The United States blog

Still clinging to first-to-invent

1. MaxDrei 03.13.07 / 5pm

   The identification of the opportunity to go for wider claims as a “right” is indeed interesting. There might be a right under current US patent law to widen claims, but there is no “right” outside USA. In today’s world of corporate applicants, business investment decisions have to be taken (and patent clearance opinions given) on the basis of what is A (or WO)published. CAFC is influenced by patent law experts outside USA. Judge Newman is (whether consciously or unwittingly) reciting “right” to foment reform, to get rid of it.
2. MaxDrei 03.15.07 / 5pm

   Bit deep for me Derrick. I was only thinking that an innovative company is inventor one day and the next day worried about infringing another’s patent. So, the law should balance fair protection for the inventor with reasonable legal certainty for the public, to reduce uncertainty for industry (so it flourishes) and protect inventors’ contributions (so innovation flourishes). No probs with continuations, just a problem with belatedly written claims that could not have been perceived by a reader of what was filed on the original filing date.
3. US Patent Agent Living Overseas 03.16.07 / 6am

   Max,
   As a US Patent agent who is used to the fact that any unclaimed subject-matter in the spec can always be claimed later in the USPTO, I personally hate the fact that in Europe (and many other juristictions), restrictions against new matter are stricter than in the USA. In the USA you can bascially ‘data mine’ an application as long as it is ‘alive.’ In Europe, there appears to be a requirement for unclaimed subject matter to be stressed as important in the spec (which risks me running into judges from the CAFC who want to import these comments into the claims in very unpredictable ways).
   My solution is NOT at all elegant, but seems to solve the problem — when I write PCTs where Europe is of some (if not great) importance, I have a habit of claiming EVERYTHING even features that do not seem important whatsoever. Then in national phase I cancel all of the claims - this also me to, in effect, simulate ‘late claiming’ by deciding at a much later date which claims to pay for and prosecute.
   I also am careful to use multiple dependents so that no European examiner can later say that the ‘combination is new matter.’
   The problem is that:
   a) the ‘claim everything’ exercise seems like a waste of everyone’s time, including my own. I have no shortage of clients and this isn’t the most intelellectually stimulating way to spend an afternoon;
   b) only the well-moneyed clients can afford this service. Thus, the strict new matter requirements of Europe seem to benefit the rich against the independent inventors;
   c) the public does not benefit from a better disclosure and has to trudge through >100 claims in claim legalese when really I only wanted to write 20-30 claims in the first place.

   I am too busy billing clients, but if I had time I could even write software that automatically generates zillions of (most likely) worthles claims from the spec to avoid the European new matter requirements. This software would not be considered patentable by the EPO
   So, it seems to me that the ‘no late claiming’ rules are a little silly.

   I’d LOVE to hear your response.

   SIDE QUESTION - how do omnibus claims play into this? Could they help me avoid this problem? I know that in all likelihood the omnibus claim would NOT be allowed in the EPO (and definitly would not be allowed in the USPTO) - but could the ‘omnibus claim’ serve as a ‘placeholder’ for me to later say that every feature in the spec was claimed at an earlier stage and is not ‘late-claimed new matter’(and thus save me time ) ???

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