"Bogus Patent Claim"

[Horatius]

Here's a slightly modified version of an e-mail I just sent Randi about the "Bogus Patent Claim" from this week's commentary.


We've been amusing ourselves at the Canadian Patent Office with the US patent application 20040161257 that was referenced in this week's commentary. The agent in charge of that case is claiming he was instructed to remove the claim, but failed to do so.

You can see some of the details of the prosecution of this application online.

Go to http://portal.uspto.gov/external/portal/pair and search on the above "publication number" (not application number!). If you click on the "Image File Wrapper" tab, you'll see a list of available documents. There's one labeled "Applicant Arguments/Remarks Made in an Amendment" dated 11-07-2006, which has the letter from the agent.

Of course, he could just be covering for his client, but we'll probably never know for sure.

 

[Brown]

I have made the point before, but I feel it is important to make the point again:

There is a difference between a patent application and an issued patent.

The document cited in Commentary is an application, not an issued patent. It has not been reviewed by or edited by the Patent Office, nor is it supposed to be. Patent applications are to be published as the inventor filed them, even if they have typos, scientific errors or bald-faced nonsense.

Patent lawyers laugh themselves silly when they see some of the garbage that gets included in patent applications (usually by people who don't know what they're doing). But they understand that the garbage is not the product of, nor endorsed by, the Patent Office.

Chances are that the examiner at the Patent Office who eventually reads this patent application will have a good laugh, and will let other examiners laugh at it, too.

If the garbage in a patent application makes it into an issued patent--which does happen from time to time--then it is appropriate to chew the Patent Office's tail. But in this case, it appears that the inventor is to blame! Perhaps the drafter sent the application to the inventor for review, and the inventor ended up filing it (out of eagerness, or by mistake, or perhaps concluding that it was ready for filing). Unfortunately, inventors are required by law to read documents that they file with the Patent Office... and it appears that this inventor did not do so! Regardless of the merit (or lack thereof) of the invention, this patent application is in trouble!

 

[Donn]

I didn't realize that it was only an application; stupid really, because it quite plainly says so.

Does anyone understand what the patent is claiming? If that language is typical of patent claims it's small wonder that so much rubbish gets through to a final patent.

 

[Horatius]

I have made the point before, but I feel it is important to make the point again:

There is a difference between a patent application and an issued patent.

The document cited in Commentary is an application, not an issued patent. It has not been reviewed by or edited by the Patent Office, nor is it supposed to be. Patent applications are to be published as the inventor filed them, even if they have typos, scientific errors or bald-faced nonsense.

Yes, but if you read the claim, it was put there by the agent, to check if the Applicant had read the claims. There's an assupmtion that the Applicant knows what has been filed in their name, and this case seems to indicate that the Applicant hasn't done even a brief review of the case. That's assuming the Agent is covering for the Applicant, of course.

I've seen enough applications filed here in Canada with features that, while acceptable in the US, are against Canadian law and practice, that I know they don't do any serious review for foriegn applications. If their review for domestic applications is just as bad, that's an even bigger problem.

 

[Horatius]

Does anyone understand what the patent is claiming? If that language is typical of patent claims it's small wonder that so much rubbish gets through to a final patent.

Yes, it's pretty typical. Here in Canada, we have a two year training program for new examiners, just to get them to a point where they can parse the claims. Remember that the claims are addressed to lawyers and judges, and are written to claim as braodly as they are legally allowed to claim, so as to not leave anything unclaimed, that could be used to circumvent the patent.

For instance, if I claimed something that was "attached by bolts", you could (potentially) copy it, but attach it by rivets. If I was to claim "attached by an attaching means", that covers any possible means, such as bolts, rivets, screws, nails and the like, and would be harder to work around.

Here's their first claim:

1. A display control apparatus for image forming apparatus that features: a first operation panel with which operators can select multiple functions of an image forming apparatus that has aforementioned multiple functions; a second operation panel that is configured so that it can be loaded and unloaded freely to/from the aforementioned image forming apparatus and with which operators can select aforementioned multiple functions; a detection means to detect whether the second operation panel is loaded or not when the aforementioned image forming apparatus is turned on; and a controlling means that controls items that are displayed on the first operation panel according to the result of detection by the aforementioned detection means.

Not having read the whole applicaiton, let's try parsing this phrase by phrase, to see what it all might mean. I say "might", because it's well established in US practice that ultimately only a judge can say what is or is not covered by a claim.

1. A display control apparatus for image forming apparatus that features:

This preamble lays out the general class of things we're discussing. Some sort of control for a display apparatus, perhaps a TV or projector.

a first operation panel with which operators can select multiple functions of an image forming apparatus that has aforementioned multiple functions;

This is just a panel that controls the various functions of the display. On/off, colour, tint, whatever. Picture a TV with controls on the front.

a second operation panel that is configured so that it can be loaded and unloaded freely to/from the aforementioned image forming apparatus and with which operators can select aforementioned multiple functions;

Now a second control panel, which controls the same functions, but this one isn't fixed, it can be "loaded and unloaded". Picture a remote control, which can control the TV as the front panel does, but which is optional- you don't need the remote, but you can use it if you want.

a detection means to detect whether the second operation panel is loaded or not when the aforementioned image forming apparatus is turned on;

Now, we have a TV that can detect if there's a second controller, as in a remote. Also similar to the new wireless controllers for the Xbox 360- the system can figure out if there is more than one controller active. Also note that this is limited to "when the image forming apparatus is turned on". That's a pretty narrow limit, so I suspect that's what they think their fundamental invention is, but I might be wrong.

and a controlling means that controls items that are displayed on the first operation panel according to the result of detection by the aforementioned detection means.

And now we simply have a controller, probably a CPU, that decides how to control the display based on the inputs that tell it if the optional controller is detected.


Note there's no details on how the connection is made - IR, RF, wired, optical cable, whatever. Also no details on what the display is, or what functions could be controlled. This is a very broad claim, and as discussed above, I'd argue that both a remote-controlled TV and an Xbox 360 would destroy the novelty (newness) of the claim, or at least render this claim obvious in light of the prior art.

But of course, only time will tell.

 

[Rob Lister]

If this didn't hit so close to home, it would be funny.

We do such similar things (with proposals, not patents) just to make sure our upper-level management is paying attention. This makes me want to reconsider this tactic.

 

[Horatius]

and a controlling means that controls items that are displayed on the first operation panel according to the result of detection by the aforementioned detection means.

And now we simply have a controller, probably a CPU, that decides how to control the display based on the inputs that tell it if the optional controller is detected.

In re-reading this, I think I missed a key point, as highlighted. The contoller can also change the contol scheme of the first control panel, based on the presence or absence of the second control panel. So you'd have a variable control scheme depending on how you set up the first and second panels. Now I'm thinking it's this feature that they're really gong for.

 

[Brown]

Yes, but if you read the claim, it was put there by the agent, to check if the Applicant had read the claims. There's an assupmtion that the Applicant knows what has been filed in their name, and this case seems to indicate that the Applicant hasn't done even a brief review of the case. That's assuming the Agent is covering for the Applicant, of course.

This is correct. I suspect we would agree that while the Applicant may be at fault for not carefully reading his application, the agent is probably at fault for putting this text into the document in the first place.

If the agent wants to make sure the Applicant reads the document, there are other--more effective--ways to achieve this result.

 

[Brown]

Does anyone understand what the patent is claiming? If that language is typical of patent claims it's small wonder that so much rubbish gets through to a final patent.

A few words about patent claims.

First, a patent claim (at least in the USA) must be a single sentence. This single rule causes claims to seem ridiculously long and awkwardly punctuated. Yet the alternative, allowing a claim to consist of multiple sentences, carries difficulties of its own. The important thing to recognize is that when a claim is written as a single sentence, the applicant is following the rules.

Second, there is typically a logic inherent in claims that is not obvious until explained, and there are also rules pertaining to claiming of which lay persons are generally unaware. Horatius and I have discussed some of the aspects of claiming in this thread. One of those bizarre rules of claiming pertains to the use of the word "means," which many would assume makes the claim very broad; but typically use of the word "means" actually has the opposite effect!

Third, a typical claim structure is--as Horatius describes--a preamble followed by a list of elements combined in a fashion or having particular limitations. In analyzing a single-sentence claim, the basic idea is to list the elements and limitations, along with their interrelationships.

Fourth, claims can be "independent" (i.e., standalone claims that do not make reference to other claims, such as claims 1, 2 and 3) or "dependent" (i.e., claims that require reference to other claims, and that incorporate all of the elements and limitations of the referenced claim).

Now, there are quite a few problems with the claims. Some of the problems are with form. For example, typically a claimed invention "includes" or "comprises" one or more elements; but the drafter here uses "features." An examiner might object to this term. As another example, the term "to/from" could be objectionable as indefinite. By law, patent claims must be definite, and an examiner might inquire: "Which is it? To? From? Both?"

Also claim 1 describes a first operation panel that does certain things. Later in claim 1, a new function appears to be added through the back door: the ability to "display" items. An examiner might object, saying, "Where did that controllable display function come from?"

There are also problems with substance of the claims. The elements of the claim 1, for example, are:
a first operation panel,
a second operation panel,
a detection means, and
a controlling means.
The claim describes some limiting operations of, and limiting interrelationship among, the elements. The claim mentions, but does not include as an element, an image forming apparatus.

In analyzing the claim, an examiner can turn to ANY operation panels that have any of the recited functions. This could be: a remote control for a television; a key on a cellular telephone; a focus button on a slide projector; a key on a computer keyboard (or a mouse, touch pen or other pointer); a setting control for a digital clock; a control circuit for a telescope; a shutter key for a camera; and so on and so on. As an exercise, see if you can think of any "image forming apparatus" that doesn't have some sort of "operation panel" for controlling its functions. The patent examiner can choose from any of them, and all of them! (And this makes sense; for if the claim were to be allowed, it could encompass any or all of these operational panels. Note that the applicant may not have telescopes and televisions and digital clocks in mind: his description and patent drawings show that his principal interest may be photocopy machines and faxes; but his claims are not limited to photocopy machines and faxes, so the examiner is not bound to limit his evaluation to such technologies.)

An examiner might not go any further than saying that claim 1 is obvious in light of a typical DVD player system. A typical DVD player system includes:
a first operation panel (a television, which includes an image forming apparatus, and controls for multiple functions both on set and in a remote);
a second operation panel (the DVD player, with its own controls, that feeds video data to the television, and which configures the television's remote sensor to accept commands from the DVD remote);
a detection means to detect whether the second operation panel is loaded or not (which the DVD player does);
and a controlling means (which also comes into play, as the television is able to display the menu according to the DVD, which it does not do unless loaded by the DVD player).

If the examiner were to reject claim 1 on such grounds, it would be up to the applicant to either narrow his claims so that they do not encompass prior art (but rather are a non-obvious advancement over prior art) or explain why the prior art does not describe his claims.

Without doing any research, my sense is that the claims are so broad that they are almost certainly not going to survive in their present form.

 

[Horatius]

Second, there is typically a logic inherent in claims that is not obvious until explained, and there are also rules pertaining to claiming of which lay persons are generally unaware. Horatius and I have discussed some of the aspects of claiming in this thread. One of those bizarre rules of claiming pertains to the use of the word "means," which many would assume makes the claim very broad; but typically use of the word "means" actually has the opposite effect!

Is this some quirk of the US? I know the US courts have seriously messed with the Doctrine of Equivalents, but I didn't think it was this bad. In Canadian practice, a "means" claim is considered to be broad, in that it encompasses any known means to acomplish the task. The means can be limited by using adjectives, but within that limit, it is interpreted as broadly as possible.

It's these sorts of differences that makes patent work such an ... interesting... career. I've been doing battle the last few months with some applicants who have been asserting cerain things that are in accordance with US practice, but which violate Canadian practice. It's like they don't realize we're our own country, or something

 

[Brown]

Is this [the "means" business] some quirk of the US?

Without suggesting that it is "quirky," I'd say the answer is yes. I discuss this aspect in the first post in this thread. The apparently counter-intuitive result comes about from a United States statute (and from judicial decisions interpreting that statute).

As Horatius suggests, every country has its own patent system. Although there usually are similarities under the systems (and the Patent Cooperation Treaty has enhanced some of those similarities), each country might have its own special rules. A good practitioner needs to be mindful of the preferences of the different fora.

 

[Horatius]

From that earlier thread:

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

In other words, use of the word "means" seems to be the use of very broad language, but in fact, the opposite is true! When an element falls under section 112, sixth paragraph, its scope is limited to that described in the description (and equivalents, to which courts give very limited scope).

I guess the difference arises from the court decisions then. The explicit definition of "means" is similar to what we use, but the "equivalents" part seems to have been much more restricted in US practice.

In Canada, such means are read broadly, unless the applicant/patentee has gone out of their way to define the "means" is a very specific sense, in order to avoid the prior art. If no such limitations were suggested, they benefit from the full Doctrine of Equivalents, and the DoE still applies to any other means they may refer to. The description can be used as a guide to understanding the claims, but not necessarily to limit the claims.

From our Manual of Patent Office Practice (which can tell you more than you want to know about claims!):

Even though claims are construed with reference to the description, reference to the description is only permitted to assist the understanding of terms used within the claims if these terms have a unique meaning. Reference to the description is not permitted for terms that have a plain, common, and unambiguous meaning as these terms would be known to someone of skill within the art, nor is reference to stray phrases within the description considered support for terms within the claims. Furthermore, reference to the description cannot be used to vary the scope of the claims.

"Means" claims are discussed a bit as well:

A "means" claim is one in which at least part of an invention is defined as a means or mechanism for performing an act, instead of reciting the element that performs the action.

Invention may exist in a new combination of old means (Lightning Fastener v. Colonial Fastener 51 RPC 349; Martin and Biro Swan v. H. Millwood 1956 RPC 125). Claims composed of more than one statement of old means are allowable, without defining structure, if there is invention in the new combination.

 

[Alex_Turner]

why patents

I'm a huge fan of Randi's, but I'm really getting somewhat tired of Randi's commentaries against the USPTO. The system has problems, yes, but his commentary is misleading, amaturish, and betrays a lack of knowledge on the subject.

Is it too much to wish that Randi's comments are well-reasoned and insightfull? Ranting about things you don't understand is a hallmark of those he fights against, yet I feel he is doing it every time he paints an unexamined patent application as a failiure of the Patent Office.

 

[Brown]

I'm a huge fan of Randi's, but I'm really getting somewhat tired of Randi's commentaries against the USPTO. The system has problems, yes, but his commentary is misleading, amaturish, and betrays a lack of knowledge on the subject.

Is it too much to wish that Randi's comments are well-reasoned and insightfull? Ranting about things you don't understand is a hallmark of those he fights against, yet I feel he is doing it every time he paints an unexamined patent application as a failiure of the Patent Office.

As I've said before, Mr. Randi does make some legitimate points.

First, some (apparently) pseudoscientific or near-pseudoscientific patents occasionally get through.
...
Second, some patents seem to get issued for previously invented things.
...
Third, some downright loony patent applications get filed.
...
Fourth, the fact that a patent issues does not mean that the invention actually works, or that it works as well as the inventor says that it does.
...
And finally, many patent holders falsely convey the impression that, because the invention has "earned" a US patent, that the invention works and has a governmental endorsement. Such an impression is almost always false.

The first two of these criticisms rightfully have been leveled at the Patent Office. The USPTO is not exclusively to blame, but that office does have the statutory responsibility not to issue improper patents. The last three of these, however, are properly leveled principally at those who use the patent system, not at the governmental apparatus itself.

 

[Horatius]

As I've said before,

First, some (apparently) pseudoscientific or near-pseudoscientific patents occasionally get through.
...
Second, some patents seem to get issued for previously invented things.
...
Third, some downright loony patent applications get filed.
...
Fourth, the fact that a patent issues does not mean that the invention actually works, or that it works as well as the inventor says that it does.
...
And finally, many patent holders falsely convey the impression that, because the invention has "earned" a US patent, that the invention works and has a governmental endorsement. Such an impression is almost always false.

Mr. Randi does make some legitimate points.The first two of these criticisms rightfully have been leveled at the Patent Office. The USPTO is not exclusively to blame, but that office does have the statutory responsibility not to issue improper patents. The last three of these, however, are properly leveled principally at those who use the patent system, not at the governmental apparatus itself.

I agree - The various patent offices must strive to do the best job possible, and refuse as many of the "bogus" patent applications as we can, but it's also important for those outside the patent system to understand that there are limits to what we can do, both legally and physically.

I think having Randi bring up such examples helps out regular skeptics, as it gives them some ammunition for discussions of patents with woo types, to help them explain why a patent doesn't always mean a given apparatus or method will actually work.

At the same time, you have to realize that any patent system flexible enough to allow for fundamentally new breakthroughs in science and engineering will always have enough flexibility to allow an unscrupulous applicant to take advantage of the system.

As a plug for TAM 5, this sort of thing is the subject for the talk I'll be giving. So join us there and we can argue about it over a beer!

 

[Brown]

As a plug for TAM 5, this sort of thing is the subject for the talk I'll be giving. So join us there and we can argue about it over a beer!

EXCELLENT!! As I write this, I still have some hope of coming to TAM5 (although the odds are against it). But if I manage to be there, I would certainly enjoy meeting you and sharing a few "war stories." And whether I make it to TAM5 or not, I wish you the best of luck with your presentation.

 

[Horatius]

EXCELLENT!! As I write this, I still have some hope of coming to TAM5 (although the odds are against it). But if I manage to be there, I would certainly enjoy meeting you and sharing a few "war stories." And whether I make it to TAM5 or not, I wish you the best of luck with your presentation.

That'd be cool. I could tell you about the one inventor who taught himself how to see neutrinos

 

[Brown]

Mr. Randi has some trouble with the remarks filed by a patent agent:

It’s all patent talk, to me. I’d like to hear how these people talk to one another. It must be a hoot.

Actually, the remarks are pretty clear to anyone in the business of patents:

Claims 1-8 and 10-30 are pending. Claim 9 has been cancelled. Claim 11 has been amended to correct its dependency.

Well, this should not be too hard to figure out, even for a lay person. Originally 30 claims, numbered 1-30, were filed as a part of the patent application. In the current document, the applicant is cancelling claim 9, so that it is no longer in effect and need not be considered by the Patent Office. Claim 11, which begins with the words, "The method of providing user interface displays in an image forming apparatus of claim 9," is clearly wrong, as no dependent claim is permitted to depend upon a cancelled claim. (And in any event, the applicant apparently goofed in writing claim 11 in the first place.) As a result of cancelling claim 9, only 29 of the original 30 claims are presented to the Patent Office, and they are numbered 1-8 and 10-30.

This cancellation of claim 9 is part of a "preliminary amendment." This is a term not widely known outside patent practice. It refers to an amendment (i.e., a change) to the patent application that is made before the application is examined by the Patent office.

For the record: Before the application was filed and before the inventor signed the declaration, the undersigned was instructed to delete claim 9. Through an oversight, claim 9 remained when the application was filed. Shortly thereafter, the undersigned was reminded to cancel claim 9. A preliminary amendment was prepared one week after the application was filed, but filing of the preliminary amendment was deferred until the application number was known. This preliminary amendment belatedly addresses the oversight.

The person filing the document can be excused for speaking in the third person, referring to himself as "the undersigned" rather than "I." This use of the third person is not only appropriate not only for patent documents, but for a variety of legal documents in general, and for other formal documents as well.

The "declaration" is a document that must be filed with (or shortly after the filing of) a patent application. Here's a link to a form (pdf) for a typical declaration. Among other things, the person applying for a patent says that he has reviewed and understands the contents of his application, including the claims. Once again, this is a document that is not widely known among members of the general public.

Basically, what the person filing the preliminary amendment is telling the Patent Office is: "I was told to delete claim 9 before the application was filed. But I made a mistake and didn't do it." Okay, so far, so good.

Then the person filing the amendment basically says: "I caught my boo-boo right away (because someone pointed it out to me). I even thought about filing a preliminary amendment to correct the error one week after the application was originally filed. Unfortunately, however, I did not know the application number at that time." The application number is the formal docket number assigned by the Patent Office to the application. Generally speaking, it's okay to wait until that number gets assigned before filing a preliminary amendment. It usually takes a couple of weeks for the Patent Office to assign a number and return a notice of that assignment to the applicant. The applicant can then file his preliminary amendment, and include the application number on it, so that the Patent Office will be able to know to which application the preliminary amendment pertains.

This business of assigning numbers to things is not peculiar to the Patent Office. Similar systems apply in many administrative and court proceedings, and also proceedings with many businesses. For example, when you file a claim with your insurance company, the company will assign an identifying number to your matter, and when you deal with the insurance company you need to cite that identifying number in your correspondence.

But now we come to the weird part. The patent application was filed on August 19, 2004. According to "the undersigned," the preliminary amendment had been prepared about a week later, say, August 26, 2004. Chances are good that "the undersigned" received the notice of the application number a few days--perhaps a few weeks--later. And yet "the undersigned" waited for over two years to file it. Oops.

The writing that Mr. Randi calls "patent talk" is just that. It's talk about patents. It's not beyond the comprehension of a layperson, but most lay people don't know what "preliminary amendments" and "declarations" and "application numbers" are.

This sort of language is specialized to the task at hand, but it is not jargon-laden, nor is it "legalese."

 

[teemacs]

Without suggesting that it is "quirky," I'd say the answer is yes. I discuss this aspect in the first post in this thread. The apparently counter-intuitive result comes about from a United States statute (and from judicial decisions interpreting that statute).

As Horatius suggests, every country has its own patent system. Although there usually are similarities under the systems (and the Patent Cooperation Treaty has enhanced some of those similarities), each country might have its own special rules. A good practitioner needs to be mindful of the preferences of the different fora.

I will not hear a word spoken against "means", a superbly useful word in use in the patent profession throughout the English-speaking world! I'd be lost without it, especially in mechanical cases, where "fastening means" covers, nuts, screws, nails, rivets, Velcro(R), duct tape, glue of any description...

Patent systems are broadly similar, the US system being the real oddity, but even it's becoming more civilised. We await anxiously the end of "first to invent", the US system's most extreme aberration, but that'll be a few years yet.

 

[Horatius]

Patent systems are broadly similar, the US system being the real oddity, but even it's becoming more civilised. We await anxiously the end of "first to invent", the US system's most extreme aberration, but that'll be a few years yet.

I wouldn't hold my breath waiting for the US to change to a first-to-file system. Unlike most countries, which establish a patent and copyright system purely by legislation, the US system has it's basis in the Constitution, which allows for monopolies to be granted to "inventors". Not "people who file the forms first". To get rid of first-to-invent, you'd have to amend the Constitution, which I just don't see happening any time soon, for such a low-profile issue.

Any attempt to bring in first-to-file by means of law or regulation will almost certainly be imediately challenged on this basis by several inventors, or inventor associations.