Patent Drafting Program

[tca...@mango.corp.sgi.com]

ber...@huey.udel.edu (John "John" Berryhill) writes:

>And, by the way, did anyone else get an advert in the mail for a
>computer-aided patent writing program? I can't imagine what the
>thing might do that would be all that terribly helpful. I've written
>WordPerfect macros for things like automatic claim numbering while
>retaining dependencies, scanning the doc for reference numbers and
>compiling a list of words preceding each number, and stuff like that.
>But I couldn't see spending good money on a program that is alleged
>to be able to ask a set of questions and then outline an application.

What, are you worried that it will put us out of business?
(Actually, I am like you, I can't see what it can do
that would be that helpful).

Bruce E. Hayden 1720 South Bellaire Street
bha...@csn.org 1100 Colorado Tower Bldg.
(303) 758-8400 Denver, Colorado 80222

Actually, if the program in question is the same one I'm think of (by
Saratoga Associates, or something similar), it can be useful.

I alpha tested the program back in 1987. While I haven't used it since,
that has primarily been due to the fact that I now work in Unix and the
program is a PC application. Based on the old product that I knew, I
wouldn't recommend its use for a seasoned application drafter, but I would
recommend its use to someone in the first three years of learning the
trade.

What it does is help you start and maintain the drafting of an application
in a proper logical order. It has you start out writing the specification
and numbering drawings and keeps track of your numbering and part
components along the way. Then it assembles outline claims based on the
primary elements you have specified, with dependent claims including
subcomponents. These claims have to be trashed to write real claims, but
they can help a novice learn how to properly structure the applications and
claims. While this sounds good for mechanical and hardware based
applications, I don't know how it would work for software. Then again, I
haven't seen it for over six years, so I don't know what it does now.

Tim Casey

[Bruce Hayden]

tca...@mango.corp.sgi.com () writes:

Well, I was taught to write the claims first. Then the detailed spec.
Why? To get the language consistent. Often you tweek the claims over
and over again to get them right. This often requires changing
terminology. I can attest to the problems of consistency when you
try to do the detailed spec first. You find yourself forever reediting
the spec to make it consistent. (Actually anymore, I do it more
iteratively. But many of the senior attys in the office swear by the
get the claims right first approach).

I don't see though why software cases are any different, especially
since to get them through the ones I have written look somewhat like
electrical cases anyway. (Actually maybe mechanical cases that are
using electrcial components - since you really don't have to connect
the circuitry together as well as in an electrical case).

[Art Bickel]

In article <bhayden.744623214@teal> bha...@teal.csn.org (Bruce Hayden) writes:
>tca...@mango.corp.sgi.com () writes:
>
>>ber...@huey.udel.edu (John "John" Berryhill) writes:
>
>>>And, by the way, did anyone else get an advert in the mail for a
>>>computer-aided patent writing program? I can't imagine what the
>>>thing might do that would be all that terribly helpful. I've written
>>>WordPerfect macros for things like automatic claim numbering while
>>>retaining dependencies, scanning the doc for reference numbers and
>>>compiling a list of words preceding each number, and stuff like that.
>>>But I couldn't see spending good money on a program that is alleged
>>>to be able to ask a set of questions and then outline an application.
>
>
>>What, are you worried that it will put us out of business?
>>(Actually, I am like you, I can't see what it can do
>>that would be that helpful).
>
>>Bruce E. Hayden 1720 South Bellaire Street
>>bha...@csn.org 1100 Colorado Tower Bldg.
>>(303) 758-8400 Denver, Colorado 80222

I have to be skeptical about this. But perhaps someone could post a
sample output of this program so that it could be commented on.

By the way I also tend to write claims first; although sometimes I
prefer writing the "Background of the Invention" section first to fully
gain an appreciation of the prior art. I've worked out a macro on Word
Perfect for converting the final claim language into more or less
readable text which is inserted into the Summary of the Invention
section to assure specific support for the claims.

Arthur Bickel

[Bruce Hayden]

abi...@top.cis.syr.edu (Art Bickel) writes:

>Arthur Bickel

I would be interested in seeing what you do there.

On a similar level, one of the attys in our office has taken to
including all of his claims (independant and dependant) in the
specifications as purposes. He uses the form:
One of the purposes of the invention is <insert claim 1 language>
Another of the purposes is <insert claim 2 language> etc.

Unfortunately, this makes the patent that much harder to read.
(I can guess what the patent looked like that he recently
completed that had 500 claims).
(I will admit that readability invariably takes a back seat to
other concerns in drafting a patent).

[Art Bickel]

We recently came across a patent in which the Summary of The Invention
section consisted only of the following.

The invention can readily be understood as follows:

[Here the claims were inserted verbatim].

I suppose this satisfies the bare requirements of Sec. 112, but I
imagine a judge having to read it would be rather annoyed. That's why I
try to convert the claims to human-readable language. But I haven't
been in the game long enough to have my cases litigated, so I'm guessing
as to whether this approach is optimum. People I ask about this
have widely varying opinions and styles.

A lot of our cases are filed overseas, where a problem-oriented approach
to claim interpretation is sometimes taken. So I usually try to
accommodate this in the Summary Section as well.

Any suggestions?

Arthur Bickel

[Lee Hollaar]

In article <bhayden.744793000@teal> bha...@teal.csn.org (Bruce Hayden) writes:

>On a similar level, one of the attys in our office has taken to
>including all of his claims (independant and dependant) in the
>specifications as purposes. He uses the form:
> One of the purposes of the invention is <insert claim 1 language>
> Another of the purposes is <insert claim 2 language> etc.
>
>Unfortunately, this makes the patent that much harder to read.
>(I can guess what the patent looked like that he recently
>completed that had 500 claims).
>(I will admit that readability invariably takes a back seat to
> other concerns in drafting a patent).

It also means that there is a very strange part in the specification
when the claims have to extensively modified during the prosecution
of the application. In a number of cases in which I've been involved,
the final claim language is considerably different from the language
of the claims as filed, although they both claim the same invention,
because the examiner didn't like particular words or a style of
claiming and it wasn't worth the fight.

Lee

[kalpana...@gmail.com]

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