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My experience working as a patent examiner agrees fully with the title: legal texts tend to be hard mostly because they're poorly written. (DOC lawyers make me
by _ggwa 4y ago
My experience working as a patent examiner agrees fully with the title: legal texts tend to be hard mostly because they're poorly written. (DOC lawyers make me add this: This post is just my personal opinion, not that of the USPTO, DOC, US govt., etc.)
I've been trained in patent legal terminology, which isn't that bad. Patent documents are still frequently difficult to understand. I have one application on my docket where I'm going to have to rewrite one of the claims to understand what it's saying, and no, that shouldn't be necessary... And the situation with patent documents is worse than the situation described in the abstract as many attorneys write vaguely.
The argument that "lawyers are the intended audience" isn't legally sound either, as under 35 USC 112(a), patents are supposed to "enable a person skilled in the art [...] to make and use the [invention]". If an attorney argues that patents aren't supposed to be understood by non-attorneys, they're wrong, full stop.
Unfortunately, I'm not really allowed to do 112(a) enablement rejections. I'd do those sorts of rejections frequently if I could, but I think I can count the number of times I've done 112(a) enablement rejections on one hand. The law in other countries seems more strict than in the US. I'm told that Japan in particular takes enablement a lot more seriously than the US does.
- johndhi 4y agoIf the examiners can't enforce enablement, doesn't that mean it isn't a true requirement? And that in fact patents wind up being drafted not for the layperson?
- _ggwa 4y agoYes, my personal opinion is that enablement is not a true requirement in the US. I think a lot of problems with the current patent system would be helped by making the law stricter about enablement and also giving the USPTO more resources (money, in particular) so that examiners can enforce the enablement requirement. Also, to be clear: Patents legally aren't for laypeople. They're for people working in the field of the invention.
- AstralStorm 4y agoMost patents omit crucial details to actually reproduce the invention. This is especially important in case of pharmaceutical and chemical patents. Full hardware and conditions are not documented nearly as well as a typical grad paper, which already tend to have holes. "Software" patents, often similarly omit "irrelevant" modules. Chocking it to "a specialist can make the module from scratch" is insufficient and should never be allowed. In addition, a lot of the patents, due to lacking the details, are obvious as written to a specialist, just the details are not.
- AlbertCory 4y agoExcellent question. Enablement is a joke in software patents. I actually did research on this and "written description", and (from memory) some judges have said that you need "structure" in your application, and having a box on your diagram labelled "access control" can be that structure. A person of ordinary skill in the art could construct it from those words. There's no need to provide any further details on the access control. Before someone points this out: obviously if "access control" is not part of the claimed invention, then you don't need to specify it beyond a box. But then you probably wouldn't have put it in the diagram in the first place. There's an empirical test that the PTO could do: take some software patents and give them to a large sample of people skilled in the art (which, if I remember correctly, is often two years of relevant experience plus a BS degree in computer science). "Relevant experience" would mean "in the field of the patent," e.g. if it's automobile battery management software, experience in missile guidance doesn't count. See how many are able to make and practice the invention with a "reasonable amount of experimentation."