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There is much talk about how software patents are deliberately written in an obfuscated manner, as a ploy that contravenes the purpose of the system.

It seems to me that one could argue the following point:

  • A deliberately murky, obfuscated, or unclear writing style hinders the ability of a practitioner to 'learn' from the 'teachings' in the patent.

Do the legal authorities consider this point to be an issue? Does it affect the patent's defensibility?

I'm looking for case law or journal articles or some other pre-existing, formal precedent (hopefully that will help this question comply with the Stack Exchange guidelines).

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Jimmy, Thanks for participating in Ask Patents. The question is unclear on whether you are asking whether a vague patent is: A) implicitly less valuable since it likely isn't applicable to most things due to not being specific enough, B) less valuable since it's more likely to be challenged and defeated, or C) less useful to the system from an overall societal perspective. I appreciate you are looking to find specific case law or journal articles references which contain a precedent rather than opinion. Can you clarify what you are looking for? –  Micah Siegel Aug 26 '13 at 22:00
    
@Micah Thanks, I edited it. Not asking about A or C. Closer to B -- but only in regards to the point raised in its entirety. I'm aiming at the practical/procedural side of things. –  jimmy_joyce Aug 26 '13 at 22:28

1 Answer 1

Two references and some opinion.

I do not think the issue is confined to software. Claim wording that is broad can make a patent strong, but so can claims that are specific and clear.

For a claim, whether hardware or software or mechanical, to be broad it generally must be expressed in an abstract way. A mechanical claim might say something is "an elongated member" rather than a rod or a post or a 2x4. It might say something is "operativly coupled" to something else rather than connected. In patent claims they mean different things.

Enough of that kind of wording strung together and it can get hard to picture what is being defined. Much of it comes from court cases that turned on a single word or phrase. Does "one" mean "only one" or does it mean "one or more"? A major case went one way and not the other over "heated to" vs "heated at" even though one produced a ridiculous result of the thing catching fire. In another case "a portion of X is covered" was interpreted to not include the case of all of X is covered.

New things like this come up every month and professionals who draft claims need to stay up on it and worry about what words they are writing today will be deemed to mean in ten years.

If you are specific, it is easy for someone to say, "my thing doesn't rotate, it pivots!"

Advice claim writers get is to have broad claims written in an abstract manner (not to be confused with trying to claim subject matter that is abstract in its essence). The broad claims are followed by narrower dependent claims that get more specific. Claim 1 says you have an elongated member and claim 2 says "the thing of claim 1 where the elongated member is a 2x4".

Clarity and narrowness is great if it hits what the infringer is doing on the head. So a combination of claim styles are desirable. There are those who recommend at least one claim that uses non-standard terminology that was not defined in the specification to "give the litigators something that can be argued either way".

So a patent that covers a lot of ground is valuable for broadness but it is more valuable if it also has fall-back claims that are progressively clearer and narrower in the direction of a commercially important embodiment. That is hard to predict at the time it is written.

There is an article about broad vs narrow at the WIPO site here.

Also there are "patent words" that we love to use like: arcuate, frangible, moiety, indicia, and frustrum. I think it was George Bernard Shaw who wrote "all professions are a conspiracy against the laity." And there is some of that.

It is not software but here is an article about the Federal Circuit deciding if a claim wording is indefinite. Indefinite claims are invalid - there is a limit to abstractness.

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Thanks for this very educational reply George. However, I'm not sure if it addresses my particular concern: here I am, a PHOSITA, searching the patent database, trying to learn techniques for cat-trampoline manufacturing. I found a relevant patent, and am excited to use the techniques it describes. I will, of course, contact the patent owner before embarking on any substantial commercial activity. But -- I can't understand the darn thing! Isn't a patent supposed to help me learn how to reproduce the inventor's work? –  jimmy_joyce Aug 26 '13 at 22:53
    
The specification part of a US patent is supposed to teach people of ordinary skill in the art to make and use the claimed invention without undue experimentation. They do not need to explain what is well-known but they also can't hide the ball and keep the secret sauce to themselves. And they need to describe the way to do it they think is best. Lack of "enablement" or lack of "written description" can get a patent invalidated. –  George White Aug 26 '13 at 23:00
    
Ok... so what if the patent was written using deliberately obscure terminology? As a PHOSITA in the cat trampoline industry, I could definitely understand it if it were written using industry-standard terms. However, it appears the author has created his own, substitute terminology, and this makes his patent incomprehensible to me. Does this scenario qualify as lack of enablement? –  jimmy_joyce Aug 26 '13 at 23:03
    
A well-worn saying is that "the patentee is allowed to be their own lexicographer." They can make up words but they need to let us know what they mean. Also, lack of enablement is primarily a defense. That means if he thinks you infringe and sues you, one aspect of your defense can be that it wasn't enabled in the first place. Not very comforting. –  George White Aug 26 '13 at 23:07
    
Aha. Googled that and found the key clause on uspto. Enjoyed reading about the case where the patentee attempted to redefine the word 'about'. Good stuff. Paging Yaacov Smirnoff... –  jimmy_joyce Aug 26 '13 at 23:13

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