Why You Don't Want Lawyers With Senses Of Humor Writing Your Patent Applications

from the what-can-you-do? dept

Davis Freeberg writes in to point us to Eugene Volokh pointing to a somewhat embarrassing claim in a patent application that just goes to show that the applicant never bothered reading what his lawyers came up with:

“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.”

Oops. Of course, this highlights one other problem with the patent system today. It’s not the inventors who write most patents. It’s often the lawyers who are wording the patent very carefully to make sure that it’s as broad as possible. That means, at times, the patent wording isn’t really about what the inventor actually came up with.

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Comments on “Why You Don't Want Lawyers With Senses Of Humor Writing Your Patent Applications”

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jsnbase (user link) says:

Re: Re: patent

The person you’ve described would be so gut-wrenchingly stupid that any patents they held would need to be immediately revoked, along with their lungs.

the claim is included to determine if the inventor actually read the claims and the inventor should instruct the attorneys to remove the claim

Yep, that’s some high-end legalese right there.

Ritchard says:

Re: Patent Attorney

Speaking as a Patent Agent and searcher I have seen much more ignorant claims in many disclosures. I work for many large tech companies but the most hilarious appear to come from the MAJOR computer companies. Take a guess. The name of the game is quantity. not quality! I would love to provide some samples, but its obvious I would lose my contracts. Its really getting bad in the corporate world for research and development. Enough said

Kurt (user link) says:

I see things like this in patent applications my lawyers draft and in corporate contracts all the time. Too often people describe their idea (for patents) or come to a verbal agreement (any licensing contract) but do not actually read what is going down in writing.

I dislike legalese as much as anyone, but it exists and we must deal with it.

This is another good example of why you cannot simply leave it to the lawyers but actually need to read any contract that you sign. The fine print does matter…

Wolfger (profile) says:

Dave Vick

what is “legalese” or “confusing” about the phrase “the claim is included to determine if the inventor actually read the claims and the inventor should instruct the attorneys to remove the claim”? That’s pretty straightforward English that any high school grad should have no problem understanding. If you’re smart enough to invent something, you darn well ought to be smart enough to read the language you are filing for a patent in.

I think items like this should be included by all attornies, and filed patents in which these claims have not been removed should be summarily denied with no explanation.

Kurt (user link) says:

Re: Re:

“Or the attorney has a conflict of interest, a bigger dog to answer to, someone that wants this patent rejected and this is the easy way to accomplish it… through an obvious error.”

Note: This is a patent application only, not a patent.

Claims can be edited, rewritten, added and removed after the application is filed. It is the description and body of the patent application that cannot be changed. This will not result in the application being thrown out, but it will likely result in a closer look by the patent office through the rest of the process.

Jim says:


The Patent Office “used” to break even but a few years ago, NOW Uncle Sam gets a cut…the incentive is to approve anything…and everything…it is sort of a joke. The guy that wins is the guy that invents something and makes it to the bank before the check bounces….skip the patent they “usually” are not worth the paper they are printed on. That is my 2 cents…besides if there IS money floating around your idea you better believe some laywer somewhere has a theory why the company he represents has already been working on the very same idea….

The Patent Office just stamps and collects its cut….

Michael Grimm (user link) says:

Good Lawyers

It’s often the lawyers who are wording the patent very carefully to make sure that it’s as broad as possible. That means, at times, the patent wording isn’t really about what the inventor actually came up with.

I oversee part of the patent process at a software company and I have to say that any patent lawyer worth his salt knows there is a balancing act between protecting the invention (by writing claims broadly) and giving it the best chance of success (by making sure those claims are innovative.) The last sentence of this story is really very misleading.

Matt says:

Reminds me of the old Van Halen story…

Back when Diamond Dave was still with the band, Van Halen was notorious for, among other things, actually including a provision in their performance contract that demanded a big bowl of M&Ms, minus any brown candies, in their backstage area. The clause further went on to state that the presence of one brown M&M gave Van Halen the right to refuse to perform with the promoter forfeiting all promised amounts to the band.

It sounded like another case of rock and roll excess, but David Lee Roth said later that there was actually a method to the madness. The staging for the band’s performance was rather extensive and technical, and a lot of the venues would just take one look at the phone book-like tome that held the technical details and decided to just wing it. More than once, this had caused problems that would have been non-issues had the specs been read correctly.

The band reasoned that if they found a bowl of M&Ms with the browns, or (even worse) no bowl at all, then there was probably going to be a greater problem later on because the promoter/venue didn’t RTFM.

Sounds like more or less the same thing here.

Mike Brown (user link) says:

In fairness to the inventor...

> Answer: because you sign an oath under penalty
> of perjury that you have read and understood the
> application – including the claims.

That’s certainly true, but I think this case is a bigger problem for the law firm who filed it, who obviously didn’t proofread the application before they filed. The “read and understood” is something of a legal fiction when you’re dealing with foreign inventors – in this application, the inventor is Japanese and the original provisional applciation on which this was based was filed in Japanese.

It’s quite possible that he can’t read English, any more than I can read the Japanese claims our agents file for my clients. If we’re filing in a Western country, I can usually puzzle out the claims at least to some extent. When you’re dealing with countries like Japan or China, where they don’t even use the same alphabet as we do, you have to depend on the agent in the country to file what you thought they filed. I’m sure the same is true in reverse.

Douglas Sorocco (user link) says:

No fairness due inventor

While I certainly agree that the lawyer and law firm involved should be blasted to the moon and back on the ethical charges, the fact remains that the inventor signed a statement that was factually false – under penalty of perjury.

While you say it is a “legal fiction” – the fact remains that the inventor has an obligation and duty to read the application, including the claims, and ascertain that the application represents what he believes to be the invention.

Reading claim 9, as someone else stated herein, there isn’t any technical wording – it is rudimentary English. Whether it was the law firm’s fault, the fault of the inventor’s English, etc. The fact remains that the inventor signed a false statement under penalty of perjury.

Although I think we can all agree that the application at issue is pretty much a dead duck – the inclusion of claim 9 and the inventor’s false statements more than likely render any patent which would issue from the application inherently invalid.



Technical document writing

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Bob Gibson says:

Lawyer Sense of Humor

Hiring a patent attorney does not relieve the inventor of his responsibility to verify the correctness of his application. If the inventor does not feel qualified to double check the application he/she should seek some one who is.

This kind of kind of prank can go VERY wrong and create serious unintended consequences.

Get your giggles another way!

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