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I'm a patent examiner and I can't agree with "It's very precise if you can learn to read it". A large fraction of patent applications I've worked on are unclear

by _ggwa 4y ago

I'm a patent examiner and I can't agree with "It's very precise if you can learn to read it". A large fraction of patent applications I've worked on are unclear. I even wrote a linter to help catch some problems. (DOC lawyers make me add this: This post is just my personal opinion, not that of the USPTO, DOC, US govt., etc.) Edit: I will agree that patent claims can be precise, but so can normal English. I think patent claims are too often not precise.

dctoedt 4y ago
I'm curious what you think about a post I did ten years ago, on "defying" the Single Sentence Rule when drafting patent claims: https://www.oncontracts.com/multi-sentence-claims/ https://www.oncontracts.com/multi-sentence-claims/
- _ggwa 4y ago
  Your proposed claim format would greatly improve clarity. I particularly like the definitions and examples being included in the claims. Too often patent attorneys define terms contrary to their ordinary meaning. I might not think to check the specification for a definition, and end up wasting a lot of time. With that being said, I sometimes do 112(b) rejections for exemplary language in claims as they can make the claims unclear (for example: "for example"). I think if the claim or specification was written to make it clear that the examples are just examples and not limiting the claim then it would be okay. Reference numbers are common in patent claims outside of the US, but it seems that US patent attorneys worry that adding reference numbers would limit the breadth of the claims. There's no statute or USPTO rule against reference numbers in the claims and I'm not aware of any case law justifying not adding them. Not having reference numbers in the claims is a loss for clarity, particularly when the claims use different terminology than the specification (which is unfortunately common). (Again, this is just my opinion, not that of the USPTO, US govt., etc.)
ok_dad 4y ago
How do you become a patent examiner? Could anyone do it for their area of expertise or is it more like being a specialized researcher specifically for patent applications?
- _ggwa 4y ago
  Apply on USAJOBS: https://www.usajobs.gov/Search/Results?k=patent+examiner https://www.usajobs.gov/Search/Results?k=patent+examiner Looks like the USPTO is hiring in multiple areas right now. It might take a couple attempts to get hired. I was rejected the first time I applied. The USPTO doesn't care much about an applicant's background aside from whether the applicant has a technical degree. New examiners with expertise in particular areas probably won't be assigned to their areas of expertise, even if there's a strong demand for examiners in those areas. Yes, this makes no sense, but it's how the USPTO operates at the moment. I had zero experience with the areas I was assigned before I became an examiner. (Again, this is all just my opinion, not that of the USPTO, US govt., etc.)
rozab 4y ago
Wow, this is fascinating. Do you know how many examiners are using this tool? Why did you choose to make the default configuration more nitpicky than yourself, and is this the config you use when running the tool?
- _ggwa 4y ago
  I'm not aware of any other examiners who use this tool. I did ask an examiner I know to try it and they did, but they didn't find it useful. They suggested that the warnings that plint returns are more relevant to the areas I examine than what they examine, which is fair. They also found my syntax for antecedent basis checking to be confusing. The personal reason why I made it nitpicky is that there's a huge variability between examiners in terms of which rejections to make. I'm a junior examiner, so everything I do has to be approved by someone else. They might tell me to remove a certain rejection because they don't have a problem with that, and to add some other rejections for things they care about. In my view, it would be better to get a wide range of possible rejections upfront and then think about which ones the person signing off on the office action cares about. The alternative is going back and forth about which rejections to do, which would take more time. The JSON configuration file I use filters out a bunch of the rules because the person who signs my office actions right now doesn't care about those ones, or I don't care about those ones. I need to update the README file to say that. Also, an attorney writing a patent application has much less information about which rejections are likely than I do. So from the perspective of an attorney, I think being nitpicky makes sense too. Not that I'm aware of any attorneys who use plint. plint might not even be nitpicky enough. Recently r/patentexaminer had a poll [0] where about 6% of examiners said that the term "at least one" was indefinite... which is astounding to me as I think that's totally fine from a definiteness standpoint. As I recall, I have some warnings in my linter for enablement on that in case it's not clear how having two or more of something would work if only one is disclosed. But usually "at least one" is fine from an enablement perspective. [0] https://www.reddit.com/r/patentexaminer/comments/xfvsrs/at_least_one_poll/ https://www.reddit.com/r/patentexaminer/comments/xfvsrs/at_l... (Again, my posts here are only my opinion, not that of the USPTO, US govt., etc.)

by _ggwa 4y ago

dctoedt 4y ago

I'm curious what you think about a post I did ten years ago, on "defying" the Single Sentence Rule when drafting patent claims: https://www.oncontracts.com/multi-sentence-claims/ https://www.oncontracts.com/multi-sentence-claims/

_ggwa 4y ago
Your proposed claim format would greatly improve clarity. I particularly like the definitions and examples being included in the claims. Too often patent attorneys define terms contrary to their ordinary meaning. I might not think to check the specification for a definition, and end up wasting a lot of time. With that being said, I sometimes do 112(b) rejections for exemplary language in claims as they can make the claims unclear (for example: "for example"). I think if the claim or specification was written to make it clear that the examples are just examples and not limiting the claim then it would be okay. Reference numbers are common in patent claims outside of the US, but it seems that US patent attorneys worry that adding reference numbers would limit the breadth of the claims. There's no statute or USPTO rule against reference numbers in the claims and I'm not aware of any case law justifying not adding them. Not having reference numbers in the claims is a loss for clarity, particularly when the claims use different terminology than the specification (which is unfortunately common). (Again, this is just my opinion, not that of the USPTO, US govt., etc.)

ok_dad 4y ago

How do you become a patent examiner? Could anyone do it for their area of expertise or is it more like being a specialized researcher specifically for patent applications?

_ggwa 4y ago
Apply on USAJOBS: https://www.usajobs.gov/Search/Results?k=patent+examiner https://www.usajobs.gov/Search/Results?k=patent+examiner Looks like the USPTO is hiring in multiple areas right now. It might take a couple attempts to get hired. I was rejected the first time I applied. The USPTO doesn't care much about an applicant's background aside from whether the applicant has a technical degree. New examiners with expertise in particular areas probably won't be assigned to their areas of expertise, even if there's a strong demand for examiners in those areas. Yes, this makes no sense, but it's how the USPTO operates at the moment. I had zero experience with the areas I was assigned before I became an examiner. (Again, this is all just my opinion, not that of the USPTO, US govt., etc.)

rozab 4y ago

Wow, this is fascinating. Do you know how many examiners are using this tool? Why did you choose to make the default configuration more nitpicky than yourself, and is this the config you use when running the tool?

_ggwa 4y ago
I'm not aware of any other examiners who use this tool. I did ask an examiner I know to try it and they did, but they didn't find it useful. They suggested that the warnings that plint returns are more relevant to the areas I examine than what they examine, which is fair. They also found my syntax for antecedent basis checking to be confusing. The personal reason why I made it nitpicky is that there's a huge variability between examiners in terms of which rejections to make. I'm a junior examiner, so everything I do has to be approved by someone else. They might tell me to remove a certain rejection because they don't have a problem with that, and to add some other rejections for things they care about. In my view, it would be better to get a wide range of possible rejections upfront and then think about which ones the person signing off on the office action cares about. The alternative is going back and forth about which rejections to do, which would take more time. The JSON configuration file I use filters out a bunch of the rules because the person who signs my office actions right now doesn't care about those ones, or I don't care about those ones. I need to update the README file to say that. Also, an attorney writing a patent application has much less information about which rejections are likely than I do. So from the perspective of an attorney, I think being nitpicky makes sense too. Not that I'm aware of any attorneys who use plint. plint might not even be nitpicky enough. Recently r/patentexaminer had a poll [0] where about 6% of examiners said that the term "at least one" was indefinite... which is astounding to me as I think that's totally fine from a definiteness standpoint. As I recall, I have some warnings in my linter for enablement on that in case it's not clear how having two or more of something would work if only one is disclosed. But usually "at least one" is fine from an enablement perspective. [0] https://www.reddit.com/r/patentexaminer/comments/xfvsrs/at_least_one_poll/ https://www.reddit.com/r/patentexaminer/comments/xfvsrs/at_l... (Again, my posts here are only my opinion, not that of the USPTO, US govt., etc.)