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: Just a Patent Examiner

Playing "Hide the Invention"

There are instances, as an examiner, when you've got an application whose disclosure and claims have been written in a way that makes it seem as if the applicant might be trying to hide the invention from you.

The Background and Summary sections are vague and/or next to non-existent.

The Detailed Disclosure and claims are written at a level that does not invite easy comprehension (or at least doesn't clearly spell out what is the inventive concept).

Worst of all, though, is the use of odd terminology when there are perfectly good commonly accepted terms in the art.

Of course, MPEP § 2111.01(IV) says that the applicant is entitled to be their own lexicographer. This certainly makes sense, and in and of itself is not a problem.

However, when an applicant (or their attorney) neglects to characterize their invention in terms that are consistent with terminology commonly used in the art, it has the potential to impede the examination of the application.

For example, I've had applications in the past (not often, but occasionally) where I've read the spec and the claims, and begun the prior art search. And I'd search. For hours. For a day. Sometimes, longer. And then, finally, I'd find a piece of prior art that seemed to be at least in the right subject area.

I'd check the abstract of that piece of art, and note that they have used a specific term in characterizing their invention.

So I plug that term into a search engine, and lo and behold, out pops ten or fifteen (or more) references that are right in line with the application under examination.

That can be frustrating. Frustrating, because I know that I've spent many hours of less than fruitful searching, when the inclusion of that specific term in the background, summary or claims of the application would have made the search that much more efficient.

There are, of course, reasons why an applicant or attorney might have neglected to use a commonly accepted term in their application. They might simply have not known of the term. Maybe the term wasn't so commonly accepted or synonymous with the invention at the time the application was originally drafted (which is especially understandable in the case of continuations). I'm sure there are other reasons.

Sometimes, though, it sure seems as if it was done intentionally. [I'm leaving aside the cases where the applicant is trying to avoid disclosing anything that could potentially cause problems later, which I'll address in a later post.]

Some might point out that examiners, being (presumably) a person having ordinary skill in the art, should be able to read a specification and pull those synonymous terms out of their head. This is a reasonable presumption in many areas of art.

There are, however, some areas of art (business methods would seem to be a good example) where every application has the potential to embody an art with which the examiner is unfamiliar. These are the applications where including commonly accepted terminology in characterizing the invention can make a substantial difference in the ability of the examiner to efficiently find relevant prior art.

Applicants are required to provide a disclosure that is enabling and definite under 35 USC 112, but there is no requirement for them to provide terminology that will make an examiner's job in conducting a search any easier.

With so much grumbling about the quality of examination, though, examiners sure would appreciate any help they could get from the applicants/attorneys who draft the applications that we examine.

Full post as published by Just a Patent Examiner on May 07, 2007 (boomark / email).