case of product copying. And all of those A-publications impede progress to grant of all the filings by all the competitors. The thing is, striving for protection of everything that isn’t already old on the filing date is not the ultima ratio of the drafter. Instead, they have in mind the objective of clearing a legal obstacle-free path into the future for the technology they are bringing to the market.

    Otherwise, you allude to suggestions I have made in earlier threads, that A-publications can serve as effective basis for obviousness attacks on later filings, even if they don’t enable everything within the scope of their claims. Well, yes, but where’s the harm? Hasn’t every chemical drafter, everywhere in the world, done this very thing since time immemorial, as classic top quality drafting?

    Abuse? Hardly. And if so, it’s something patent Offices and litigators have taken in their stride, as an ever-present feature of the patent landscape, since time immemorial. Abuse? You can see it as such if it pleases you to do so. But new? Not at all. It’s as old as the hills.

  26. Anon July 21, 2020 2:48 pm

    MaxDrei,

    Congrats – you could not have missed the point by any wider margin.

  27. ipguy August 1, 2020 4:32 am

    Every practitioner learns the craft of drafting patent applications from the style(s) of the person(s) who taught them. One partner has a particular style and so you learn their style. Another partner has a different style and so you learn their style. Lord help you if you made the mistake of drafting an application in the wrong style for that particular partner. Eventually, you cobble together your own style.
    When it comes to responding to rejections, I address every issue I see because (1) I want to preserve the issue(s) for appeal, and (2) I have no idea which of them is going to provide the most leverage with the Examiner.
    Speaking of which, always argue the Examiner failed to determine the level of ordinary skill in the art. The PTO has rigged skill level determination so that the exception of implicit skill level determination is the rule rather than the exception, but the Examiner is still required to respond to the argument. It can be powerful leverage if used correctly (i.e., don’t just say the Examiner failed to determine skill level, show it!).

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