TIME TO CODIFY PATENT APPLICATION DRAFTING? Dennis from Patently-O brings up an interesting point, raised during a round-table discussion in Corporate Legal Times, in that one can write a patent application today that is almost indecipherable, and still come out of the patent office with a patent.
Foreign-filed applications, especially those with minimum edits, are often the fodder for first-year associate snickering (or groaning, depending on the case) over the convoluted sentence structure, and run-ons that pervade these applications. However, domestic filings are often messy as well, and the constantly changing law coming from the Federal Circuit gives attorneys conniptions when trying to draft applications to fit the law-du-jour. For example:
Recognizer of content of digital signals
Described herein is a technology for facilitating the recognition of the content of digital signals. This abstract itself is not intended to limit the scope of this patent. The scope of the present invention is pointed out in the appending claims.
This is a reaction to Hill-Rom Co. v. Kinetic Concepts, Inc., 209 F.3d 1337, where the CAFC found nonbinding a PTO rule that abstracts were nonlimiting. Another favorite (which I will confess to using in applications) is:
Although the invention has been described in language specific to the structural features and/or methodological steps, it is to be understood that the invention defined in the appended claims is not necessarily limited to the specific features or steps described. Rather, the specific features and steps are disclosed as preferred
forms of implementing the claimed invention.
Do statements like this have legal significance? Probably not, but there is little in the caselaw that shows otherwise.
On top of this, embodiments in an application should described as generically as possible to establish a maximum scope of equivalents, and any definitive language needs to be tempered to maintain that scope.
Also keeping in mind that the application will be reviewed by and Examiner, and possibly (a) an administrative judge, (b) an Article III judge, and/or (c) a jury (possibly with less-than-a-high-school-diploma-education), and your application now serves a plurality of masters. As they say, when you try to please everyone, you end up pleasing no one.
Perhaps additional reform is in order - maybe the USPTO (or even Congress) should think about putting language into the C.F.R./U.S.C. to codify parts of specification drafting . . .