Comments on: How Not to Read a Patent http://www.robweir.com/blog/2009/08/how-not-to-read-patent.html?utm_source=rss&utm_medium=rss&utm_campaign=how-not-to-read-patent Thinking the unthinkable, pondering the imponderable, effing the ineffable and scruting the inscrutable Tue, 07 Feb 2012 11:20:47 +0000 hourly 1 http://wordpress.org/?v=3.3.1 By: Kim http://www.robweir.com/blog/2009/08/how-not-to-read-patent.html#comment-25745 Kim Tue, 23 Aug 2011 19:10:05 +0000 http://www.robweir.com/blog/2009/08/how-not-to-read-a-patent.html#comment-25745 "Software patents are obtuse; software patent language is obscure" I disagree. Many patents, including software patents are clear in their wording. Those patents, however, do not get much attention, because both the patentee and the potential infringer can assess the scope. In such cases they both know when not to bother the courts. The unclear patents, on the other hand, where neither the patentee nor any third party or even their legal counsels can asses the scope are likely to get all the attention because they end up in court. They end in court only because neither the third party nor the patentee knows whether there is an infringement or not. “Software patents are obtuse; software patent language is obscure”

I disagree. Many patents, including software patents are clear in their wording. Those patents, however, do not get much attention, because both the patentee and the potential infringer can assess the scope. In such cases they both know when not to bother the courts. The unclear patents, on the other hand, where neither the patentee nor any third party or even their legal counsels can asses the scope are likely to get all the attention because they end up in court. They end in court only because neither the third party nor the patentee knows whether there is an infringement or not.

]]> By: Anonymous http://www.robweir.com/blog/2009/08/how-not-to-read-patent.html#comment-2414 Anonymous Thu, 03 Sep 2009 15:51:27 +0000 http://www.robweir.com/blog/2009/08/how-not-to-read-a-patent.html#comment-2414 I once had to review a software spec to see if it conflicted with a patent owned by my company. I had the opportunity to read our patent extremely carefully. It consisted of a number of claims. Each claim was comprised of one or more clauses. An impingement on any one of the claims was for claiming that the spec impnged on our patent. But to impinge on a claim it had to impinge on all of the clauses.<br /><br />The person or company that gets the patent wants as broad a reach as possible, and rivals will want to construe the patent as narrowly as possible. I once had to review a software spec to see if it conflicted with a patent owned by my company. I had the opportunity to read our patent extremely carefully. It consisted of a number of claims. Each claim was comprised of one or more clauses. An impingement on any one of the claims was for claiming that the spec impnged on our patent. But to impinge on a claim it had to impinge on all of the clauses.

The person or company that gets the patent wants as broad a reach as possible, and rivals will want to construe the patent as narrowly as possible.

]]> By: crabbydog http://www.robweir.com/blog/2009/08/how-not-to-read-patent.html#comment-2413 crabbydog Thu, 03 Sep 2009 11:05:40 +0000 http://www.robweir.com/blog/2009/08/how-not-to-read-a-patent.html#comment-2413 Very interesting article and some good comments. Even my knowledge of the English language has improved (I think). Very interesting article and some good comments. Even my knowledge of the English language has improved (I think).

]]> By: makomk http://www.robweir.com/blog/2009/08/how-not-to-read-patent.html#comment-2411 makomk Mon, 31 Aug 2009 16:51:48 +0000 http://www.robweir.com/blog/2009/08/how-not-to-read-a-patent.html#comment-2411 Interestingly, from what I can tell the Microsoft '169 patent is fundamentally useless against ODF. The two independent claims both have a limitation that the document format uses Microsoft's oddball method of doing formatting and not mixed content. These limitations were added during the application process - the original application doesn't have them.<br /><br />This was almost certainly due to prior art issues, and my understanding is that this bars any use of the patent against things that match the original claims but not the narrowed claims. IANAL, though. Interestingly, from what I can tell the Microsoft '169 patent is fundamentally useless against ODF. The two independent claims both have a limitation that the document format uses Microsoft's oddball method of doing formatting and not mixed content. These limitations were added during the application process – the original application doesn't have them.

This was almost certainly due to prior art issues, and my understanding is that this bars any use of the patent against things that match the original claims but not the narrowed claims. IANAL, though.

]]> By: Anonymous http://www.robweir.com/blog/2009/08/how-not-to-read-patent.html#comment-2410 Anonymous Tue, 25 Aug 2009 14:07:00 +0000 http://www.robweir.com/blog/2009/08/how-not-to-read-a-patent.html#comment-2410 There is another reason the specification is so broad, which is hinted at in the article. Companies file patents to put their competitors at a disadvantage. They claim as much as they can, so the competitor cannot work around the patent, but they also describe as much as they can, even stuff they can't claim and don't know how to engineer, to establish published prior art that makes it difficult for a competitor to file a patent in the same field.<br /><br />With such a long description, they also have the option of trying to claim the more far-fetched aspects in subsequent continuation patents, or add further descriptions and claims via continuation-in-part patents.<br /><br />So the general advice is to describe everything that you think you might use, and everything you think a competitor could possibly use, and claim as much as you can get away with. If it's a first patent, you may choose to limit the claims to guarantee it passes, but you can then extend it using continuations. There is another reason the specification is so broad, which is hinted at in the article. Companies file patents to put their competitors at a disadvantage. They claim as much as they can, so the competitor cannot work around the patent, but they also describe as much as they can, even stuff they can't claim and don't know how to engineer, to establish published prior art that makes it difficult for a competitor to file a patent in the same field.

With such a long description, they also have the option of trying to claim the more far-fetched aspects in subsequent continuation patents, or add further descriptions and claims via continuation-in-part patents.

So the general advice is to describe everything that you think you might use, and everything you think a competitor could possibly use, and claim as much as you can get away with. If it's a first patent, you may choose to limit the claims to guarantee it passes, but you can then extend it using continuations.

]]> By: Anonymous http://www.robweir.com/blog/2009/08/how-not-to-read-patent.html#comment-2409 Anonymous Sun, 23 Aug 2009 11:25:44 +0000 http://www.robweir.com/blog/2009/08/how-not-to-read-a-patent.html#comment-2409 Software patents are obtuse; software patent language is obscure<br /><br />Security through obscurity forever! Software patents are obtuse; software patent language is obscure

Security through obscurity forever!

]]> By: Anonymous http://www.robweir.com/blog/2009/08/how-not-to-read-patent.html#comment-2398 Anonymous Sat, 15 Aug 2009 07:04:37 +0000 http://www.robweir.com/blog/2009/08/how-not-to-read-a-patent.html#comment-2398 These are transition terms, which separates the claim preamble from the body of the claim: "comprising" is legally 'open-ended' which means that what the claim includes in scope/coverage can be other things not mentioned in the claim; "consisting" is legally considered 'close-ended' meaning that the claim is limited in scope to only what is explicitly mentioned in the claim. Claim construction (i.e., interpretation) is very complex, so much so that it invites that which attorneys love to do -- argue. Ultimately, it takes a court case and judge/jury to finally determine the scope of any claim. Anything else is just an opinion. A patent is just a starting point. These are transition terms, which separates the claim preamble from the body of the claim: "comprising" is legally 'open-ended' which means that what the claim includes in scope/coverage can be other things not mentioned in the claim; "consisting" is legally considered 'close-ended' meaning that the claim is limited in scope to only what is explicitly mentioned in the claim. Claim construction (i.e., interpretation) is very complex, so much so that it invites that which attorneys love to do — argue. Ultimately, it takes a court case and judge/jury to finally determine the scope of any claim. Anything else is just an opinion. A patent is just a starting point.

]]> By: Gary McGath http://www.robweir.com/blog/2009/08/how-not-to-read-patent.html#comment-2397 Gary McGath Fri, 14 Aug 2009 20:08:28 +0000 http://www.robweir.com/blog/2009/08/how-not-to-read-a-patent.html#comment-2397 The real problem with software patents is that not only are they incomprehensible to lay people, they're incomprehensible to technical people. Their claims are described in "process" terminology that runs counter to how developers think about software operation. So it's not surprising that most of the commentary fails to make sense of what's going on.<br /><br />If software relied simply on copyright for protection, there would be much less FUD about software development. As things stand, no one can tell what might violate a patent. The real problem with software patents is that not only are they incomprehensible to lay people, they're incomprehensible to technical people. Their claims are described in "process" terminology that runs counter to how developers think about software operation. So it's not surprising that most of the commentary fails to make sense of what's going on.

If software relied simply on copyright for protection, there would be much less FUD about software development. As things stand, no one can tell what might violate a patent.

]]> By: Anonymous http://www.robweir.com/blog/2009/08/how-not-to-read-patent.html#comment-2396 Anonymous Fri, 14 Aug 2009 17:13:15 +0000 http://www.robweir.com/blog/2009/08/how-not-to-read-a-patent.html#comment-2396 @jhominal:<br />On groklaw (http://www.groklaw.net/article.php?story=20090812144154814) there are links to the original complaint, Microsoft's response and i4i's response. @jhominal:
On groklaw (http://www.groklaw.net/article.php?story=20090812144154814) there are links to the original complaint, Microsoft's response and i4i's response.

]]> By: jhominal http://www.robweir.com/blog/2009/08/how-not-to-read-patent.html#comment-2395 jhominal Fri, 14 Aug 2009 08:59:30 +0000 http://www.robweir.com/blog/2009/08/how-not-to-read-a-patent.html#comment-2395 I would like to know where I can read the court's claims construction opinion in the i4i versus Microsoft case, or at least where I should search for it.<br /><br />Thank you in advance. I would like to know where I can read the court's claims construction opinion in the i4i versus Microsoft case, or at least where I should search for it.

Thank you in advance.

]]> By: aj http://www.robweir.com/blog/2009/08/how-not-to-read-patent.html#comment-2394 aj Fri, 14 Aug 2009 07:54:25 +0000 http://www.robweir.com/blog/2009/08/how-not-to-read-a-patent.html#comment-2394 Excellent post - tons of stuff in there I didn't know about, not that I speculate on patents much.<br /><br />However, I found it rather funny when I looked up the difference between consist and comprise in the OS X dictionary:<br />comprise |kəmˈprīz|<br />verb [ trans. ]<br />consist of;<br /><br />It does however note confusion in modern times that comprise means "consists entirely of" rather than just "consists partly of". Excellent post – tons of stuff in there I didn't know about, not that I speculate on patents much.

However, I found it rather funny when I looked up the difference between consist and comprise in the OS X dictionary:
comprise |kəmˈprīz|
verb [ trans. ]
consist of;

It does however note confusion in modern times that comprise means "consists entirely of" rather than just "consists partly of".

]]>