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  IP Issues of Interest to High Tech Companies
Vol 3 Issue 5 May2003

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Indicate Precisely What You Mean to Say

Tip of the Month

IP Links of Interest

On-Line Patent Glossary

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Directions is a newsletter from TechRoadmap Inc. discussing intellectual property issues and ideas. We hope to stimulate you to examine and improve your own IP practices. (You can change your subscription options with the link at the bottom of the page)

After reading through Appeals Court decisions for the past 2.5 years I've come to the opinion that, for the most part, the Justices on that bench try to do what's right. Whether addressing a patent infringement suit or deciding on claims construction, the Court seems to decide who deserves to win and then justifies the decision. Sometimes, however, the Court cannot save you from your own mistakes. With apologies to the Beatles, read "Indicate Precisely What You Mean to Say" to learn why it's important to have an interested and knowledgeable party, like TechRoadmap, help you review your patent attorney's work.
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  • Indicate Precisely What You Mean to Say
  Anyone who has ever written a paper or article knows how hard it is to proofread and review one's own writing. I'm betting there is a typographical or grammatical error in this column, even though I read it over several times before sending it out. (Yes, you can email me if you find an error, no, there is no prize). When it comes to your patent application a recent Appeals Court decision shows that even a small, obviously-in-error, problem in the text might result in the invalidation of one or more claims, greatly reducing the value of your patent. To learn how careless proofreading cost Allen Engineering several of their claims....read on...

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  • Tip of the Month
 
Make the investment in time (or hire someone else) to peruse the draft patent application your attorney sends you. Be sure to check:
  • Claim terminology 1 - The terms used in the claim should be the same as the terms used to describe your invention in the specification.

  • Claim terminology 2 - As far as possible terms in your claims should be used in their ordinary "dictionary" meaning. If you need to use a word in an unusual way, be sure it is defined in the specification.

  • Watch out for cut-and-paste syndrome - It's easy to over- or under-select when you cut and paste; actually read what's on the page, don't assume it's a correct replica of what you intended.
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  • IP Links of Interest
  US Patent office - Searchable database of all US Patents and, now, published patent applications.
The Patent Cafe - an on-line source of interesting insights into current IP issues.
EKMS Inc. - a company with whom we've worked that provides a range of IP management services including portfolio analysis, deal-making, and process improvement.

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  • On-Line Patent Glossary
  Industry's Best Glossary
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  • Indicate Precisely What You Mean to Say - continued
 

Proofreading is a tedious task and proofreading patent applications can be particularly difficult because of the formalisms of patent examination. To proofread an application successfully, the reader must come to the document with a fresh mind, an understanding of the technology, and the discipline to attend to the details. Like any author, the patent attorney almost certainly fails the first test; he or she knows what was supposed to be on the page. Inventors, on the other hand, often become bored by the dry patent prose describing their inventions and will rubber stamp an application just be done with the task.

Allen Engineering filed for and was granted patent US5,108.220 for a concrete riding trowel (a machine used to smooth freshly poured concrete) which apparently had significantly improved steering responsiveness. A competitor, Bartell Industries, started manufacturing and selling a similar riding trowel, prompting Allen to sue, successfully, for infringement. Bartell appealed, pursuing its claim that Allen's patent was invalid to the Appeals Court.

The invalidating flaws in Allen's claims were, unfortunately, not flaws of logic, not flaws of intelligence, but flaws in proofreading! In one claim, the text simply ends mid-sentence ("...coupled to said gearbox means by rigid") while in other claims the word "perpendicular" is used instead of "parallel". In the former case, there is no argument that can restore the missing words; in the latter, however, Allen attempted to argue that the operation of the steering gears was properly described in the specification and that it would be clear to anyone skilled in the art what the invention really was.

The Court disagreed. It is the responsibility of the inventor to "particularly point out and distinctly claim" what his invention is, it said. It is not the job of the courts "to rewrite claims to preserve their validity". Further, it is of no importance that the contradiction (between the claims and the specification) is obvious; the error in the claims "is not rendered unobjectionable merely because it could have been corrected." [emphasis in the original] "Here, it is apparent from a simple comparison of the claims with the specification that the inventor did not regard [the claimed invention] to be his invention. Allen admits as much." Case closed.

In an invention filled with planes and axes and shafts and rotations it is not surprising for someone to write "perpendicular to a plane" in place of "perpendicular to the axis normal to the plane"; what is unfortunate is that no inventor proofread the claims with enough care to catch this type of error... or even a claim that stopped mid-sentence.

Newsletter copyright 2003, TechRoadmap, Inc. Nothing in the preceding articles should be construed as legal advice. TechRoadmap Inc. serves as an interface between companies and their legal counsel.

 
 


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