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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.

Alex R:
Embarrassing indeed... But at least it's only a patent *application* and not a granted patent...
11.1.2006 3:21pm
Tony2 (mail):
Ha ha.

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.
11.1.2006 3:26pm
a reader:
i don't even get it . . . who inserted the bogus language? who is playing a trick on whom? and why?

i have no idea how these things work.
11.1.2006 3:27pm
Daryl Herbert (www):
The lawyers drafting the patent wanted the inventor to proofread the claims.

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...
11.1.2006 3:43pm
David Walser:
Reminds me of a new associate who, as a practical joke, inserted profanity into a letter he was drafting for a partner. The associate assumed the partner would see the profanity and remove it before the letter was finalized and sent to the client. The associate waited for the inevitable call from the partner about the letter's peculiar wording. He was sure they'd share a good laugh over the whole thing. The call didn't come. The associate, a little worried now, went to the partner's office and asked if the partner had reviewed the letter. He was told the letter had gone out in the morning mail. One the verge of panic, the associate asked, "Didn't you review it?" "No. I just had my secretary finalize it and out it went."

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.
11.1.2006 3:44pm
DK:
Is it common for a patent application to contain a copyright notice as this one does? Be glad, Eugene, that they didn't declare "Fair Use Does Not Apply!" ;-)


I hope that claim 9 isn't the part they consider copyrightable .
11.1.2006 3:56pm
Mike BUSL07 (mail) (www):
So David.... what was the pun, if you can give it away w/o revealing too much?
11.1.2006 3:59pm
Stephen C. Carlson (www):
Someone should be getting fired for that.

(I'd love to see how the Examiner is going to reject that claim.)
11.1.2006 4:01pm
Stephen C. Carlson (www):
The lawyers drafting the patent wanted the inventor to proofread the claims.

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.
11.1.2006 4:06pm
Kurt2 (mail):
Someone should be getting fired for that.

(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.
11.1.2006 4:11pm
Kurt2 (mail):
And by the way, it is annoying that every patent application like this is invariably referred to by bloggers as a patent. Hopefully a correction will be posted.
11.1.2006 4:13pm
ShelbyC:
Chances are the inventor's attorneys will submit a preliminary amendment cancelling the claim before it gets to the examiner.

Chances are the examiner won't read it either.
11.1.2006 4:15pm
PDXLawyer (mail):
David:

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.
11.1.2006 4:15pm
David Chesler (mail) (www):
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.

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.)
11.1.2006 4:21pm
Justin (mail):
But watch it be infringed under the doctrine of equivalents. :)
11.1.2006 4:32pm
Michael Barclay (mail):
I checked this application on the USPTO public PAIR web site
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.
11.1.2006 4:46pm
Greedy Clerk (mail):
That's not a patent, but a patent application. Big difference.
11.1.2006 4:50pm
Eugene Volokh (www):
Alex R, Kurt2, Greedy Clerk: Whoops, sorry about that, fixed it.
11.1.2006 4:58pm
ras (mail):
However, the attorneys can patent their new, inventive (and useful?) business process for ensuring that clients have proofread the claims, right?

I mean, if they can patent tax dodges, why not?
11.1.2006 5:06pm
Carolina:
Another attorney practical joke gone bad story from here in Dixie:

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).
11.1.2006 5:37pm
Steve:
The lawyers drafting the patent wanted the inventor to proofread the claims.

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.
11.1.2006 5:43pm
Kovarsky (mail):
actually, examiners do read patents. it's embarassing, but not a big deal. patent prosecution generally involves an extended back and forth between the applicant and the examiner, whereby claims are stricken and then reworded or abandoned.

funny, yes, but not indicative of failures at the PTO.
11.1.2006 5:44pm
Dave Hardy (mail) (www):
Reminds me of a tale I was told by a lady attorney, who is now a rather high gov't official and will go unnamed. Once at a firm she drafted a letter for a partner, to a client. At one point she needed a phrase expressing familiarity breeds contempt. As a joke, assuming the partner would read and delete it, she inserted something to the effect that it's what ever girl soon finds out, let a guy finger you and next thing you know, he figures that he owns you.

The partner just signed it without reading and sent it out.
11.1.2006 6:05pm
Peter Wimsey:
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.
11.1.2006 6:26pm
Adam (mail):
I have a theory on this.

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.
11.1.2006 6:32pm
Ajakk:
This entry is significantly worse than any of you are making it out to be because it is extremely damaging evidence that the inventor filed a false declaration with his patent application. The inventor filed a declaration stating that he had "reviewed and understand the contents of the above-identified application, including the claims[.]" Filing a false declaration is grounds for inequitable conduct and making the entire patent unenforceable. If I were the patent attorney, I would be very concerned that the Office of Enrollment and Discipline might bring an action against me for this. I hope that they have paid up their malpractice insurance.
11.1.2006 6:43pm
SB (www):
The Examiner will read that claim -- it's the specification he may just gloss over.
11.1.2006 6:55pm
Bruce Hayden (mail) (www):
I just looked on PAIR at the application (available publically since it has been published), and the applicant (or his attorney) did not apparently file a preliminary amendment, AND, it was docketed last week for examination. Yesterday, the examiner apparently ran off his computer search, which is available via PAIR.

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.
11.1.2006 6:55pm
Kovarsky (mail):
Ajakk,

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.
11.1.2006 7:05pm
Bruce Hayden (mail) (www):
Kovarsky
actually, examiners do read patents. it's embarassing, but not a big deal. patent prosecution generally involves an extended back and forth between the applicant and the examiner, whereby claims are stricken and then reworded or abandoned.
Well, that is the theory, at least. I am getting a bit cynical in my older age, and find that the examiners often don't seem to do their job there. Not that the examiner won't read the claims, and almost invariably reject this one. But that it seems more and more that they are rejecting on bogus grounds, giving you a final on your second office action, and then, if there is something there, giving you an allowance after an RCE (equivalent to the old File Wrapper Continuation). I find myself appealing more and more cases these days, just because of this trend.

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.
11.1.2006 7:12pm
Bruce Hayden (mail) (www):
Tony2 said
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.
You should be able to trust your patent attorneys. But I wouldn't, esp. when it comes to software patents. Again, I am showing my cynicism. But software patents are simple to write for those with a decent software background. They just appear to be impossible to write well for many with a non-software background. It seems esp. bad with some mechanical and electrical engineers.

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.
11.1.2006 7:39pm
Kurt2 (mail):
Yesterday, the examiner apparently ran off his computer search, which is available via PAIR.

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!
11.1.2006 7:39pm
Bryan DB:
Bruce,
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.
11.1.2006 9:53pm
Bruce:
I agree with Ajakk, it's taking an irresponsible risk with your client's interests and reputation to insert something like that in a document that is eventually going to be filed.
11.1.2006 10:12pm
Stevethepatentguy (mail) (www):
When I was a young patent guy, I didn't do this sort of thing out of fear of being fired.

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.
11.2.2006 10:39am
Douglas Sorocco (mail):
To the inventor who asked why he should actually read the application.

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
11.2.2006 3:39pm
PatentDude (mail):
Erm, doesn't this invalidate the Oath ("I/we have reviewed... including the claims and understand...")? Could make enforcement, even with a prelim amendment, a hard row to hoe.
11.2.2006 5:03pm
markm (mail):
"Kind of reminds me of non-lawyers who tell us about a frivolous lawsuit that somebody once filed (not won, filed)." Remember, someone's got to pay to defend against that lawsuit - and (in the USA, at least), most utterly ridiculous lawsuits still don't meet the legal definition of "frivolous" so the courts don't award costs to the defendant.
11.2.2006 6:07pm
David Schwartz (mail):
Just to be clear, there's really no reason to think the inventor didn't read the application. He may have had a huge laugh with his lawyer over this claim, and then the lawyer failed to remove it.
11.3.2006 1:36am
von (mail) (www):
Five thoughts:

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.
11.3.2006 4:11pm
CWuestefeld (mail) (www):
I'm not a lawyer, I'm a software guy. Is this thing representative of what most/many patents look like? Because it's ridiculous. So much of it is prior art, I wouldn't know where to start pointing it all out. I started to count which tools I've used today that seem to fit the first few claims (that's all I could bear to read). I gave up and tried to count the computer applications that don't seem to do what the claims describe in some way.
11.3.2006 4:32pm
F Ho (mail):
Just to be clear, there's really no reason to think the inventor didn't read the application. He may have had a huge laugh with his lawyer over this claim, and then the lawyer failed to remove it.

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.
11.3.2006 5:11pm
Matthew J. Brown (mail):
As I understand it (not a patent attorney, but a software guy), many patents start with pretty obvious claims and then work up. They're supposed to be read with the referenced prior art in mind.
11.6.2006 5:06am