There are far too many patent issues from poorly written claims. Claims that don’t make sense, aren’t supported by the specification, include grammatical ambiguities, include technical ambiguities, are disjointed (e.g., list of non-connected parts, not an interconnected whole), and/or are technically infeasible exist more often than they should.
In thirty-eight years of patent practice, I have reviewed thousands of poorly written claims that waste a significant amount of money for patent holders. Overall, billions of dollars per year are wasted in the United States alone.
Why does The United States Patent and Trademark Office (USPTO) issue so many patents with poorly written claims? Because that’s how the system is set up.
As the system is now, Patent Examiners have a near-impossible job. A seasoned Patent Examiner is given approximately twenty hours to finally dispose of a patent application (i.e., issue a final office action or allow it). The Examiner cannot issue a final office action on the first review of a new patent application. If the first review of a patent application does not result in allowance, the Examiner must issue a non-final office action.
In practice, this means the Examiner has about twelve to fourteen hours for the first review, which includes reviewing a patent application, finding relevant prior art, and writing the non-final office action. In twelve to fourteen hours, it’s impossible to do a substantive analysis for anything but the simplest of inventions–And very few patent applications are filed for the “simplest of inventions.”
As such, Examiners have little choice but to do a buzz word search to find the prior art, which is far from a substantive analysis. Far too often, the Examiner and the patent practitioner end up arguing buzz word meanings instead of the technical substance of the claims. Hence, the significant number of patents that issue with low quality claims.
To truly fix this issue, Examiners need to be given significantly more time to do a substantive analysis of a patent application. Which means that the USPTO would have to hire significantly more Examiners to process the over six-hundred and fifty thousand new patent applications it receives each year. It’s unlikely that this will happen any time soon.
As a partial fix, I suggest Examiners focus on claim 1 for an hour or two. In that time, an Examiner should be able to tell if claim 1 makes sense: If it reads well, if it is supported by the specification and the figures, if it is void of grammatical ambiguities, and if it is void of technical ambiguities.
If not, the Examiner should issue a 112 rejection, which generally regards a lack of technical detail in the specification, a lack of support for the claims in the specification, and/or a lack of clarity within the claims.
As a long time patent practitioner, I don’t like receiving 112 rejections (or any rejection). But, when a patent application and its claims are well written, responding to a 112 rejection is easy and helps the Examiner render a better decision.
If a patent application and its claims are not well written, it can be very difficult to provide a satisfactory response to a 112 rejection. In such cases, the Examiner should continue with the 112 rejections until the claims are well written or the patent application is abandoned.
So, to the USPTO: please issue more 112 rejections and save us all from the issuance of poor quality patent applications.
**Please note that this article is not legal advice; it is not a legal opinion; nor should you rely on it as legal advice or as a legal opinion. This article merely expresses the author’s general thoughts on a topic regarding the business of patents. Nothing in this article establishes any form of an attorney-client relationship between you, the reader, and the author of this article.
