Author Patent Consultant Maria Laini.
In my previous article I briefly touch on the importance of including clear and “sufficient” instructions in your patent applications, as these form a recipe that a skilled technical person should be able to implement. Being too vague, or imprecise can cost you the patent, either during examination, or after grant.
Whilst the role of a patent attorney is crucial when it comes to minimising the chances of any clarity and sufficiency objection, I believe that the clients that work with the attorneys to get the patent application filed can benefit greatly from a few drafting tips. And I believe this to be especially true when it comes to very complex technologies.
Read more about patent application.
Surely, we can just look it up in the dictionary?
Every field of technology comes with its own technical jargon. Inevitably, this technical jargon will play a role in the patent drafting process, at least in the discussions between the attorney and the inventors.
As patent consultants, our bread and butter is to match technical terms with the right context, and evaluate whether a particular choice of words is, first, necessary, and, if necessary, whether said choice of words is understandable enough, or whether it would require further explanation. Typical questions we ask ourselves are:
- Is this technical term appropriate for the claim?
- Is this technical term suitable to describe the invention?
- Should it be kept in the claim, with an appropriate description in “layman” terms as a back-up?
- Should said term be avoided altogether, for the sake of clarity?
One problem that I encounter often, especially with highly complex technologies, is that terminology that sounds perfectly straightforward to the inventor (or applicant) may, in fact, mean different things to different people, even amongst technical people in the same field. Especially with emerging and fast-developing technologies, a certain term may not be universally used to indicate one and one thing only. Sometimes, there is disagreement in the scientific community, on how to use a particular term, especially when said term indicates something new, or relatively new. Finally, technical terminology within a field can change over time, and these changes need to be considered, when drafting a patent application.
Think, for example, of the word “bandwidth”. This word has different meanings, depending on the technical area it is used in (1). In computing, the term “bandwidth” indicates the maximum rate of data transfer across a given path, but in the field of signal processing it indicates a range of frequencies of a signal 1). If we are drafting an application for an invention which is purely within the field of computer science that has nothing to do with signal processing applications, the word bandwidth may become self-explanatory. However, it is not uncommon to have inventions which fall within both computer science and signal processing. In these cases, the word may become ambiguous.
Computer science is an interesting field to look at, when it comes to ambiguous technical jargon, because this is a field where we can observe an extremely rapid development of multiple glossaries and open-source code libraries, as more and more software engineers and data scientists share their knowledge online. I still remember many long afternoons spent on Stack Overflow, when I was studying C++ and Python at the university, and I can definitely say I have a few “what does X mean in programming language” questions in my search history.
This phenomenon can sharpen the problem of terminology ambiguity, as different people would develop their own technical dictionary independently from one another, in a way that is rather decentralised and with a relatively flat hierarchy. This issue is sharpened even further in multi-disciplinary collaborations, where experts from different fields meet and find out that they use the same term to mean completely different things.
In this article (2) from 2014, there is an interesting analysis of this topic, and an account of how emerging words can rapidly evolve in computer science. An interesting example above all is the term “learning object”. An extract from the article tracks the history of the meaning of this term:
“A range of definitions exist as to what exactly a learning object is, the Learning Technology Standards Committee (LTSC, 2000) suggests that a learning object is “any entity digital or non-digital, which can be used, re-used or referenced during technology supported learning”, The Learning Objects Network (LON, 2002) suggests that they are “stand-alone ‘chunks’ of information that have value. Examples include a textbook; an appendix in another book; a map; a graphic; an interactive application; an online video; a wiring diagram; a simulation; and so on”; Such definitions are exceptionally broad and could almost be referring to anything. Wiley (2002, p.6) suggests a more useful definition of “any digital resource that can be reused to support learning.”
I find this article really interesting, as it describes how the meaning of terms such as “object” or “metadata” has developed through research, and how these terms can find suggested definitions from different research bodies or individual academics. These definitions do not always (immediately) converge into one, and this can cause important misunderstandings.
Although this article is now rather “old”, I believe that it describes a problem that still exists and should not be underestimated, when drafting patent applications. We may now know what an “object” is in programming language, but we have to face similar issues with new, emerging elements of programming and computer science in general.
Claim everything that works
Another problem that can come up, relates to the specificity of a particular word. For example, you may want to draft a claim directed to a computer program which uses an artificial neural network (ANN) to perform a task. The term ANN encompasses many different techniques, and the inventor may present an example or two to their attorney. In these situations, it may be unwise to limit the claims to a very specific ANN, when many others would work in the same way, and produce the same outcome. However, trying to vaguely cover all ANNs may be equally dangerous, as some, or even many of these models may not work correctly to perform the claimed task.
In situations like these, it is crucial to think about what is the clearest and best word that can be used, to encompass all the models that work, and leave out the ones that do not serve the purpose. Whilst the role of a patent attorney is crucial in asking these questions, the inventors are certainly the best people to answer.
Allow me to use again a baking analogy. If you are the inventor of pizza dough, and you are drafting your pizza dough patent application, you will need to disclose that you are using yeast, as this is a fundamental ingredient. If you don’t, you are not disclosing your pizza dough recipe sufficiently enough, and an examiner is going to object that a skilled baker reading the recipe could tragically end up with some flat bread. Even if the examiner overlooks this detail during examination and grants you a patent, there may be some rival baker who has paid a patent attorney to monitor patent applications directed to baked goods. This baker could find your patent and let the Patent Office know that your recipe does not work. This could cost you the patent, if you do not have any description or mention of the word “yeast” in the claims nor in the description of the patent.
Furthermore, you cannot really claim a generic raising agent instead of yeast, because putting baking soda in your flour is not going to produce a pizza dough (or at least, not by Italian standards, which I must religiously abide to). For this reason, the word “yeast” would be more appropriate than “raising agent”.
However, you don’t need to limit your pizza claim to dried yeast, fresh yeast, or Sourdough type of yeasts, as they all work to make pizza.
A more technical example relates to the difference between the words “fluid” and “gas”. It is well established that these words mean different things, and that a gas is a fluid, but not all fluids are gases. However, the word “fluid” may be used, by an inventor or a distracted patent attorney, to describe a process which, in fact, solely works with gas, and not with fluids in general. This can be easy to overlook – and it should not, when drafting the application.
If you try to transpose this example to more complex technologies, it should become clear how good communication between the attorney and the inventors is crucial, in getting these important details right for a waterproof patent application.
References
(1) https://en.wikipedia.org/wiki/Bandwidth
(2) Gordon, Damian; Lawless, Deirdre; and Gordon, Claire (2014) "Speak Clearly, If You Speak at All; Carve Every Word Before You Let It Fall: Problems of Ambiguous Terminology in eLearning System Development," Irish Journal of Academic Practice: Vol. 3: Iss. 1, Article 9.
doi:10.21427/D7S42G
Available at: https://arrow.tudublin.ie/ijap/vol3/iss1/9/
