Tafas

Hooray! Or something slightly muffled along those lines. the federal circuit three judge panel took on tafas and got it mostly right. except that nonsense about continuations (more on that later).

for the vast majority of those who don't follow the goings-on at the united states patent office (hereinafter 'pto'), here's a quick summary: after several years of studies showing that the patents the pto issues are of generally poor quality, and after some (very justified, in my opinion) indignation over the practice adopted by some in the patent bar of submitting patent applications containing literally thousands of claims (a claim is the part of a patent that describes what the applicants wants to 'own') and then following that up with decades of continuations (a continuation is basically a follow-up application), the pto stood up and threw down the gauntlet.

okay, maybe that was a bit too technical. here's another stab at it: patent attorneys are generally an obnoxious bunch and have been abusing the process by which the government grants patents. a couple of years ago, the pto decided to issue some new rules to stop the more abusive practices.

better? eh. i care about this because i work on contract for the patent office. true, that makes me biased, but it also gives me a perspective into the process that most patent attorneys lack. i've evaluated patent applications with fewer than five claims, and i've taken on buggers with over a hundred. i've reviewed first time applications with truly novel features, and i've taken on continuations where the applicant has literally added three sentences to an application filed two years previously.

what keeps coming back to me is some advice an old patent attorney gave me when i was working as an intern at the cleveland clinic: the best patents have the shortest claims. here's an example: turn back the clock a few millenia to when the first chair was invented. you're a patent attorney back then (humor me) and the neanderthal who invented the chair comes to you with his invention. how will you describe the chair in your claim? a good, short claim will read something like: an apparatus for sitting, comprising at least one leg and a seat. if the neanderthal client is truly the inventor of the first chair, you file that claim and walk away happy.

the problem is, while clients have typically advanced beyond the neanderthal stage, the evolution of patent attorneys hasn't proceeded so quickly. a modern patent attorney might draft a long list of claims, reading something like:

1) an apparatus for sitting, comprising:
a supporting apparatus, comprising at least one leg, each leg comprising a proximal and a distal end,
wherein the distal end of each leg rests on a surface,
wherein the proximal end of each leg forms a connection with a seat, and
wherein the seat comprises an area suited for sitting.

2) the apparatus of claim 1, further comprising a back attached to the area for sitting.

3) the apparatus of claim 2, wherein the back is attached to an end of the area for sitting.

4) the apparatus of claim 1, wherein the at least one leg and the seat are made of wood.

5) the apparatus of claim 1, wherein the surface is earth.

6) the apparatus of claim 1, wherein the surface is carpet.

7) the apparatus of claim 1, wherein the surface is linoleum.

8) the apparatus of claim 1, wherein the surface is tile.

9) the apparatus of claim 1, wherein the surface is wood.

10) the apparatus of claim 9, wherein the wood is a hardwood.

(imagine the next ten surfaces on which a person might place a chair)

20) the apparatus of claim 1, wherein the surface is located in a kitchen.

(imagine the next ten locations where one might situate a chair)

31) the apparatus of claim 1, wherein the surface is cleaned.

32) the apparatus of claim 1, wherein the surface is cleaned at least once a week.

33) the apparatus of claim 31, wherein the surface is cleaned by mopping.

34) the apparatus of claim 31 wherein the surface is cleaned by sweeping.

(imagine the next ten ways that you can clean an area where a chair might be.)

44) the apparatus of claim 20, wherein the kitchen is located in a residential home.

45) the apparatus of claim 20, wherein the kitchen is located in a restaurant.

46) the apparatus of claim 45, wherein the restaurant is a fast-food restaurant.

47) the apparatus of claim 46, wherein the fast-food restaurant is open at least eight hours a day.

48) the apparatus of claim 47, wherein the fast-food restaurant is open twenty-four hours a day.

49) the apparatus of claim 45, wherein the restaurant is a high-end, sit-down restaurant.

50) the apparatus of claim 49, wherein the high-end, sit-down restaurant employs snooty waiters.

(imagine the next twenty or so locations, restaurants and otherwise, wherein you might find a chair).

(imagine the next fifteen or so designs for a seat back)

(imagine the next ten designs for chair arm rests)

(imagine the next five designs for two, three, or more legs, stablizers connected to the legs, etc.)

(finally, imagine a follow-up patent application, of equivalent length, filed each year for the next ten years, each follow-up claiming nothing more than an additional feature, like a soda can holder in year one, a cushion in year two, etc.)

alright, you probably get the picture.

let's go back to the original neanderthal claim. if your client has truly invented the world's first chair, that one, single, simple claim is all you need. you don't need to lay down a legal claim to a chair located in a high-end, sit-down restaurant with snooty waiters because a chair is a chair is a chair is a chair. no matter what it's made of or where it's located, and no matter how many snazzy features you add to it, if you walk into court with that single, simple neanderthal claim, you walk out with a license requiring olive garden to pay you a nickel each time a fat-ass father of twelve sits down to eat his fettuccine alfredo, and a license requiring rc willey to pay you three bucks for each lazy-boy they sell to the dumbass mormon mother of ten who went to byu for one semester and reads stephanie meyer, and a license giving you five thousand dollars for each luxury italian leather office chair each bone-headed partner at the patent law firm of obi-wan, knobbe, skywalker, vader and palpatine leans back in while his 95 pound silicon-breasted blonde first-year-junior-associate-in-a-black-dress-and-no-panties gives head.

a chair is a chair is a chair is a g*d-d***n-f******g chair!

sigh.

so, what the patent office originally did was issue a rule limiting patent applications to five so-called independent claims (see claim 1 above) and twenty claims total. which is pretty generous to begin with because in my experience, once the independent claim is proved not novel or obvious, there's nothing ten or twenty or a thousand dependent claims can do to salvage the patent. all that piling on claims does is make the examiner's life more miserable. and making the examiner's life miserable just makes him cranky and less disposed to agree with your arguments, and in any event, prolongs the patent examination process for everyone (i swear, if i hear one more patent attorney complain about three-year waits for first office actions, i'm going to take the nearest thousand page biotech patent and start clobbering).

after much bitching and moaning, the patent office softened their original claim limiting rule to require applicants to conduct and submit an independent search of the prior art, along with an explanation, if the applicant applied for more than five independent claims or more than twenty claims total. the simple rationale being: you want the patent office to examine a shitload of unnecessary and duplicative claims, you get to make the examiner's job easier.

"so what did the federal circuit rule?" you ask, my long-suffering reader? simple: that the patent office could limit the number of claims by forcing applicants to submit the search, but that the patent office could not limit the number of continuation applications.

honestly, i suppose i should be pleased with the ruling. first, applicants will generally, probably, submit shorter applications. and second, continuation practice will continue, which is actually a huge plus for the work i do, since pct applications (the ones i work on) play by slightly different rules which allow me to use continuations as legitimate prior art, as long as they're published more than a year previous to the pct application i'm working on. it's a nice little trick i've used on several occasions to dispose of a case in a tenth of the time usually required for the non-continuation dealies, and allows me to fantasize about how frustrated moronic patent attorneys will get upon seeing their own work used against them.

you know, though, i really kind of just wish that cro-magnon clients and neanderthal patent attorneys would stop trying to game the system. i'm a socialist, and i generally despise our modern worship of free markets, but if we're going to have a market-based economy, for c****t's sake, let's not clog up the works by allowing mountains of patents to create thousands of niche (and not so niche) monopolies.

of course, the next few years will get taken up litigating this baby before the federal circuit en banc, maybe taking a stab at getting congress to crush the rules, litigating the rules in the district court again, appealing the district court's ruling, etc. etc. etc. etc. etc.

hopefully by then, i'll be working for the state department.