How Embarrassing:
Check out claim 9 of this patent application:
9. The method of providing user interface displays in an image forming apparatus which is really a bogus claim included amongst real claims, and which should be removed before filing; wherein the claim is included to determine if the inventor actually read the claims and the inventor should instruct the attorneys to remove the claim.
Thanks to Michael Barclay for the pointer.
Seriously, though, I've produced software products and explained to the lawyers how they work, then gotten back patent applications which make no sense whatsoever to me. In an effort to cover as much ground as they can get, they invent language that is so abstract and generalized as to be almost incomprehensible.
So to a large degree, I trust their judgment. Why shouldn't I? I'm not paying them, I'm not getting any IP rights or royalties, I'm just an "inventor" whose name goes on a piece of paper.
So there isn't much motivation to actually read the damned things.
i have no idea how these things work.
The inventor didn't do it--if he had, he would have told them "hey, claim 9 is bogus."
Then the lawyers screwed up. They didn't remember the inventor was supposed to tell them about claim 9, and they didn't proofread it again before filing.
(alternatively, the inventor did tell the lawyers, and they forgot to remove it anyway!)
The claims have to be written very carefully in order to be enforceable in court (and if you can't enforce a patent, it's worthless). If the claims are too broad, they get thrown out. If they're too narrow, other companies can get around them. Writing a good patent is very much an art.
Because it's so difficult, the lawyers and inventors are supposed to work together to proofread it and stuff...
Of course, the partner had reviewed the letter and had caught the profane pun made of the client's name. He didn't tell the associate that he'd sent an edited version of the letter to the client until the associate had gone to the Post Office only to learn that there is no way to recall a letter once it's in the hands of the Postal Service. Lesson learned. I've never done anything like that since.
I hope that claim 9 isn't the part they consider copyrightable .
(I'd love to see how the Examiner is going to reject that claim.)
It would seem so, but the inventor is a Japanese national, whose English may not be up to the task without a tremendous amount of effort.
(I'd love to see how the Examiner is going to reject that claim.)
Chances are the inventor's attorneys will submit a preliminary amendment cancelling the claim before it gets to the examiner.
If not a rejection under 35 USC 112(2) for indefiniteness should be simple enough. It's not like extensive explanations are necessary.
Chances are the examiner won't read it either.
I thought the story was going to end that the client never read the letter either, so it didn't matter after all. Distressingly common. A good reason to for us in the legal business to take care to write simply, when possible.
This is an *application* and not a granted patent, as Alex R pointed out. It was published before a patent examiner had a chance to look at it. Also, I searched the issued patents, and didn't see anything that looked like it resulted from this appliction. Kind of reminds me of non-lawyers who tell us about a frivolous lawsuit that somebody once filed (not won, filed). Given the huge volume of transactions, the PTO and the patent system overall seems to have a remarkably low error rate.
On the other hand, I once had to give a deposition about a piece of software that I'd maintained for a few years, a few years after the fact. (I was about the fifth person to have been maintainer of the engine, and I'd written an internal technical spec.) I was amazed at the degree to which the lawyers for both sides had scrutinized both the code and the specification, to the point where they pointed out that I'd mis-stated how a minor, and very stable, part of the code did what it did. I told them I wanted legal representation at my next code review. (OTOOH, law firms bill out at much higher rates than software quality assurance workers.)
http://portal.uspto.gov/external/portal/pair
and it has not yet been examined, although it appears it will be shortly. So the poor attorney who filed this still has a chance to delete this claim before the examiner has some fun figuring out the many ways to reject it.
I mean, if they can patent tax dodges, why not?
Attorneys A and B are young associates working late one night at a large firm. They are friends, with adjacent offices. Attorney A is dictating a long memorandum. Attorney B hears A stop dictating and leave his office to use the restroom, as B is finishing up his work.
B, on the way to go home, goes into A's office, dictates a 60-second profanity-laced speech about how sexy A's secretary is and graphically describes what sexual acts he would like to perform on her. He assumes when A returns from the restroom, A will rewind his dictaphone a bit to figure out where he left off, discover the extra material, and they will share a laugh the next day.
You can guess what happened. A comes back from the restroom, but merely continues dictating and does not rewind his dictaphone. He leaves the tape on his secretary's desk that night and goes home.
The next morning, A is summoned to the managing partner's office. MP chews A a new one, explaining A's secretary came to him in tears and he had to transfer the secretary and give her a raise. Attorney A is genuinely at a loss, and does not understand why the MP is waiving a dictation transcript in his face and yelling about poor judgment, sexual harassment liability, etc.
Anyway, it all did get sorted out that afternoon, after Attorney B confessed, but I have always been cautious with firm practical jokes after hearing that story in law school (from someone in that firm).
I still don't understand this. It's all well and good to test my client, but it seems like extremely poor form to blatantly advertise that they're being tested. If I were the client reading this, I'd be pretty offended that the lawyers didn't even trust me to read it.
funny, yes, but not indicative of failures at the PTO.
The partner just signed it without reading and sent it out.
I wouldn't be surprised if the partner read it, found it an appropriate analogy, and sent it out.
When running a business (before law school) I got more than a few documents from our lawyers with weird side comments just dropped in the middle of the text. It turned out that the lawyers were 'redlining' the documents using Word to track changes and leave comments and such, but when I opened the docs in TextEdit it was just parsing it directly into the text.
I can certainly see how something similar might have happened here -- at any rate, it appears to me like that comment was initially written as an aside but got absorbed into the document via a formatting error.
I find the timing of this quite interesting. Possibly, it was pushed up a bit so that the USPTO could be seen to be rejecting garbage claims. Or maybe I have been seeing too many conspiracy theories recently.
For anyone interested, here is a link to the electronic file wrapper on PAIR, and if that doesn't work, here is the link to public PAIR. Just set the selection to publication number and paste in the publication number on the top right of the document.
Inequitable conduct is usually a defense to an infringement suit. It's not serious if it gets corrected before the patent issues, because the sworn declaration will not have been used to secure exclusivity over an asset.
Of course, the system has never been perfect. About a decade ago, I was prosecuting an electronics case that disclosed an invention that had X->Y->Z, where X, Y, and Z, and the combination was also old. Our improvement was in Y. The rejection was to X. It was easy to point that out, so I fired off the response, and went to talk to another patent attorney. When I told him about the rejection, where the examiner's rejection had been to X, when our claims were to Y, he asked if it was Examiner K. I said, well yes. His response was that I would get an immediate allowance on all of the claims (which I did), and that if he had been prosecuting the case, he would have broadened the claims at that point, knowing that this examiner always gave a first office action rejection on bogus grounds and a second office action allowance of all claims. He also suggested that we not pay the issue fee, since he felt that any patents issued through this examiner were presumptively invalid (for the non-patent attorneys, that is play on the presumptive validity of issued patents). Apparently, this SPE was a lifer who consistently had the best stats in his area, and this is how he did it.
The problem, IMHO, is that software should often be claimed via its functionality and the way it operates. Many electrical and mechanical inventions though are best claimed by how they are put together. It is a different way of thinking about things - process flow comes naturally to software engineers, but not to many other types of engineers.
I first really realized this problem when I was working a range of technologies ranging from software, through systems level electronics, down to the gate level. The software guys would typically claim functionality and process, whereas the circuit guys would invariably claim connectivity (what was connected to what). The best systems level people would do both, as appropriate, but tended more towards the software view. Those of us who were primarily oriented towards software and systems level electronics seemed much better able to adapt to claiming connectivity (when working in circuitry) than the circuit guys would going into our area.
That said, it is not surprising that patents are often somewhere between mysterious and confusing. First, you often have to include a lot of detail in order to enable the claims. Then, often what the inventor initially thought was his invention turns out to be either not novel, or obvious (but I wouldn't trust a non-software engineer to determine this in many cases for software inventions), and so the patent attorneys have to develop claims to other, more arcane, areas of the invention. Finally, claiming is high legal art. Learning to do this correctly and fairly well typically takes, IMHO, between 5 and 10 years of practice, with the first couple being under close supervision. There are often a lot of subtleties under the surface that lay observers most often miss.
Despite its name that's not the examiner's search; that's something done by the tech center (basically they do supplemental searching) as a preliminary, similar terminology type deal. It doesn't mean examination is immiment.
Should be fun to keep track of though!
Isn't it a little unfair to criticize the patent attorneys in your software example (e.g. that they were claiming in structure and not functionality)? It wasn't clear until pretty recently (State Street) that software would clearly be patentable.
Now that I am a middle-aged patent guy, I don't do these things because I fear getting sued or losing a client, not to mention that it is just dumb.
These folks have put themselves at a real risk with this stunt. If this patent issues they have created a six digit litigation issue for their client.
If I were Toshiba's in-house counsel I would pull this application from the firm and have a second firm refile the case and include a full explanation of the circumstances. Even after this step, I would probably keep a mental note never to try to enforce this once patented.
Answer: because you sign an oath under penalty of perjury that you have read and understood the application - including the claims.
So the reason you might want to spend the time to read it and not perjure yourself.
See article at PHOSITA
1. Stupid move all around.
2. Regarding a possible inequitable conduct claim, this is incorrect:
Inequitable conduct is usually a defense to an infringement suit. It's not serious if it gets corrected before the patent issues, because the sworn declaration will not have been used to secure exclusivity over an asset.
The question of inequitable conduct based on the filing of a false oath is measured against the claims as originally filed. It's not like the failure to submit a material prior art reference, which might be correctable if reversed during the prosecution process or, in some cases, if the claims are narrowed before issued in a way that makes the omitted reference immaterial or cumulative.
3. OTOH, I don't see how a goof like this is material, and thus it probably fails to satisfy a case of inequitable conduct on the materiality/intent sliding scale -- unless it can be established that some other claim captured subject matter to which the inventor was not entitiled..
4. The examiner should just reject it on 112/2 grounds as indefinite, and be done with it.
5. If you're an inventor, always read your original claims before filing.
When there is a change to the patent draft, the attorney should come back with an updated draft to be reviewed; this process would repeat until there are no more changes, and once the draft is ok'd, the attorney can proceed with the filing. I think it is not a good idea to have the attorney make the change and just file it, as it assumes the change is done properly per the client's directions.
Also, note the patent application claims 11 and 12. Claim 11 is a subordinate claim of this 'bogus' claim 9 and claim 12 is a subordinate claim of claim 11.