Intellectual Property Owners Association

Serving the Global Intellectual Property Community

ReadMore

IP Language Curmudgeon Archives

Curmudgeon

December 29, 2014

“Judicial Exceptions” Not the Correct Term for Patent-Ineligible Subject Matter — In its Mayo opinion in 2012, the U.S. Supreme Court clumsily called laws of nature, natural phenomena and abstract ideas “exceptions” to patent-eligible subject matter. The USPTO picked up the phrase “judicial exceptions” and now everyone is using it. But it’s wrong. Laws of nature, natural phenomena and abstract ideas are excluded by judicial interpretations of the statute, not by judicial “exceptions.”

The U.S. Constitution gave Congress the power to secure rights to inventors in discoveries. Congress exercised its power by enacting section 101 to protect processes, machines, manufactures, and compositions of matter. Courts have no power to make exceptions to section101; they can only interpret it. The law is confused enough without using the wrong word. Bah, humbug!

October 22, 2010

READERS COMMENT ON PATENT CLAIM PREAMBLES – In a recent column the Curmudgeon declared war on patent claim preambles.  He supported the view expressed by Judge Dyk in theAmerican Medical Systems case that making all preambles limiting would make better sense than existing law.  Reader DAVE BURLESON of Zollinger & Burleson agreed.  He pointed out that the USPTO insists each claim must be the object of a sentence beginning with “I claim,” or the equivalent.  Dave said this format makes the preamble the primary clause of the object of the sentence.  If no weight is given to the preamble, only the subordinate parts of the object have legal significance.  According to Dave, “No sane author would (intentionally) write in such a manner.”  IPO member JOHN WITHERSPOON of Washington, DC, on the other hand, said, “If we decide that we have to make a change, we should rule preambles out as limitations, not rule them in.”  He continued, “Otherwise, we will still be faced with ambiguity in the law.  . . . will a statement of intended use in a claim to a composition require that the prior art disclose the use for anticipation purposes?  And won’t the preamble effectively convert the composition claim to a method of use claim?”  John, no one ever said patent law reform would be easy.  Bah, humbug!

October 8, 2010

DYK SUPPORTS RADICAL IDEA THAT PATENT CLAIMS SHOULD BE CLEAR – Judge Dyk of the Federal Circuit has come out in favor of the revolutionary view that patent claims should be clear.  The introductory words in a claim are the preamble.  A frequent question in court is whether the preamble is a limitation on the scope of protection defined in the claim body.  Judges grapple with ethereal tests such as whether the preamble breathes “meaning and life” into a claim.  The Curmudgeon said in a 2009 column that “the law of patent preambles is insane.”  Judge Dyk, dissenting in the American Medical Systems case on September 13, 2010, said, “a rule recognizing that all preambles are limiting would make better sense . . . .”  The case law “has become rife with inconsistency.”  Why don’t all of the words in a claim matter?   Bah, humbug!

October 1, 2010

CATCHING UP WITH THE READERS – Last week the Curmudgeon lamented the death of the English language in the IP field and in society generally.  He referred to interviewing a patent attorney who said, “I could care less [about the death of English] . . . .”  This caused a flood of comments from readers who pointed out that “I could care less” should be “I couldn’t care less.” The Curmudgeon knows this, of course, and assumes the readers missed the sarcasm in the “quote.”

A few weeks back, the Curmudgeon published an updated list of “out” and “in” IP words.  He advocated tossing out “service mark” and using “trademark” for marks that identify services as well as for marks that identify goods.  Our good friend DAVID KERA of Oblon, Spivak, a dean of the trademark bar (can the trademark bar have more than one dean?), took issue with this.  Dean Kera noted that “service mark” is in the U.S. statute.  U.S. statutes, unfortunately, are among the worst examples of simple writing on the planet.  Other countries seem to do better.  At least their IP statutes are shorter.  And other countries use “trademark” for marks that identify services.  Bah, humbug!

September 24, 2010

CURMUDGEON LAMENTS DEATH OF ENGLISH LANGUAGE – In his column this week, Gene Weingarten of the Washington Post pronounced the English language officially dead.  He put the date of death as August 21, when the Post referred to the “youngest” of the two Obama daughters and called the family the “Obama’s.”  An ominous sign appeared earlier when theBoston Globe used “pronounciation.”  The Curmudgeon sees such errors hourly in the IP field, which has more college degrees than America has dogs.  IP attorneys no longer know the difference between “effect” and “affect.”  Even the Federal Circuit, long the source of the most careful IP writing, has begun making conspicuous typos.  Jargon is everywhere.  A favorite of IP and lobbying professionals is “reaching out to” for “contacting” or “calling.”  Weingarten says this phrase is “bloated with bogus compassion.”  In U.S. government  budgeting, exceptions to spending rules are now “anomalies” instead of exceptions.  USPTO supporters are fighting hard for anomalies.  Taking a clue from Weingarten, the Curmudgeon interviewed  a patent attorney for this column.  The attorney said, “I could care less.  We write our patent applications in Chinese.”  Bah, humbug!

September 3, 2010

LET’S HAVE A LITTLE CIVILITY IN DESCRIBING IP SUITS – There it was, on August 28 on the front page of the formerly staid Wall Street Journal, a sensational headline reading, “Microsoft Co-Founder Launches Patent War.”  But wait!  Who says Microsoft co-founder Paul Allen, one of the world’s richest men, who recently pledged to give away his fortune, wants war?  He has merely filed a politely-worded patent infringement complaint in court.  (You might call it a “civil” complaint.)  Newspapers, newsletters and blogs have no idea whether Allen’s suit has merit, but they say it’s war.  It’s a great way to get readers.  The Curmudgeon has no idea of the merits of the suit either, but he is disturbed by the sharp decline in civility of language used to describe IP suits.  Accuracy in writing extends beyond grammar, spelling and syntax – it also involves tone.  A certain level of civility is essential for preserving the rule of law.  This week alone, the media called two IP suits “spats,” one response to a suit was a “blast,” and numerous parties were reported to have “hit” others with suits.  Judges, according to the media, no longer dismiss IP suits.  They “toss” them or “kill” them.  Where did civility go?

August 27, 2010

CURMUDGEON POLLS JUDGES ON “FEDERAL CIRCUIT” – The late HOWARD MARKEY, the first Chief Judge of the Federal Circuit, urged people to call the court the “Federal Circuit,” not the “CAFC.”  The Curmudgeon has followed this rule religiously, but he decided recently to find out what the current judges think.  He asked six of the court’s active judges.  Five replied “Federal Circuit.”  They think calling it the “Federal Circuit” helps remind people that it is on the same level as the Courts of Appeals for the 12 regional circuits – the highest federal courts in the U.S. except for the Supreme Court.  Believe it or not, many powerful people in Washington know nothing about the Federal Circuit.  The sixth judge in the Curmudgeon’s survey responded quickly, “You can call us anything you want.  I don’t care.”  The Curmudgeon suspects, however, that there are some names the honorable judge would not like.  Bah, humbug!

August 20, 2010

UPDATED “OUT” AND “IN” LIST – The Curmudgeon, with the help of his readers, has identified many undesirable IP words and phrases in recent months.  Here are a few. The term that should be scrapped is in the “Out” list, and its alternative is in the “In” list.

OUT

IN

CAFC

Federal Circuit

Service mark

Trademark

Know-how

Trade secret

Rebuttable presumption

Presumption

Court decision

Court opinion (usually)

Oral Hearing

Oral Argument

Issue a patent

Grant a patent

An issued patent

A patent

Patent invalid

Claim invalid

Patent infringed

Claim infringed

Invention is obvious

Invention would have been obvious

Claimed invention (in patent bill)

Invention

Comprising (in patent claim preambles)

Including

Contested case (in USPTO rules)

Patent interference

 

August 13, 2010

CURMUDGEON WRITES HIS FIRST LETTER TO A GOVERNMENT AGENCY –

August 13, 2010

Dear Director Kappos:

I am responding to the Federal Register notice of June 14 inviting comments on “Proposed Changes to Restriction Practice in Patent Applications.”  One of your questions is, “5. How could the Office improve rejoinder practice?”  I suggest a term other than “rejoinder” to describe the practice of reinstating claims in an application after a restriction requirement.  The Office has hijacked a common word from the English language and given it a specialized meaning, which tends to drive language purists crazy.  According to the American Heritage Dictionary of the English Language and Black’s Law Dictionary, a “rejoinder” is an answer to a reply, or, in the field of law ever since the 15th century, a defendant’s answer to a plaintiff’s reply.  I suggest that “claim reinstatement practice” would be a more accurate name and might make restriction practice a bit easier to understand.  My employer, Intellectual Property Owners Association (IPO), is sending separate comments on legal issues relating to restriction practice.

Respectfully,

The IP Language Curmudgeon

August 6, 2010

“WOULD HAVE BEEN,” VERSUS “IS,” OBVIOUS – Last week the Curmudgeon agreed with DAVE HILL that obviousness refers to the “claimed subject matter” or the “invention,” and not the patent.  Dave’s other point was that we should say “would have been” obvious.  Again, Dave was correct.  Articles in the popular media and occasionally even court opinions use “is obvious.”  The statute, of course, reads “would have been obvious at the time the invention was made. . . .”  An invention that is obvious today would not necessarily have been obvious at the time it was made.  Inventing may have occurred years earlier.  If the U.S. changes to a first-to-file system, the test will be “would have been obvious before the effective filing date,” still expressed as “would have been.”   Federal Circuit judges Giles Rich and Howard Markey were sticklers on using proper terminology in patent law.  They often quoted from the statute in articles and speeches.   After the 1952 act, Rich reminded people over and over that an “invention” was what the inventor invented, whether or not it was novel or nonobvious.  Eventually his terminology caught on.  Markey told audiences to call the court the “Federal Circuit,” not the “CAFC.”  We’re still waiting for that one to take hold.  Bah, humbug!

July 30, 2010

THE “CLAIMED SUBJECT MATTER,” NOT THE “PATENT” OR THE “CLAIM,”  WOULD HAVE BEEN OBVIOUS –Reader DAVE HILL of Finnegan Henderson says, “I get upset whenever I read an opinion that says a ‘patent is obvious’ or even a ‘claim is obvious.’  Judge Rich and Chief Judge Markey taught me to use the accurate phrasing that ‘the claimed subject matter would have been obvious.’  This is more true to the statute.  What is your advice on this?”   The Curmudgeon absolutely agrees.  Follow the statute.   It’s not the patent or claim that would have been obvious; it’s the “claimed subject matter,” or, slightly shorter, the “claimed invention.”   Section 282 of the statute tells us obviousness and other validity issues are decided claim by claim, so we shouldn’t refer to validity of a patent.  And the focus of an obviousness inquiry is on the subject matter.   Federal Circuit judges, who are among the best patent law writers, usually observe these distinctions.  District court judges are not as careful.  Next week:  Saying “would have been” instead of “is” obvious.  Also, language contributions of the legendary Judges Rich and Markey.  Bah, humbug!

July 23, 2010

IS “FACIAL” BECOMING THE FAVORITE WORD IN LAW?— In a column this month, the Curmudgeon asserted that professors and Supreme Court clerks favor ill-defined words that grate on plain-English advocates.  He promised to comment on “facial,” a word that has been used in numerous recent IP briefs and articles. According to the Supreme Court, a “facial challenge” is a challenge to a statute in which the plaintiff alleges the statute is always unconstitutional. It is contrasted with an “as-applied” challenge, which alleges the statute may be unconstitutional in part.  U.S. Homeland Security Secretary Janet Napolitano, in a recent discussion of the government’s challenge to the Arizona immigration law, referred to “what’s called a facial challenge to the law, which is before it’s been applied . . . .”  Her definition seems to be different from the Supreme Court’s.  “Facial” also means “on its face.”  Patent lawyers are using it as a synonym for “prima facie,” as in “facially obvious.”  In discrimination law, a buzz term is “facially neutral.”  Lawyers are using “facially” generally in briefs to mean “at first glance.”  Reader JEFF WOLFSON of Haynes and Boone said he knows what “facial” means.  It’s something you get at the spa.  Bah, humbug!

July 16, 2010

“IPGO” OR PATENT OFFICE? — The U.S. Patent and Trademark Office may have coined a new term:  “Intellectual Property Granting Office,” or “IPGO.”  The USPTO uses this term nine times in its Federal Register announcement of next Tuesday’s public meeting on the “Enhanced Examination Timing Control Initiative,” a.k.a. the 3-track proposal.  “IPGO” seems to have caught on already, at least among patent attorneys who are talking about the effects of the 3-track proposal on the world’s IPGOs.  Do government offices really grant intellectual property?  They grant patents.  Copyright exists from the time of creation of the work, so copyrights are not granted.  Trademarks are not granted, at least in the U.S., because trademarks are established by use.  They may or may not be registered in the USPTO.  Trade secrets certainly are not granted.  In the case of patents, is it intellectual property or an intellectual property right that is granted?  The Curmudgeon prefers to say the invention is IP and the patent is an IP right.  Can we just say “patent office?”  Bah, humbug!

July 9, 2010

ON “COUNTERFEITING” AND “PIRACY” — The terms “counterfeiting,” “piracy,” and “infringement” are often used interchangeably in the popular media.  It would help if writers knew that “trademark counterfeiting” is the intentional act of producing or selling a product or service bearing a sham trademark that is a reproduction of the genuine mark.  Trademark counterfeiting is an egregious type of trademark infringement.  “Piracy,” according to McCarthy’s Desk Encyclopedia of Intellectual Property (3rd ed., BNA 2004), is usually used to refer to egregious infringement of copyright.  Trademark counterfeiters are also sometimes referred to as “pirates.”  More could be said.  McCarthy’s is an excellent source for definitions of IP terms.

FROM LAST WEEK — The column on odd words used by the Supreme Court in Bilski produced many comments from readers.  A couple of friends defended “atextual,” but did not define it.  “Textual” is one of those words you have to use if you are in the fraternity of Supreme Court Justices, former clerks, and academics,  but “atextual” takes it a step farther down the vagueness trail.  Another word the fraternity uses in a variety of ways in legal writing is “facial.”  The Curmudgeon, a member of the plain words fraternity, will explore “facial” in a future column.  Bah, humbug!

July 2, 2010

BILSKI SUPREME COURT OPINION USES ODD WORDS — Reader Jack Haken of Philips points out that the June 28Bilski opinion of the U.S. Supreme Court used some pretty unusual words:  “pellucid” and “atextual.”  Near the beginning of Justice Stevens’s 47-page dissent, he called  Justice Kennedy’s opinion for the Court “less than pellucid.”  “Pellucid” is in dictionaries.  It means “clear,” according to the American Heritage Dictionary of the English Language.  Use pellucid instead of clear if you want to be unclear or Supreme.  “Atextual,” on the other hand, is not in any dictionary the Curmudgeon or Jack Haken can find.  Justice Kennedy in the opinion for the Court (not a majority opinion, which is another story) said the Court rejected atextual approaches to interpreting the statute.  He did not put atextual in quotes, but Justice Stevens responded by using “atextual” in quotes twice to characterize the “machine-or-transformation” test.  According to Black’s Law Dictionary, one meaning of “textualism” is “strict constructionism,” so maybe “atextual” means “not using strict constructionism.”  The decision should be reversed and remanded on language grounds.  Bah, humbug!

June 25, 2010

TITLES OF IP DOCUMENTS SHOULD GIVE THE READER A CLUE — IP documents, like other documents, should have titles that describe their content.  This is needed for newsletter and journal articles, for legal memoranda, and even for official USPTO notices.  Titles of USPTO Federal Register notices have caught the Curmudgeon’s eye.  In April, the agency published a notice titled “Proposed Change to Missing Parts Practice.”  Did anyone know what that was about?  Recently we saw “Enhanced Examination Timing Control Initiative” and “Patent Application Backlog Reduction Stimulus Plan.”  The former was the “three track” patent examination proposal, and the latter was the “drop and pop” procedure under which you get one patent application examined if you drop another.  Inevitably, people who follow these things will invent their own unofficial titles, but more descriptive official titles would help.  Incidentally, have you noticed that everything in the government is either “enhanced” or a “stimulus?”  Yesterday the USPTO published a notice with the straightforward title: “Trademark Technical and Conforming Amendments.”  We’ll give that one at least a “B.”

May 7, 2010

PATENT CLAIMS “READ ON” REFERENCES, NOT VICE VERSA — Reader Ken Fagin says, “. . . it drives me nuts when I see or hear people refer to the reference reading on the claims.  The claims read on the reference . . . , not vice versa.”  This drives the Curmudgeon nuts too, as well as when people say infringing devices read on claims.  To determine whether claims are anticipated by prior art, or whether claims are infringed, you read the claims and make a comparison.  You might argue that if a prior art reference is text, you also read the reference, but do you “read” a reference that is not in the form of text?  How do you read a device?  The only orderly way of explaining it is that you “read the claims on” the reference or accused device.

PET PEEVES — One of Ken Fagin’s pet peeves is “whether or not.”  The “or not” is not needed.  The Curmudgeon agrees, although it doesn’t upset him as much as his greatest pet peeve, which is saying “CAFC” instead of “Federal Circuit.”  More pet peeves next week.  Bah, humbug!

April 30, 2010

CATCHING UP WITH THE READERS ON IRREBUTTABLE PRESUMPTIONS — Last week the Curmudgeon said there should be no such thing as an “irrebuttable presumption.”  The readers seemed to agree.  NATHAN MACHIN with Amgen and WILLIAM DEVAUL pointed out that if    irrebuttable presumptions do not exist, the adjective “rebuttable” is redundant and should not be used.  CHARLES MILLER of DicksteinShaprio said, “We must be careful in our choice of words.   In particular we need to understand that ‘rebut’and ‘refute’ mean two different things.  To rebut something means to argueagainst it whether successfully or not. To refute something means to succeed in proving that it is incorrect.  . . . a presumptionby definition is always rebuttable and sometimes may be refuted, otherwise it wouldn’t be a presumption, it would be a rule of law. . . . the term “irrebutable”, “irrefutable” or “conclusive presumption” is an oxymoron.”

April 23, 2010

THERE SHOULD BE NO SUCH THING AS AN “IRREBUTTABLE PRESUMPTION” — Last week in the Crash Dummy Movie case, the Federal Circuit dealt with the “rebuttable presumption” of trademark abandonment after 3 years.  A rebuttal presumption, according to Black’s Law Dictionary, is “An inference drawn from certain facts that establish a prima facie case, which may be overcome by the introduction of contrary evidence.”  What about “irrebuttable presumptions,” also sometimes called “conclusive presumptions?”  A source quoted in Black’s says they are usually “mere fictions, to disguise a rule of substantive law . . . and when they are not fictions, they are usually repudiated by modern courts.”  Irrebuttable presumptions are really rules of law.  Let’s stop obfuscation.  If it’s a rule of law, just state the rule.  Bah, humbug!

April 9, 2010

AN IP WORD TO BE AVOIDED: “TROLL” — The term “patent troll” brings forth strong emotions, but no one can define it.  In 2005 IPO sponsored the first national conference on trolls, titled “‘Trolls’ and Patent Property Rights.”  Speakers included PETER DETKIN, formerly of Intel Corp. and more recently with Intellectual Ventures, who coined “troll” after he came under fire for using “extortionist.”  Last year IPO sponsored “Trolls II: Non-Practicing Patent Owners and Other Issues.”  The keynote speaker was RAY NIRO, who had been a litigation opponent of Detkin.  The IPO conferences received rave reviews, but failed to define “troll.”  JEFF HAWLEY, former IPO President and now professor at Franklin Pierce Law Center, said, “A troll is someone you don’t like.”  Many people say trolls are “non-practicing entities,” another pejorative term.  Wait a minute!  If you can’t own a patent without “practicing” it, is it a property right?  And if patents aren’t property rights, will “intellectual property attorneys” have to go back to calling themselves “patent attorneys,” leading to layoffs and huge salary cuts in companies and law firms?  No more IPO trolls conferences.  Call the people you don’t like “IP abusers.”  Bah, humbug!

April 2, 2010

AN APRIL FOOL’S JOKE ON MARCH 22:  FEDERAL CIRCUIT SAID “CONGRESS DOES NOT USE UNNECESSARY WORDS” — The U.S. Court of Appeals for the Federal Circuit usually produces the best IP writing anywhere.  On March 22 in the landmark Ariad case, however, the judges bogged down in a debate over grammar and punctuation in the first paragraph of Patent Act section 112, which defines the written description and enablement requirements.  The court struggled to produce a majority and 4 separate opinions totaling 72 pages.  Judge Lourie, writing for the majority, relied in part on “the rule of statutory construction that Congress does not use unnecessary words,”  but Judge Rader pointed out that Lourie assumed a comma after the word “it” was meaningless.  Judge Gajarsa got it right when he said, “this thicket is the result of our best efforts to construe an ambiguous statute; only Congress wields the machete to clear it.”  The rule that Congress does not use unnecessary words was stated by the Supreme Court in 1883 and repeated in 1955.  It may have been a good rule then, but the 21st century Congress is a factory for unnecessary words and commas.  The copyright and tax codes are drafting jokes.  Patent law is not much better.  The Curmudgeon is laughing so hard he can’t finish this column!

March 19, 2010

MORE ON “ORAL HEARINGS” AND WHETHER COURTS CAN “HEAR” CASES WITHOUT SOUND — Reader TOM FIELD, who is a professor at Franklin Pierce Law Center, took issue with the Curmudgeon’s column last week that urged the USPTO to change “oral hearing” to “oral argument” or “hearing” in its rules.  The good professor said, “’Oral hearing’ is not redundant.  See In re Bose Corp., 772 F.2d 866 (Fed. Cir. 1985) . . . .” In Bose, the Federal Circuit said, “The statutory requirement that a case be ‘heard’ by three board members means judicially heard, not physically heard.  Appeals are routinely heard in a judicial sense with no oral argument.”  Similarly, in a 1973 administrative law case, the U.S. Supreme Court interpreted “hearing” not necessarily to embrace the right to present oral argument.  The Curmudgeon may be hard of hearing, but he sticks with his point.  To ordinary people the phrase “oral hearing” is redundant.  Let’s change that, and then we can take on the issue of whether courts and agencies can “hear” cases with any sound waves being generated.  Another matter:  One of the Curmudgeon’s heroes, legal writing expert BRYAN GARNER, was guest author for the New York Times Magazine’s “On Language” column recently.  He would be a wonderful permanent author of that column, to succeed WILLIAM SAFIRE.

March 12, 2010

THE USPTO SHOULD CHANGE “ORAL HEARING” TO “ORAL ARGUMENT” OR “HEARING” — Reader CHARLES MILLER of DicksteinShaprio says, “Nowhere . . . is one more likely to find a more oxymoronic expression than ‘oral hearing’.  . . .  This ridiculous, nonsensical argot appears throughout the patent literature, especially in (but not limited to) the jargon of the PTO, for example at 37 C.F.R. 41.73 and  M.P.E.P. sec. 2860 (“oral hearing” before the BPAI).  Let us . . . replace it simply with . . . ‘hearing’. . . or ‘oral argument’ . . . .”  The Curmudgeon agrees.  The U.S. Supreme Court and the Federal Circuit call it “oral argument.”  You can have written argument, but can you have a written hearing?  The Curmudgeon thinks not.  According to Answers.com, a “desk arbitration” before the American Arbitration Association is a “non-oral” hearing, but surely it is not a hearing in the ordinary sense of the word.  Low-hanging fruit for USPTO Director Kappos:  Change “oral hearing” to “oral argument” or “hearing” in the patent board rules that are now being amended.  Bah, humbug!

March 5, 2010

MORE INEPT PATENT LAW NAMES:  “UTILITY MODEL” AND “PETTY PATENT” — Last week the Curmudgeon railed about the poor terminology in current U.S. patent reform legislation for the two proceedings called “post-grant review” and “inter partes review,” both of which are post-grant and both of which are inter partes.  The Curmudgeon’s readers agreed.  The U.S., however, does not have a monopoly on bad patent law names.  Several countries have a second-tier patent not found in U.S. patent law called a “utility model” or “petty patent.”  These inexpensive, shorter-term patents are found in Japan, China, Germany, France and elsewhere.  IPO presented a webinar on utility models recently.  “Utility model” causes no end of confusion with “utility patent,” which is a label for a regular patent.  And they aren’t “models.” They’re patents.  As for “petty patent,” imagine the attorney saying to the judge, “Your honor, I want to enforce my client’s petty patent on his trivial invention.”  Let’s call them second-tier or short-term patents.  Bah, humbug! 

February 26, 2010

NEW “POST-GRANT REVIEW” NEEDS A BETTER NAME — Yesterday Senator Leahy announced a tentative agreement in principle on U.S. patent reform legislation, giving new life to the long-running project for overhauling patent law.  IPO supports patent reform legislation, but the Curmudgeon is prompted to raise again the need for a better name for the proceeding called “post-grant review.”   This proceeding would allow people to challenge a patent in the USPTO for 9 or 12 months after the patent was granted.  The name was invented by lobbyists who suggested it to congressional bill writers.  When legislative junkies in Washington, DC want to be really cool, they just say “post-grant,” or “PGR.”  Lobbyists’ greeting:  “How’s PGR today?”  The problem is that the U.S. patent statue already has post-grant reviews: reissues, ex parte and inter partes reexaminations, and a couple of others.  Recently, lobbyists have begun calling inter partesreexamination “inter partes review.”  These names are hopeless.  Both post-grant review and inter partes reexamination are post-grant and both are inter partes.  How about calling the new review a “cancellation proceeding?”  If the name is good enough for trademark law, it’s good enough for patent law.  Bah, humbug!

February 12, 2010

USE CAPITAL LETTERS SPARINGLY IN IP WRITING — The Curmudgeon quoted readers recently on use of capital letters.  The starting point is BRYAN GARNER’s rule, “Use lowercase unless a rule calls for capitalization.”  Garner says, “Some writers overuse capitalization for emphasis.  That’s bad style.”  The Redbook:  A Manual on Legal Style (2d. ed. 2006).  Many rules exist for capitalizing the first letter of a word, some of which we use instinctively (except when typing on a smartphone, where many people don’t capitalize anything).  These basics include capitalizing the first letter of the first word of a sentence and proper nouns.  Beyond these universal rules, though, the trend is toward less capitalization in IP and legal writing.  What about “the Court” for the U.S. Supreme Court?  The Curmudgeon can go along with that, as well as the rule that you should capitalize “Court” when addressing the tribunal that is handling the matter at hand.  It’s a matter of deference.  JIM HOLLENHORST of Agilent Technologies says, “I’d like to know whether I still need to capitalize ‘Internet’ when I am referring to ‘the Internet’ as opposed to ‘an internet.’”  There is debate, but the Curmudgeon votes No (capitalized for emphasis). “Internet” is changing from a proper noun to a generic term.  See the Wikipedia article on the issue.  Bah, humbug!

February 5, 2010

GETTING IT RIGHT ON INFRINGEMENT:  CORPORATIONS AND INDIVIDUALS, NOT PRODUCTS, INFRINGE PATENTS — Last week the Curmudgeon agreed with a reader who said the IPO Daily NewsTM should have omitted the word “on” when it reported that a party “sold products that infringe on Motorola’s patents . . . .”  CHARLES MILLER of Dickstein Shapiro raises another point.  According to Charles, legal entities such as corporations or individuals infringe, and it is improper to say “products that infringe.”  U.S. patent statute section 271 states, “whoever without authority makes, uses, offers to sell or sells any patented invention . . . infringes the patent.  The Trademark Act and the Copyright Act use similar language.  The IPO Daily NewsTM should have said , “X infringed Motorola’s patents by selling products. . . .”   Also commenting on last week’s column, BOB GERBER of Sheppard Mullin writes, “Curmudgeon is wrong [on capitalization] when it comes to the U.S. Supreme Court, which is and always should be referred to as “the Court.”  Maybe.  More on capitalization next week.

January 29, 2010

“INFRINGING ON,” “PATENT NO.” AND CAPITALIZING “EXAMINER” — The Curmudgeon depends on his sharp readers for much of his material.  BRETT AUGUST of the Pattishall, McAauliffe firm caught the IPO Daily NewsTM using a surplus word this week when it reported that a party “sold products that infringe on Motorola’s patents . . . .” (Emphasis added.)  “Infringe on” is wordy.  Just say “infringe.”  MARC BROWN of McDermott, Will &Emery says, “Patent examiners commonly refer to a specific patent as “patent no. X,XXX,XXX,” where the ‘X’s are all numbers.”  He suggests that putting “no.” before the digits is redundant.  The Curmudgeon agrees.  A cursory survey of Federal Circuit opinions reveals that some judges use “no.” before the patent number and some don’t.  For economy of space and better readability, skip the “no.”  Finally, ARTHUR BOOKSTEIN of K&L Gates writes, “One of my pet peeves is the almost religious capitalization of the word examiner. . . . it should be capitalized only when the examiner’s name follows the title (e.g., Examiner Jones). . . .”  Capitalization is worthy of an entire future column, but the Curmudgeon agrees that it is better not to capitalize “examiner” or “court” or “board” when the full name is not used.

January 22, 2010

PATENT MONOPOLIES; FLESHING AND FLUSHING — To be a Curmudgeon, you have to have pet peeves.  Here is one the Curmudgeon shares with Prof. Jeff Hawley of Franklin Pierce Law Center.  Hawley writes, “’Patent monopoly’ is my pet peeve.  Monopoly implies all kinds of things, including market power in the relevant market.  I also think of monopoly as the ability of a party to control something that the public had in the past.  By definition, a patent relates to something that is new.  I prefer ‘patent exclusive right’ whenever I see ‘patent monopoly.’”  Hawley, incidentally, is a past president of IPO.

Another of the Curmudgeon’s pet peeves is the rampant misuse, at least in Washington, DC, of the word “flush” instead of “flesh” when speaking of “fleshing out” ideas.  Incorrect use of “flushing” has reached the point that in the Washington Postof January 12, a political strategist was quoted, not just in the newspaper text, but in a headline, as saying “This gives [Sarah Palin] a platform . . . to flush out some of her policy positions.”  The Curmudgeon imagines Ms. Palin’s positions scurrying out like quail from the underbrush.  Bah, humbug!

January 15, 2010

PATENT TERM “ADJUSTMENTS” ARE EXTENSIONS — Since the Federal Circuit’s January 7 decision in the Wyethcase, publications have been buzzing about patent term “adjustments.”  What is a patent term adjustment?  The very complex section 154(b) of the patent statute, enacted in 1999, tells us an adjustment is a lengthening of the 20-year patent term to compensate for delays in the USPTO.  Always a lengthening of the term, never a shortening.  According to the Patently-O blog, more than 75 percent of patent terms are now being “adjusted.”  Patent statute section 155, by contrast, gives drug patents an “extension” to compensate for FDA delays.  “Extension” is a plain word.  It is an allowance of more time. Why not “extensions” for delays in the USPTO?  Lore has it that back in 1999 Congress thought calling extensions “adjustments” would keep them under the political radar.  Congress will never win the Curmudgeon’s clear writing prize.  Congress is the body that calls tax increases “revenue enhancements.”  Bah, humbug!

January 8, 2010

WISHING YOU A CLEAR, PRECISE, AND CONCISE NEW YEAR! — During the past year the Curmudgeon, with the help of his readers, identified many undesirable IP words and phrases.  Here are a few.  The term that should be scrapped is in the “Out” list, and its alternative is in the “In” list.

 OUT in 2010  IN in 2010
 CAFC  Federal Circuit
 Service mark  Trademark
 Know-how  Trade secret
 Motion for vacatur  Motion to vacate
 Court decision  Court opinion (usually)
 Technology  Invention or innovation
 Issue a patent  Grant a patent
 An issued patent  A patent
 Patent invalid  Claim invalid
 Patent infringed  Claim infringed
 Post-grant review
proceeding (in
patent bill)
 Cancellation proceeding
 Claimed invention
(in patent bill)
 Invention
Comprising (in
patent claim
preambles
 Including
 Contested case (in
USPTO rules)
Patent interference

December 18, 2009

“VACATUR” IS AN UNNECESSARY LATIN WORD IN THE LAW AND “VACATION” IS ESSENTIAL — On November 13 the Court of Appeals for the Federal Circuit issued an order denying a “motion for vacatur” in the famous Tafas v. Kappos case.  What is this word “vacatur?”  After using it a few times, the Federal Circuit concluded, “The joint motion . . . to vacate the district court’s grant of summary judgment and injunction . . . is denied.”  (Emphasis added.)  According to Black’s Law Dictionary, “vacatur” is a Latin word meaning the act of annulling or setting aside, or a rule or order by which a proceeding is vacated.  It is pronounced vuh-KAY-ter, according to Black’s, although the Curmudgeon hears attorneys say “VAY-KAY-ter.”  This is just another unnecessary Latin word in the law.  “Motion to vacate” is perfectly clear.  Black’s says one meaning of “vacation” is “the act of vacating,” but let’s not dilute a sacred word.  We don’t need a word for the act of vacating.  The Curmdugeon’s column will be on “vacation” the next two Fridays.  Happy holidays.

December 11, 2009

CATCHING UP WITH THE READERS ON WIPE-O, AIPLA AND PRINTED PUBLICATIONS — Commenting on the November 13 column on pronouncing IPO (I-P-O), SIPO (sipe-o), WIPO (wipe-o), etc., JOHN HORNICKEL of PolyOne Corp. said the former Director General of WIPO demanded that people pronounce it W-I-P-O, not wipe-o.  CAROLE OBERDORFER of BNA asked whether IPO’s fellow associations AIPLA and INTA are “ape-la” and “int-a.”  Hmm.  The Curmudgeon thinks they prefer A-I-P-L-A and I-N-T-A.  DAVID E. CRAWFORD, JR. of Senniger Powers wants to call SIPO the Chinese Patent Office so clients will know what it is.  Commenting on the November 20 column, PAUL MORGAN said the word that needs to be eliminated in U.S. patent statute sections 102(a) and (b) is not “patented,” but “printed” in “printed publication.”  The requirement that publications be printed was done away with long ago.  MATTHEW MARQUARDT suggested a column on improper hyphenation in IP writing.  The Curmudgeon will look into that.  For example, have you noticed that the New York Times uses “intellectual-property” as a unit modifier?  Bah, humbug!

November 20, 2009

LET’S DELETE THE REDUNDANT “PATENTED” FROM THE CATEGORIES OF PRIOR ART IN THE U.S. PATENT STATUTE — Subsections 102 (a) and (b) – the heart of the definition of prior art in the U.S. patent statute – forbid the patenting of an invention that already was “patented or described in a printed publication” before a certain date.  An IPO member suggests deleting “patented.”  Can an invention be patented without also being described in a printed publication?  In at least all of the major countries in the world today, a patent document is published when the patent is granted.  In fact, a patent application usually is published before the patent is granted.  The pending patent reform legislation is redundant as well.  It says, “patented, described in a printed publication . . . or otherwise available to the public.”  If it’s patented, it’s described in a publication in every country the Curmudgeon knows.  Some little-known country may still grant patents that are not published.  So what?  Why should a U.S. patent be prevented by the existence of a secret patent in a remote country?  Let’s strike “patented” from the statute and save a word.  Bah, humbug!

November 13, 2009

BE IN THE KNOW:  PRONOUNCE “IPO” WORDS CORRECTLY — IPO, the abbreviation for Intellectual Property Owners Association, is pronounced by saying the sound of each of the three letters (I-P-O).  We prefer that over ipe-o.  If you are going to be an IP wonk, however, you should master the names of many organizations that use the letters “ipo” in their abbreviations.  There’s SIPO, the State Intellectual Property Office in Beijing.  Those in the know pronounce it “sipe-o.”  No matter that it doesn’t have responsibility for trademarks or copyrights.  No self-respecting IP wonk calls it the China Patent Office.   Then we have KIPO, the Korean Intellectual Property Office, which seems to be most often pronounced “key-po,” which does not rhyme with SIPO.  Consider WIPO, the World Intellectual Property Organization in Geneva.  It is commonly pronounced “wipe-o.”  Not very dignified, but an improvement over the former name of the organization, which was BIRPI, pronounced burp-ee.  Bah, humbug!

October 30, 2009

WILL “IP” LOSE ITS MEANING AS AN ACRONYM FOR “INTELLECTUAL PROPERTY”? — One of the best patent policy books of 2009 is The Patent Crisis and How the Courts Can Solve It, by Professors MARK LEMLEY of Stanford and DAN BURK, University of California, Irvine.  It is endorsed on the jacket by IPO Executive Director HERB WAMSLEY.  One questionable feature, however, is the way the book uses the term “IP.”  The authors say that they do not intend it to be an acronym for “intellectual property” – a phrase they do not use.  As Lemley and Burk explain, “We refer to intellectual property rights collectively as ‘IP rights’ throughout this book.  There is considerable debate over whether IP rights are in fact ‘property’ in any meaningful sense.  We don’t . . . want to perpetuate the controversial assumption that they are by using the term.”  Remember when 3M and AT&T changed their names officially to what previously had been acronyms?  Does anyone still know that 3M stood for Minnesota Mining and Manufacturing?  AT&T was American Telephone & Telegraph.  If society decides IP rights are not “property” in any meaningful sense, will professors and attorneys go on calling themselves IP professors and IP attorneys?  Will people know that “P” once stood for property?

October 23, 2009

AVOID THE UNCLEAR WORD “COLORABLE” — Be wary of words that have one meaning to the layperson and a different meaning to IP experts.  An example that the Curmudgeon has harped on is “comprising,” which has a special meaning in patent claims.  Another is “colorable.”  Two general dictionaries give “plausible” as a synonym for colorable.  According to Black’s Law Dictionary, however, in the IP field a “colorable alteration” is a modification that effects no real or substantial change.  In the current Senate patent reform bill, patent infringement may be willful if “the infringer engaged in conduct that was not colorably different from the conduct previously found to have infringed . . . .”  It appears that the bill is using the general definition of “colorable,” not the IP definition.

CATCHING UP WITH READERS — Last week the Curmudgeon said the U.S. Patent and Trademark Office should stop “issuing” patents and start “granting” patents.  Reader  David Feigenbaum of Fish & Richardson wrote, “ While you’re at it, even if it were proper to say that the patent office “issues” patents, it is wrong to say that a “patent issues,” though the use of that phrase runs rampant in everything I read. What is it, exactly, that the patent issues? . . . .”

October 16, 2009

THE U.S. PATENT AND TRADEMARK OFFICE SHOULD STOP “ISSUING” PATENTS AND START “GRANTING” PATENTS — The patent statute in some places refers to the USPTO “granting” patents, and in other places refers to the USPTO “issuing” patents.  Former USPTO head GERALD MOSSINGHOFF, now an attorney with IPO member Oblon, Spivak, et al., says he prefers “grant” to “issue.”  The Curmudgeon agrees.  Black’s Law Dictionary recognizes the patent “grant” as one type of property right or interest transferred from one party to another, or the act of making such a transfer.  A grant is a formal transfer by deed or other writing.  Patent “issuance” is less likely to be understood by the general public as something important and formal, although it seems to be the term of choice in the USPTO.  The European Patent Office uses “grant.”  Chapter 14 of the U.S. patent statute, on “Issue of Patent,” is a model for incompetence in drafting.  Section 152 is called “Issue of Patent to Assignee,” but the opening words are “Patents may be granted . . . .”  Would Congress like to take a little time to straighten this out?  Bah, humbug!

October 9, 2009

HOW ABOUT CALLING THE USPTO HEAD “KING,” OR AT LEAST “COMMISSIONER?” — For many years the U.S. Patent & Trademark Office was headed by the “Commissioner of Patents and Trademarks” (earlier “Commissioner of Patents”).  Old-timers still call the agency head, now David J. Kappos, “the Commissioner.”  In 1999, however, Congress changed the titles of agency executives, by accident it seems.  The USPTO head became a mere “Director,” a title also carried by heads of dozens of sub-offices in the USPTO.  The law that changed the titles succeeded a bill that would have made the USPTO a government corporation with commissioners of patents, trademarks, and also copyrights.  It was thought that a business executive should head the three-pronged corporation, so the title adopted was Director.  No one can remember why not CEO.  The corporation proposal failed, however, and Congress did not change the title back before the remainder of the bill passed.

In an even stranger action, the heads of the patent and trademark examining units were renamed “Commissioner for Patents” and “Commissioner for Trademarks.”  Why not “of” instead for “for?”  It seems to have been a typographical error.  Heads of professional baseball, basketball and football leagues are Commissioners “of,” along with countless federal and state officials.  The Curmudgeon cannot find a Commissioner “for” except in the USPTO.  If he were in power, the Curmudgeon would go back to the old, more distinguished, names.  Come to think of it, how about “King (or Queen) of Patents and Trademarks?”  But not King “for,” please.  Bah, humbug!

October 2, 2009

WILLIAM SAFIRE, KING OF LANGUAGE COLUMNISTS –William Safire published his “On Language” column in the New York Times Magazine on Sundays for 30 years until he died last Sunday at age 79.  Some believe he had more influence on written and spoken English than anyone else in the U.S. during that period.  And he made language fun.  His rules for writers included: “Remember to never split an infinitive.  Take the bull by the hand and avoid mixing metaphors.  Proofread carefully to see if you words out.  Avoid clichés like the plague.  And don’t overuse exclamation marks!!”  Safire’s On Language column was the principal inspiration for starting this Curmudgeon column.

Continued from last week:  Stephen Schott of Volpe & Koenig wrote to urge reconsideration of the Curmudgeon’s column entitled “Repealing the Single-Sentence Rule is Not the Way to Achieve Clarity in Patent Claims.”  Stephen decries the use of long sentences in IP writing, and the Curmudgeon agrees.  A 300-word “wherein” clause in a claim should be a ground for disbarment.  The one-sentence format for claims, though, has the advantages discussed last week.  Keys to claim clarity are precision, brevity and organization of the words used.

September 25, 2009

REPEALING THE SINGLE-SENTENCE RULE IS NOT THE WAY TO ACHIEVE CLARITY IN PATENT CLAIMS — In a guest column on the Patently-O blog this week, Stephen Schott of Volpe & Koenig made a plea to the new USPTO Director to repeal the rule that a patent claim must be in the form of a single sentence.  Schott is seeking clarity.  He is right in emphasizing that “The claims serve as property lines . . . .”  It strikes the Curmudgeon, however, that repealing the single-sentence rule would make claims less clear.  The invention usually is a combination of elements or steps enumerated in the claim.  Requiring the elements or steps to be in a single sentence helps the reader see that they are tied together and must be viewed as a whole.

Also, multiple-sentence claims probably would be longer than claims in today’s format.  Adding multiple subjects and verbs would add space.  Today the subject and verb are “I claim,” or equivalent language.  A way to get to Schott’s goal of readability is to divide the clauses of the claim into separate paragraphs or bullets.  In a recent opinion, the Federal Circuit added its own letters to the paragraphs of a claim to make the discussion easier to follow.  Claims can have semicolons and dashes.  Claims should use precise words in order to “particularly point out and distinctly claim,” as required by patent code section 112.  The USPTO Director should strive for clearer claims, but the internationally recognized single-sentence rule should not be scrapped. Bah, humbug!

September 18, 2009

USE “INNOVATION” OR “INVENTION” INSTEAD OF “TECHNOLOGY” FOR CLARITY — Have you noticed that people most often use the word “technology” these days to refer to electronic or digital products and systems?  “Technology” traditionally meant the application of any branch of science to industrial or commercial objectives.  Cf. American Heritage Dictionary of the English Language, 4th ed. (2000).  Are commercial advances in chemistry, life sciences and mechanical devices still properly called “technology?”  A century or two ago, the meaning of “science” underwent a sea change.  When the drafters of the U.S. Constitution wrote: “The Congress shall have power . . . To promote the progress of science and useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries,” “science” referred to works of authors, and “useful arts” referred to works of inventors.  Science  has a very different meaning today and the Curmudgeon reluctantly suspects that the word “technology” is likewise evolving.  In the interest of clarity, that if you have a choice between using “technology” and “innovation” or “invention,” it is probably best to avoid “technology” (unless you are referring to innovation from Silicon Valley).  But it may be a few more years before we can see where “technology” is going.  Will we have to discard the word “biotechnology?”

September 4, 2009

CALL A PATENT INTERFERENCE A “CONTESTED CASE” AND YOU WON’T BE UNDERSTOOD — Attorneys in the private sector and the USPTO who specialize in the small field of patent interferences have long called interferences “contested cases.”  It strikes the Curmudgeon that “contested cases” is a very imprecise label.  Even patent attorneys outside the interferences field don’t seem to know what it means.  A couple of years ago the USPTO added a subpart to its rules entitled “contested cases” to cover interferences and, if Congress passes patent reform, post-grant oppositions.  According to the rules, however, an appeal to the Board of Patent Appeals and Interferences is not a contested case.  And an inter partes reexamination is not a contested case.  A “contest” can be any struggle between opposing forces.  Let’s not use the term “contested case.”  Use “inter partes proceeding” if you want to describe a patent contest with multiple parties.  Bah, humbug!

August 28, 2009

LET’S SAY “PATENT APPLICATION,” NOT “APPLICATION FOR PATENT” — Did you ever wonder why the U.S. patent code says “application for patent” instead of “application for a patent?”  E.g., sections 111 and 118-120.  How did the indefinite article “a” (classified by some grammarians as a “determiner” and the fifth-most-used word in the English language) get dropped?  The Curmudgeon doesn’t know.  His cursory research suggests that “application for patent” first appeared in the 1952 patent act.  The 1836 patent act spoke of applying for “a patent.” At that time they still knew how to write.  The phrase “application for patent” appears in several places in the current code, and the patent reform bills in Congress, which add a lot of words to the code, repeat the phrase over and over.  To the Curmudgeon, applying for “patent” sounds weird.  Come to think of it, why don’t we just say “patent application?  Bah, humbug!

August 21, 2009

USE INTRODUCTORY CITATION SIGNALS TO MAKE LEGAL WRITING PRECISE — In legal briefs, it is essential to include a “signal” at the beginning of citations to show the type and degree of support the cited authorities provide.  The Curmudgeon reviewed the more than 40 briefs filed in the U.S. Supreme Court so far in the Bilski case and found nearly all used introductory signals in their citations.  Experienced brief writers know Supreme Court clerks are unlikely to read briefs that omit signals.  Common signals prescribed by The Bluebook: A Uniform System of Citation include No signal, See and Cf.  A citation with no signal is used if the cited authority directly states your proposition, identifies the source of a quotation, or identifies an authority referred to in your text.  See must be used when your proposition is not directly stated by the cited authority but obviously follows from it.  Cf. must be used when the cited authority supports a proposition different from the main proposition, but sufficiently analogous to lend support.  When Cf. is used, a parenthetical explaining the analogy often is necessary.  The Bilski briefs were high quality.  Only a couple used the Curmudgeon’s most-hated term, “CAFC.”  Bah, humbug!

August 14, 2009

“INEQUITABLE CONDUCT” IS AN INAPT NAME FOR THE WELL-KNOWN PATENT LAW DOCTRINE — Charles Miller of DicksteinShapiro says “iniquitous conduct” might be a more apt expression of what the term “inequitable conduct” is intended to convey in patent law.  The Curmudgeon agrees that “inequitable conduct” is a poor name for the doctrine that a patent is unenforceable when the applicant or owner intentionally misleads or fails to disclose material information.  The doctrine isn’t, or at least shouldn’t be, concerned with equity or fairness, but with more serious misconduct.  “Iniquitous” means wicked or sinful, but is not used much in everyday speech.  The Curmudgeon proposes scrapping the term “inequitable conduct” in favor of “fraud,” a term that is not very well defined in law either, but which better conveys the idea that patents should be unenforceable only if serious misconduct has been proven.  If courts had to find “fraud” before they could hold a patent unenforceable, perhaps they would apply the doctrine now called inequitable conduct only in cases of very clear intent and materiality.

Catching Up With The Readers:  The Curmudgeon’s list of “no-no’s” included calling trademarks for services “service marks.”  Trademark expert David Kera of Oblon Spivak says service marks are defined in section 45 of the U.S. Trademark Act and the vocabulary in other countries should not control legal terminology in the U.S.  The Curmudgeon believes that when other countries have better terminology, the U.S. should change its statutes.

August 8, 2009

NINE NO-NO’S OF IP LANGUAGE — Years ago the U.S. Department of Justice had its “9 No-No’s” of patent licensing, which it later repudiated.  The Curmudgeon has 9 No-No’s of IP Language, selected from earlier columns, which he does not plan to repudiate.

1.  Don’t call the Federal Circuit the “CAFC.”  The Chief Justice of the U.S. calls it the Federal Circuit.  Is that high enough authority, or do we have to ask God?

2.  Don’t call trademarks for services “service marks.”  Outside the U.S., trademarks are trademarks, whether for goods or services.

3.  Don’t ever ignore the preamble when interpreting patent claims.  This one requires a change in substantive law.  We should follow common sense, not court decisions that try to determine whether a preamble “breathes meaning and life” into a claim.

4.  Don’t use “comprising” as the transition word in patent claims.  Dictionaries say “comprising” and “consisting of” mean the same thing.  Only in patent law does comprising mean “including but not limited to the elements or steps stated.”  The USPTO could require “including” instead of “comprising.”

5.  Avoid the fuzzy term “know-how” when you can.  It is different from “trade secret,” but no one knows exactly what it means.

6.  Don’t call the head of the U.S. Copyright Office the “Registrar of Copyrights.”  The official title has been “Register of Copyrights” since 1877.  Members of Congress may have been drunk at the time, but that’s the name they chose.

7. Don’t say patents are invalid unless all claims are invalid.  Some claims may be valid and others invalid.

8.  Don’t ignore the distinction between IP and IP rights.  An invention or a literary or artistic work is “intellectual property” (or “IP”).  A patent or copyright protects the invention or work, which makes it an “IP right.”

9.  Don’t use “said” or “such” in patent claims or other IP documents.  “Said” is no more precise than the ordinary pointing words the, that, this, these, and those.  Lawyers use “such” to mean “the one just mentioned.”  To non-lawyers, the word means “of that kind.”

Bah, humbug!

July 24, 2009

SHOULD WE “VERB UP” TRADEMARKS IN THE AGE OF BING AND GOOGLE? — In the New York Times on July 19, Microsoft CEO Steve Ballmer was quoted as saying he likes the name “Bing” for Microsoft’s new search engine, which is designed to compete with Google.  Ballmer said the name has the potential to “verb up.”  He hopes people will “bing” a new restaurant or job applicant.  According to the Times, the “speed at which reputations are made and destroyed in the Internet age” has changed the thinking about using trademarks as verbs.  This view is supported by Professor Rebecca Tushnet at Georgetown.  The Curmudgeon gives language advice, not business or legal advice, but it seems to him that we should still be careful about allowing trademarks to be used as verbs.  The conventional wisdom is that trademarks should be used only as adjectives, as in “Google search engine.”  As the Times suggested, Google would not want competitors to advertise the use of other search engines for “googling.” Bah, humbug!

July, 17, 2009

PUTTING “SUCH” IN THE DUSTBIN WITH “SAID” — The Curmudgeon condemned “said” as a substitute in IP documents for the pointing words the, that, this, these, and those.  His position received mixed views from readers.  JEFF INGERMAN of Ropes & Gray wrote, “If I may dissent, the use of ‘the’ in place of ‘said’ to indicate antecedence in patent claims as a result of the plain-English movement beginning in the ’70s and ’80s has resulted in there being no effective pointing word for inherent features (a role once served by ‘the’). . . .  I do, however, agree that anyone who uses ‘the said’ should be flogged.”  The Curmudgeon uses “said” only as the past tense of “say.”  Moving on, neither should “such” be used as a substitute for pointing words the, that, this, these, and those.  “Such” as used by lawyers not only is legalese, but it causes ambiguity.  Lawyers use “such” to mean “the one just mentioned.”  To non-lawyers, the word means “of that kind.”  When you say you want to buy “such property,” do you mean the piece of property just mentioned, or just that type of property?  Bah, humbug!

June 26, 2009

THE ONLY THING WORSE THAN “SAID” IN AN IP DOCUMENT IS “THE SAID” — Reader TIM WITKOWSKI of Boehringer Ingelheim Pharmaceuticals, Inc. writes, “One thing that bothers me is the continued use of the archaic definite article or adjective “said” in patent practice (and legal practice generally), instead of the equivalent “the”.  Tim, the Curmudgeon heartily agrees with you.  Not a single contemporary legal writing expert defends the use of “said” as a substitute for “pointing words” such as the, that, this, these, or those.  The idea that “said” is more precise than “the” is balderdash, according to usage guru Bryan Garner.  Yet the use of “said” in patent claims and IP contracts persists.  Some drafters think using “said” somehow gives the reader more confidence that the term being referred to has “antecedent basis.”  Nonsense. “The” serves the same purpose.  Sometimes patent claim drafters even use “the said.”  Legaldegook and redundancy combined.  Bah, humbug!