Patent Law

Enablers

By Gary Odom and Jordan Kuhn

There appears to be a rampant addiction to poor claims drafting, injecting claims with vague language, unnecessary legalese, and unbounded scope. This addiction spirals downward into a vat of confusion during prosecution, and eventually hits rock bottom during litigation as judges try desperately to resuscitate claim meaning. Examiners refuse to help, acting as enablers to this dangerous obsession.

A prosecutor holds the responsibility to draft claims "distinctly claiming the subject matter," staking terms with either definitional support from intrinsic evidence, or plain meaning in context of the claims. More importantly, it is an examiner's responsibility to enforce this requirement.

During claim construction, judges are too often forced to review prosecution history, hunting for clues of applicant intent. Judges shouldn't have to do this. They should instead construe the claims as written, setting aside prosecution history. If the claims drafter made a mistake, too bad.

Unfortunately, under the current system, this may excessively punish the applicant, since they are not entirely to blame. Years of lax §112 ¶2 examination has led to claim language that appears as written by squirrels on acid. Instead of rejecting claims that do not distinctly claim the invention, examiners allow applicants to write a nice little note, explaining the meaning of each squirrelly term, and why the particular terms chosen sneak by the prior art.

But applicant arguments should not replace claim amendments, and examiners shouldn't allow it. Convoluted arguments supplementing shoddy claims cannot replace clear, concise claims.

Examiners must rehabilitate prosecutors, by putting the fear of clear English behind §112 ¶2. Examiners must not allow applicants to supplement their claims with explanation, assuming the prosecution history will be properly interpreted come litigation. Clarity must reign.

Full post as published by The Patent Prospector on May 23, 2008 (boomark / email).