!20000925 Are patent abstracts now being written meaninglessly?
I received a fair number of comments from patent lawyers on how their
style is increasingly to write "dumb" patent abstracts. More on this
below. But first, two bits of PTO gossip:
Greg,
This rumour is circulating in our UK firm:
"US Associates have told me that the USPTO is considering initiating
a policy where an applicant can request that a certain Examiner NOT
examine a case. This will obviously be of interest when filing a
continuation and the existing Examiner is being difficult."
Do you know anything about this? With current Examiner turnover
rates it might it be easier for an applicant to stall their
application and wait for the Examiner to leave the USPTO.
and
Greg - An interesting memo just came around:
"Please be advised that the PTO's warehouse in Franconia, VA roof
has collapsed and is expected to be closed until late next week.
The PTO has two warehouses, the other is in Springfield, VA, if
your file is located at the Franconia site expect possible delays
of a week and half to two weeks. We will continue to monitor this
situation and will forward file histories, as soon as they become
available from the PTO.
Painful to do so, but if true, the PTO should post items like the latter
somewhere on their Web site, especially given the difficulty of playing
"52 Pickup" with filewrappers.
====================
ARE PATENT ABSTRACTS NOW BEING WRITTEN MEANINGLESSLY?
Recently I sent out a PATNEWS about patent abstracts with the following
two questions posed:
So, let me do a quick survey of patent prosecutors reading
PATNEWS? Are you guys and gals writing abstracts that are
increasingly shorter and more vague than abstracts of the
past? Is the CAFC at fault?
I got back a variety of answers from patent prosecutors, as follows with
those comments reflecting shorter abstracts first, then those comments
for longer abstracts. But if I may be sarcastic, a summary of what is
below is:
Abstracts are increasingly vague. Specifications are
increasingly non-enabling (not that the examiners [have
time to] read them). Claims are overly broad. Cited
prior art increasingly inadequate. Patent quality
ignores the public's constitutional needs. Courts feel
free to ignore some patent laws.
And the best part of this scam - absolutely no one is at fault, because
no one is in charge, the inmates are running the asylum.
Greg Aharonian
Internet Patent News Service
========================================
Greg,
A well informed attorney doing a good job will usually write an
abstract that is useless for searching or any other purpose.
==========
I'm a patent attorney and actually was not familiar with the courts
tendency to use the abstract to narrow the claims. However, now that
I am informed of that, I owe a duty to my clients to start writing
those one sentence abstracts that just reiterate the broadest claim.
==========
Greg,
Our practice is consistent with the view of the patent attorney posting
below. We have always encouraged brief abstracts because we never believed
the courts would follow the CFR. The recent CAFC decision proved us right.
==========
Yes, I am writing shorter and more vague abstracts in light of the
CAFC's comments in Hill Rom.
==========
>Are you guys and gals writing abstracts that are increasingly shorter
>and more vague than abstracts of the past? Is the CAFC at fault?
Answers: Yes. Absolutely.
==========
I agree with the trend towards shortening abstracts. However, in addition
to not wanting for the text to be held against the patent at a later time,
there is the more elementary fact that the examiners themselves many times
require that we patent attorneys shorten the abstract. So, we have taken
to write VERRRY short texts.
==========
>Are you guys and gals writing abstracts that are increasingly shorter
>and more vague than abstracts of the past? Is the CAFC at fault?
Yes and Yes.
==========
Greg,
I am a patent attorney and I agree with the attorney's comments in your
9/19 news. I try to write a meaningful abstract, but due to court
decisions, it must be as broad as the broadest claim.
==========
Yes. Certainly. The abstract I write is as short and vague as possible.
Usually one or two sentences from the Brief Description of the Invention,
verbatim. For all the reasons stated in your piece.
==========
>Are you guys and gals writing abstracts that are increasingly shorter and
>more vague than abstracts of the past?
No. I still try to fulfill the purpose of the abstract. It's unlikely that
any of my patents will ever be litigated.
>Is the CAFC at fault?
Probably. Many of their decisions seem to me to be faulty. I'm especially
incensed when the one (former) patent attorney on the panel dissents (with
a reasonable argument) from a majority who've never drafted or prosecuted
a patent.
==========
Greg,
YES I (a patent attorney) am writing much shorter abstracts than I
used to. I am also writing shorter summaries, claims, and specifications
than I used to. I would like to think that my abstracts are not more vague,
just more directed to what the inventors consider the broadest aspect of
their invention. Perhaps one could say that the abstract has become more
focused on a bigger target.
The courts seem to be going to great lengths to limit the scope of
claims by using language in the specification, be it abstracts, objects
listed in the summary, or statements of benefits achieved by the invention.
I feel like a criminal defendant when I write applications -- anything I
say can and will be used against me. I (and the inventors) have a duty
to provide an enabling description including an indication of best mode,
anything beyond that is becoming more and more dangerous.
This subject also relates to your crusade about prior art. It used
to be norm (or at least not unusual) to provide short statements about known
prior art, either in the background or in a statement attached to an IDS.
I, and many others, no longer do this for fear of saying something that some
attorney or judge could use to limit the scope the patent.
==========
You know my vote, but its also true that the applicant has no vested
interest in writing a useful abstract regardless what the courts say.
==========
Second, as for the abstract, I agree with the lawyer you provided you with
the response below. I was somewhat shocked by the CAFC decision. I say
somewhat because the CFR is not law -- rather, it is merely rules set forth
by an administrative body of government. Congress gives authority to an
administrative body to set forth rules that govern practice before it. The
actual law is that as set forth by Congress -- specifically 35 USC. The
CAFC is concerned with interpreting the law. This now includes how claims
should be construed. See, for example, the Vitronics claim construction
case. It appears that the CAFC is simply expanding on the Vitronics
lineage of cases.
What is interesting to note that as far as the law is concerned, the only
thing specifically written as to the written description and claims is in
35 USC 112. Paragraph one of 35 USC 112 states that there be a written
description, that (1) it be clear, concise, and exact (2) that it enables
one of skill in the art to practice the invention, and that (3) it set forth
the best mode practicing the invention at the time of filing. Paragraph
two of 35 USC 112 states that the written description end with claims that
particularly point out and distinctly claim that with the applicant regards
as his invention. Note that neither the CAFC nor the PTO seems to drill
down on this aspect of the law. Rather, they avoid it as best they can.
Consider that most examiners probably never read the written description.
They only review the claims. Hence, no one (or a substantial majority) in
the PTO even checks if the specification supports the claims or even if the
specification is enabling to begin with. Fast forward now to litigation --
the patent is PRESUMED valid. Now, when a defendant goes to challenge the
patent based on 35 USC 112, they are told that the patent passed the
technical wherewithall in the PTO. It's like a cat chasing its tail.
Until the legal system (either Congress, the courts, or the administrative
agency (PTO)) bears down on 35 USC 112, you will probably in business for
a LONG LONG time ranting and raving about crummy patents.
==========
I agree with the attorney's comments. Yes it is the FedCir's decision
in Hill-Rom that abstracts can be used to interpret the claims that has
contributed to this backlash. The court specifically held that Rule 72
only applied to the PTO, not to the Courts.
"The purpose of the abstract is to enable the Patent and Trademark Office
and the public generally to determine quickly from a cursory inspection
the nature and gist of the technical disclosure. The abstract shall not
be used for interpreting the scope of the claims."
This is absurd, since the purpose of the abstract is to let the public
know the content of the disclosure, and both the courts and the PTO act
on behalf of the public, and should be bound by the rule.
==========
Well, not "increasingly shorter and more vague" over the course of my
career (my abstracts have always tracked my claims as closely as
possible), but shorter than is traditional, and too divorced from the
technology to be helpful to an examiner.
Yes, Federal Circuit decisions (Hill Rom being only the culmination of a
line) are exactly the problem. I've shifted to writing my abstracts and
specifications to be as unenlightening as possible with respect to
construing the claims (while maintaining the full value of their proper
technological teaching function). In the 1980's, the Federal Circuit
construed patent claims at face value, a "what you see is what you get"
basis -- claim construction was pretty predictable. Since 1997, the Federal
Circuit has shifted to a "import random amounts of specification into the
claims" footing. I draft my applications to make this as difficult as
possible.
Any patent prosecutor that doesn't adjust is just not paying attention.
The new rules of claim construction also lead to real havoc throughout the
system -- the lower courts have no consistent guidance from the Federal
Circuit, so the outcome of litigation and appeal is just unpredictable.
==========
In reply to your query on whether I and my colleagues are writing
abstracts short and non-specifically, YES, for the reasons well put
by the person you quoted.
It could be argued that to do otherwise would be not acting in the best
interests of our clients, the applicants. Remember, the clients of the
patent attorney are the people he's representing. The greater public is
the ultimate client of the PTO. In some critical cases, such as the Zurko
decision, the PTO shows that it has no concern for the good of the public,
but just wants to get unwarranted deference. (funny, my 5 year old wants
that too.) So the PTO keeps slashing examiner resources and ability to do a
quality job, while demanding higher "productivity", meanwhile taking Zurko
to the Supreme Court, which miscalled it and forced the CAFC to give the
same level of deference to PTO examination calls that is given to agencies
that actually do a quality job, populated with employees who actually stay
there more than a couple years.
Oh, I forgot. the PTO puts out nice color glossy brochures, saying how
happy their "clients" are. I guess the clients who answered the survey
were some of the few who are not in court litigating the lousy, unsearched,
interfering patents that keep getting issued. And please, the fact that
unsearched patents are issued is not the "fault" of patent attorneys. Sorry
to repeat myself, but : "Remember, the clients of the patent attorney are
the people he's representing. The greater public is the ultimate client
of the PTO." It is the PTO's job to search for prior art. It costs
thousands for me to do a good patentability search for a client, and that
is supposed to be taken care of at the PTO. And given the cost of
litigating, an issued patent is very valuable to one of my clients; it
usually forces a license rather than the enormous cost, risk and
uncertainty of litigated challenge.
==========
Hi Greg,
In response to your question regarding abstracts, I am aware of the recent
trends in the law, but have not changed the way the I write my abstracts
specifically for that reason. I have always simply mirrored the language of
my Summary section, which mirrored the language of the claims. In the past,
however, I would include a "plain English" recitation of the broadest claim
and than examples of the "preferred" embodiment. Unfortunately, the use
of the term "preferred" in the abstract was objected to by a number of
examiners as improper. Therefore, I have eliminated these examples, leaving
only the recitation of the broadest claim. This method eliminates the need
to later amend, making the process cheaper for my clients, and eliminates
the risk that the claims will be limited by the abstract.
In closing, I would like to voice my support for the idea of the Examiner
writing the abstract. This prevents the "sandbagging" in which attorneys
sometimes engage, eliminates any presumption that the applicant intended to
limit the claims through the abstract, and, of course, reduces the cost to
the client. Win-Win.
==========
Re: abstract angst
Method for writing an abstract whilst conserving attorney time and not
getting anxious that something bad will happen in future litigation:
1. Write claim 1.
2. Highlight it on your word processor.
3. Select the "copy to clipboard" feature
4. Scroll down to the abstract portion; click to put your cursor there.
5. Select the "paste from clipboard" feature.
6. Edit as appropriate to make it look a little more reader friendly and
less than 150 words, if possible.
7. If you have a long formula or something that takes up a lot of space
that you need to leave out, be a tiny bit creative and think of a
generic way to refer to it that is consistent with the way it is
referred to elsewhere in the specification.
8. If the examiner objects to any of the legalese, be a tiny bit
conciliatory and take it out. Do not spend hours writing an argument
against it, whining to coworkers, clients, or your spouse, or reading
CAFC cases on the subject. You can think of different words to use
that are not limiting. I know you can.
9. Try to enjoy your life more.
==========
The patentese abstract is just laziness and habit. Abstracts
should be useful to your client. A patentese abstract doesn't really
serve any purpose since it really doesn't convey any meaning (but I've
heard the story you posted before, and still don't buy it).
I want the CEO of my client to understand what they are filing
on, the abstract is a powerful tool for conveying that.
Ditto for when you notice someone with the patent, I want the
CEO of the receiving company to understand what they have been hit with
and feel viscerally they might have to pay money.
Also, if I read some of the newly promulgated rules for business
goals correctly, the length of abstracts will be shrinking to a maximum
of 150 words from 250, a 60% reduction.
==========
I've been doing this for a number of years now, and all the debate
I've ever heard among practitioners on this issue is how to write an
abstract to get the best search. I've heard some say just translate your
broadest claim into English and paste it in as an abstract. I've heard
others say you do this with a claim of medium scope. Either way, it's
always been about getting a good search.
I don't really think the CAFC is at fault. How can they use the
abstract against you if it's the same scope as your broadest claim? But,
keep in mind they are not bound by the regulations -- they can use the
abstract to construe the claims regardless of what the federal regulations
say.
And, if it's so important as a searching tool, why does the USPTO
keep such a short leash on the length. I understand from the MPEP that it
has something to do with how long they can get it formatted for printing.
But if it's so important, don't you think they could have taken care of
that before implementing the printing process? Sounds like the tail
wagging the dog.
==========
Greg,
Your last column had a note from a patent attorney who only writes a
one-sentence abstract because he is worried about the abstract narrowing
his claims in litigation and because he doesn't want an Examiner to find
his patent. That attorney is a selfish, narrow-minded, paranoid,
obstructive SOB who is unfit to write patent applications, let alone
practice law. And you can print that, but please keep it anonymous.
I always write a lengthy (as long as possible) abstract that sums up
what is disclosed and claimed. Why? Because it is the right thing to do.
Because that is what an "abstract" is. Because that is traditionally how
it is done and how I was trained. Because we have taken an oath as
attorneys to uphold the canons of ethics not only for the PTO but also for
the state. Because we are obligated to facilitate the patent examination
process and make things easier for the Examiners, this being a higher
duty than that owed to our clients.
Besides, a correct abstract is required by the MPEP and the CFR states
that it cannot be used to interpret claims. There is no case where an
abstract has been used to interpret claims. There are some cases that
hint around it, but they are incorrect. If the issue went to the Supreme
Court the CFR would be upheld. And in the long run, what are the chances
that a patent you write will be found not infringed and something bad will
happen to you personally because of the abstract? Probably about .00006%.
It simply isn't worth worrying about or worth trying to screw the Patent
Office over it.
==========
Although I was aware of the strategy of writing poor or vague abstracts in
order to prevent third parties from locating a patent, I've never given the
matter much thought. In writing an abstract, I try to present a basic but
fair description of the invention. I find patent abstracts useful,
particularly in the early stages of a patent search. Abstracts are also
useful for quick screening searches, where you just want to get a general
idea of the state of the prior art.
With regard to the view that abstracts should intentionally be poorly or
vaguely worded in order to protect the interests of your client, this view
seems to run counter to the objectives of the patent system. Disclosure of
the invention is the main reason why the patent grant exists, and is the
reason why patent applicants have to comply with the description, enablement,
and best mode requirements. If the public cannot locate a relevant patent
through a competent search of the abstracts, the patentee has effectively
thwarted the main objectives of the patent system. I know how much my clients
can benefit from a good patent search, and I know how much they can be
damaged by patents that were not discovered in a patent search. In exchange
for a patent grant and the potential benefits of participating in the patent
system, I think patentees (including my clients) should provide a reasonably
worded abstract, regardless of the present state of Federal Circuit law.
It also seems plausible that refusing to rewrite an abstract could adversely
affect your client's patent prosecution. If you are unwilling to compromise
with an examiner about the wording of an abstract, the examiner might
legitimately question your reasonableness, including the merit of positions
you are taking with regard to more substantive aspects of the case.
Additionally, unless you are representing a wealthy client, most patent
applicants do not want you to bill them for matters that are not essential
to their case.
==========
Greg,
On the abstract question, check out the EPODOC entry for GB2299425. The
abstract field (AB) is particularly instructive. The entry says, and I
quote in full:
1/1 - (C) EPODOC / EPO
PN - GB2299425 A 19961002
PR - WO1995AU00088 19950224; AU1994PM04044 19940224; AU1994PM09911
19941207
AP - GB19960013203 19950224
DT - **
EC - G06F17/60R (N)
IC - G06F17/00 ; G06F155/00
IN - HALL GRANTLEY THOMAS AUBREY
PA - HALL GRANTLEY THOMAS AUBREY (AU)
TI - Specified return determinator
AB - am not the abstract. Please delete me and type in the abstract. am
not the abstract. Please delete me and type in the abstract. am not the
abstract. Please delete me and type in the abstract. am not the
abstract. Please delete me and type in the abstract.
==========
Greg-
Looking at this from an EPO perspective: I have seen no evidence of
systematic abuse of abstracts and titles here in Europe, but it has to be
said that quality varies widely from applicant to applicant. Some applicants
are extremely terse (I have seen the title 'Disk drive' or similar applied
to inventions ranging across the whole of the technology regarding disk
based data storage and similarly unhelpul abstracts), sometimes to the
point of obscurity, others verbose, also to the point of obscurity.
A few are extremely well constructed and state the invention clearly.
That being said, quality is often poor, whether by design or otherwise
(JP or KR applicants, for instance, or at least their translators, often
use peculiar forms of words to describe quite well-known things). Agents
often completely ignore the obscurity so introduced.
Here at the EPO we are empowered to rewrite both abstracts and titles
and, indeed, exhorted to do so. The rub, however, is that no time is
allocated for this procedure, so the conscientious examiner who does so
awards him/herself a time penalty in return for a warm feeling inside at
having served the wider community and (possibly) the likelihood of more
easily finding the document later using keywords. Given that we are also
under considerable pressure to increase productivity... well, you know how
it works.
Equally, of course, the EPC (specifically Rule 33) requires that titles
and abstracts as filed conform to certain standards. These standards are
almost never enforced, as the mechanism for doing so is absent. That is,
if the abstract is actually missing, receiving section will require the
applicant to provide it. If it's just crap, however, there seems to be no
codified manner for the search examiner to require the applicant to change
it and he or she will have to do it himself - or not.
As usual, management are very happy to see the fruits of the investment
of our time and intellectual effort on their behalf, but unwilling to
contribute to the cost of the investment.
This archive was generated by hypermail 2b29 : Fri Aug 10 2001 - 15:58:53 EDT