Make Your Disclosures Meaningful: A Plea for Clarity in Patent Drafting

By Trenton Morton
October 4, 2020

“As commentators—for centuries—have tried to instill stylistic clarity and organizational coherency in legal writing, I hope to instill the same improvements in patent drafting…. If you can excel in fulfilling explanatory and legal standards, why not also make your disclosures meaningful?”

https://depositphotos.com/11934770/stock-photo-clarity.htmlLegal writing has long attracted criticism. In Gulliver’s Travels, Jonathan Swift complained of lawyers’ “peculiar cant and jargon of their own, that no other mortal can understand.” (p. 317.) More recently, Loyola Law School professor Robert Benson lamented how “[l]egalese is characterized by passive verbs, impersonality, nominalizations, long sentences, idea-stuffed sentences, difficult words, double negatives, illogical order, poor headings, and poor typeface and graphic layout.” Robert W. Benson, “The End of Legalese: The Game is Over,” 13 N.Y.U. Rev. L. & Soc. Change 519, 531 (1984). Ouch.

Patent disclosures often reveal the same warts. But if “[t]he purpose of the written description requirement is to assure that the public receives sufficient knowledge,” Zoltek Corp. v. United States, 815 F.3d 1302, 1308 (Fed. Cir. 2016), why must we suffer such side effects? Drafters guilty of these crimes must’ve forgotten the public’s right to “receive meaningful disclosure in exchange for being excluded from practicing the invention.” Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 970 (Fed. Cir. 2002).

Focus on that word, “meaningful”. I know of no case that’s expounded on “meaningful” in this context, so I want to play with some—admittedly self-serving—synonyms, like “sincere,” “pithy,” and “worthwhile.” By stressing these qualities not commonly associated with patent disclosures, we can complement, and even enhance, the explanatory and legal functions of patent disclosures. We need a “Meaningfulness Movement” in patent drafting.

As commentators—for centuries—have tried to instill stylistic clarity and organizational coherency in legal writing, I hope to instill the same improvements in patent drafting. Meaningful disclosures respect the reader, whether an expert, skilled artisan, layperson, or otherwise. This article won’t just pick at nits, although that can be fun. For example, hundreds of patents use phrases like “ATM machine,” “cement truck” (in almost every instance, the proper phrase is “concrete” truck or mixer), and incredibly, “all intensive purposes.” Instead, this article offers two simple messages: Shed the ornamental language and organize your writing.

This article quotes authorities who I find humorous, but it also includes examples. It may ruffle some  feathers, but these are only suggestions. If you can excel in fulfilling explanatory and legal standards, why not also make your disclosures meaningful?

1. Remove your Fancy-Pants: Shed the Fluff and Flowery Words

“You fancy, huh?” – Drake, “Fancy,” from the album Thank Me Later

Patent disclosures should feature plain English where terms of art can be avoided. My view resembles that of Alfred E. Kahn, former chair of the Civil Aeronautics Board: “If you can’t describe what your model says in plain English without provoking derisive laughter, it probably doesn’t say anything of value.” You might find Kahn’s expertise in regulation, economics, and telecommunications irrelevant to patent drafting, but stay with me.

Let’s use a typical phrase that I adapted from a U.S. patent, to avoid calling out a particular drafter:

“Referring now to the illustrations and more particularly to FIG. 1, depicted therein is architecture 100 in accordance with the one or more embodiments of the present patent application, which the Applicants hereto will describe further hereinbelow.”

What’s preventing this sentence from reading as:

“FIG. 1 shows architecture 100, of an exemplary embodiment(s) of this application.”

What does the first quote give you that the second one doesn’t?

First, what benefit do phrases like “[r]eferring now to the illustrations and more particularly to” (throat-clearing) and “of the present patent application” (stating the obvious) provide? These phrases might be extreme examples, but why not practice, what Thomas Jefferson called, the “most valuable of all talents . . . [of] never using two words when one will do”? On this, Steven Pinker has echoed William Strunk and E.B. White, all of whom have preached, “Omit needless words.” Unnecessary ink buries your message.

Next, let’s address fancy words themselves. As Kahn quipped, “[e]very time you’re tempted to use ‘herein’ or ‘hereinabout’ or hereinunder’ . . . try ‘here’ . . . and see if it doesn’t make as much sense.” You might even feel tempted to use words like “employ” and “utilize” instead of “use,” for example, but even the U.S. government suggests replacing unnecessarily fancy words with plain ones. Liane Davey, in the Harvard Business Review, recommends eliminating “fancy-pants words” to “reduce the distance between you and your reader.”

Why haven’t patent drafters embraced these ideals? Is it lawyer-like clubbiness? In 1817, Jefferson jokingly chided lawyers for making “every other word a ‘said’ or ‘aforesaid’ and saying everything over two or three times, so that nobody but we of the craft can untwist the diction.” Fred Rodell, of Yale Law School, wrote that lawyers, with their a “pseudo-intellectual autocracy,” were like “medicine-men” and “priests . . . who blend technical competence with plain and fancy hocus-pocus to make themselves masters of their fellow men.” (p. 3, 47.) Avoid these ills. Democratize your language. This advice might trigger pushback though. You fancy, huh?

2. Cry Over Spilled Words: Design Your Document as a Coherent Construction

“Listening to most people’s English feels like watching somebody use a Stradivarius to pound nails.” – David Foster Wallace, “Tense Present: Democracy, English, and the Wars over Usage,” from the April 2001 issue of Harper’s Magazine

Coherent organization increases readability. If you find this obvious, ignore this section. Often, patents describe divisible devices and processes, whose function and organization lend themselves to these suggestions.

First, patent drafters seldom use headings (I mean more than just “Background,” “Summary,” and “Detailed Description”), and that’s a shame. Ponder this: will thoughtful headings more likely help, or more likely hurt, the reader’s understanding? Of course, patents are technical documents. But here (Alred, Gerald J., et al., Handbook of Technical Writing, Ninth Edition 242–44) and here (Turk Christopher, et al. Effective Writing: Improving Scientific, Technical and Business Communication, Second Edition, p. 66–69) are two examples, among three bajillion others, where technical style guides describe how to use headings. Headings are a given. Readers can use headings to quickly understand an invention’s structure and functional details, making the body paragraphs more digestible.

Second, embrace the topic sentence. These can help with patent disclosures, despite their usual association with essay-writing or argumentation. As the Harvard College Writing Center notes, topic sentences “tell your reader what to expect in the paragraph that follows.” Try reading the first sentence of each paragraph in an article in The Atlantic or Scientific American. You’ll probably get a clear idea of the main points. In patent disclosures, topic sentences can label the structure or function that follows, placing each paragraph in the context of the overall invention.

Third, related to topic sentences, let’s play a paragraphing game. Count the zeroes below:

0000

0000

0000

0000

0000

0000

0

How long did that take? You counted 25 zeroes, right? Now count these:

0000000000000000000000

Once you’ve recovered your vision, how long did that take? There are 22 zeroes in that line. Although this inquiry is nonscientific, and perhaps an oversimplification, I’m guessing the group of fewer zeroes took longer to count. This exercise demonstrates a simple point: more white space and smaller chunks of text aid readability.

Thus, embrace paragraphing! Ax that 250-word paragraph. The University of Southern California Library’s Research Guide refers to paragraphs as “the building blocks of papers.” This “building block” metaphor fits well in the patent context; you can disclose a mechanical apparatus, for example, by using each paragraph to represent a discrete part or beneficial function. Paragraphing becomes illustrating.

I’m Done

Words inform, but they can also bore. You and your reader have a relationship. Nurture that relationship: present your reader with clean, clear, and meaningful disclosure.

The Author

Trenton Morton

Trenton Morton is a patent attorney and serves as Corporate Counsel at Hydro-Gear Limited Partnership, resident in the company’s Indianapolis facility.

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 as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 16 Comments comments. Join the discussion.

  1. Cathleen Rocco October 4, 2020 2:30 pm

    Bless you. Maybe if people wrote like this, examiners would be more likely to read the application (or at least the headings and topic sentences) and there wouldn’t be so much time wasted responding to office actions that reflect a clear misunderstanding of the invention.

  2. Pro Say October 4, 2020 5:58 pm

    Thanks Trenton!

    I!

    See!

    What!

    You!

    Mean!

  3. Amitkumar Dharia October 4, 2020 6:22 pm

    honestly, this is the best short article I read about how to change “patent drafting neurosis among lawyers.” Among the scientific and technical community are frowned upon and ridiculed for being “not seeing the tree” and not having Technical writing skills.

    I am involved in product development for over 33 years. I am an avid patent reader. Except it is a mechanical and simple art, the art can not be reproduced without due efforts. It is my purpose – lawyers insist they want to draft litigation proof patents. Less than 1% of patents are litigated. Patent lawyers are like make-up artists – in their enthusiasm, they make the original matter unrecognizable to the general public.

  4. Don Baker October 5, 2020 11:43 am

    As a Pro Se inventor and retired engineer and scientist, I write my patent applications like articles or engineering tutorials for technical journals. On my second NPPA, I enthusiastically explained this to my Examiner, announcing my intention to change the way patents are written, and he apparently took offense, immediately working to spike the application. Among other things, he insisted upon a two word phrase “eliminate duplicates” as “the most patentable part” of 20+ Claims. When I naively salted it throughout the revised claims, he used it to attack them as “obvious”. In one memorable e-mail, he concluded that it must be obvious, because he put it into a term search and got 14,000 hits. Whereupon I put “flat earth” into Google and got 11 million. Can you say “super obvious”?
    You have to remember with whom you are dealing. Change at the USPTO is suitable for witch burning. Unless, of course, it’s a PR initiative.

  5. Curious October 5, 2020 12:39 pm

    What’s preventing this sentence from reading as:
    “FIG. 1 shows architecture 100, of an exemplary embodiment(s) of this application.”

    Yawn … hardly my preferred writing style. However, I’m not sure breaking down a highly stylized introductory phrase makes your point. Some junior associate copied that phrase from a patent written by another junior associate who copied from that phrase from a patent written by another junior associate. This is more laziness than bad writing.

    As for headings, they are nice but hardly necessary for a really tightly-written application.

    Your point about paragraphs is one that both patent attorneys and patent examiners should follow. If in doubt, create a new paragraph — even if it is just two sentences.

    By my count, you spent 1265 words (and 19 links) addressing patent application drafting that didn’t address any of the peculiarities associated with drafting a patent application. Rather, your three major points could be summarized as:
    1) write concisely
    2) use headings
    3) have better paragraphing

    And as far as shedding the fluff and flowery words, you could have omitted nearly every one of your links (except the one to Strunk & White) and cut your word count down by at least 75% and still conveyed the same message. Or you could have given us a single paragraph that linked to some generic “better writing” article that has nothing to do with patent applications.

  6. MaxDrei October 5, 2020 1:48 pm

    Advice to patent attorneys from George Orwell:

    “The great enemy of clear language is insincerity. When there is a gap between one’s real and one’s declared aims, one turns as it were instinctively to long words and exhausted idioms, like a cuttlefish squirting out ink.”

    The question is: Do patent drafters behave like cuttlefish and, if so, who is driving them to do so?

  7. ipguy October 5, 2020 3:03 pm

    New patent associates learn the craft of drafting patent applications from the partner(s) who train them. Each partner has their own style of drafting patent applications and the new associate, often doing work for multiple partners, must learn how to draft a particular application in the style of the partner who assigned that particular application to them. Lord help the new associate who confuses which partner prefers which style. At some point, the associate gets their own clients, and drafts their clients’ patent applications as they damn well please. When they are asked to train a new associate, they will train that new associate in the style they have developed. Rinse and repeat.

    “Words inform, but they can also bore.”
    Funny story there. I’m a former Examiner and I read plenty of patent applications that were so mind-numbingly boring to read that my eyes would blur and I would start to fall asleep at my desk. My fellow Examiners and I had a running joke that if reading an application caused you to nod off so that your face hit the top of your desk, the application was a “TKO” and should be immediately granted.

    Out of curiosity, I searched Google Patents and the USPTO website for examples of issued patents with Mr. Morton’s name listed as attorney. I was unable to find any such examples. That may simply be the result of the organizations Mr. Morton worked for having a policy that only listed the law firm or company’s name on the face of the issued patent, and did not list the name of the individual patent attorney who prosecuted the application.

  8. Anon October 6, 2020 9:13 am

    I will have to circle back and fully read the items here, but at a first glance, I would add a bit of caution to Mr. Dharia’s post at 3, in that to think that the lower degree of actual lawsuits is a reason to dispense with legal writing nature of a patent would be a grave mistake – both of logic and consequences.

    I would rebut that it is because of the nature of that legal writing that the presence of actual lawsuits is so low.

    Your view is akin to a thinking process that healthy people eat and sleep well, so it would appear that eating and sleeping well could be dispensed with.

  9. Benny October 7, 2020 11:21 am

    Anon,
    The article is equally applucable to comments on a law blog.
    Perhaps you can explain why I found the phrase “ground engaging rotary propelling device” in a patent claim. Our patent claims also include this device, but we have a different word for it.

  10. Anon October 7, 2020 6:09 pm

    Benny,

    You do not provide enough information for me to respond.

    Sometimes (read that as always) lacking necessary details in the name of brevity is NOT a good thing.

  11. Benny October 8, 2020 12:43 pm

    Anon,
    The claim referred to a novel hydraulic transmission system for a small autonomous vehicle. Apparently the word “wheel” wasn’t fancy enough for the attorney who drafted it.

  12. Amit Dharia October 8, 2020 1:52 pm

    Anon,

    I am not saying that one should not keep potential litigation in mind all the time while preparing an application. The point is unclear or indefinite language is used purposefully to expand the scope or to make it difficult for others to practice /verify claims. Does not simple and clear language make patent less prone to litigation or rejections? I have seen patents where a single chemical is defined by corporate lawyers in pages after pages with other names leaving it to reader to find which of those listed will actually work!! Reading patents should not be difficult. USPTO has limitation on number of independent claims, they should also put limitation on the number of total pages!

  13. ipguy October 8, 2020 4:01 pm

    @12
    When you say the “USPTO has limitation on number of independent claims,” what are you referring to?
    37 CFR 1.16(h) sets forth the excess claims fee for each independent claim in excess of three.

  14. Anon October 8, 2020 7:09 pm

    Mr. Dharia,

    Thankfully, our Sovereign still has the view that the inventor (the applicant) should be able to express their disclosure as they see fit.

    Can a certain amount of game-laying occur?

    Sure.

    So what? These are legal documents.

    What area of ANY legal documents are without their ‘tricks of the trade?’

    Any?

    (thanks ipguy – I took Mr. Dharia’s limit as being more indicative of a desire to control, and less as hard and fast as you did, but your view strengthens the counter point that our system is NOT built for the bureaucrats or even for the ‘public readers,’ but that the focus is on the inventor and their exchange of material for the turning of an inchoate right into a full legal right.

  15. Benny October 9, 2020 2:06 am

    Anon,
    The inventor doesn’t express the disclisure. The inventor’s attorney twists the disclosure into a legal pretzel, to the extent that it is as near as dammit to incomprehensible. Is this “a certain amount of game playing?” .Sure. But the system wasn’t set up so that attorneys could play games.

  16. Anon October 10, 2020 1:22 pm

    Benny,

    You clearly express your mere opinion of your desired state, which has nexus with neither reality nor the legal system.

    Keep in mind that at the time of filing the inventor DOES commit to the claims and specification. Your intended denigration of ‘attorney twist’ is inopposite to reality (leastwise in your attempted distinction).

    If you as the inventor think otherwise in vie of what an attorney has prepared as a legal document, it is up to YOU to apply your ethics and not sign.

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