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Monday, 6 October 2014

New EPO Guidelines: what do they mean for added subject matter?

The perfect venue for the new
Guidelines launch party
New edition for new additions ...   On Wednesday of last week the European Patent Office (EPO) published an update to its Guidelines for Examination, the main resource used by examiners at the EPO for guidance in how to apply the provisions of the European Patent Convention (EPC) to the patent examination process.  You don't need to read it right now, because the new Guidelines don't come into force until 1 November -- but we don't like our readers to be caught unawares so we're telling you now.  While every word of it is of the utmost importance and fascination, of particular note is the insertion of a new paragraph in the section of the Guidelines setting out the “general rules” for determining the content of the application as originally filed. This is significant for patent applicants because, as the EPC states in its immortal prose, a European patent/application 
“may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed” (Art. 123(2) EPC).
A new paragraph H-IV 2.3 states: 
“When assessing the conformity of the amended claims to the requirements of Art. 123(2), the focus should be placed on what is really disclosed to the skilled person by the documents as filed as directed to a technical audience. In particular, the examiner should avoid disproportionally focusing on the structure of the claims as filed to the detriment of the subject-matter that the skilled person would directly and unambiguously derive from the application as a whole.”
Is it so difficult for Examiners
to change their minds? Some
higher life forms do this
all the time ...
 This paragraph is considered to be a response by the EPO to the common view among patent practitioners that the EPO’s stance on added subject matter can be too strict [readers may recall mention by Christopher Rennie-Smith, here, that some users of the system have noted the Boards of Appeals' "bewildering or incomprehensible attitude" towards added subject matter], with the result that applicants can be overly restricted in the amendments that they are allowed to make. The introduction of this paragraph will be interpreted by many as an attempt by the EPO to redress the balance [but how will others interpret it, Merpel wonders]. In particular, the paragraph relates to the situation in which the claims are amended by the introduction of subject matter that was only disclosed in the description of the application as filed. Examiners are instructed to consider the disclosure of the application as a whole, as read by a person skilled in the art, rather than focusing too strongly on the structure of the claims as filed.

The new paragraph could be seen as a “softening-up” of the EPO’s approach to the issue of added subject matter. This will be good news to patent applicants, as it would provide more freedom to amend claims using subject matter from the description. However, it remains to be seen whether this update to the Guidelines will bring about a noticeable change in the practice of EPO examiners, or whether it will be seen as merely clarifying the EPO’s current approach (A katpat goes to Kilburn & Strode's Jeremy Smith for supplying this useful information).


Anonymous said...

The Boards of Appeal will soon have occasion to remind people that they are not bound by this compilation of paper sheets.

Anonymous said...

And rightly so, as they are clearly not.

MN said...

In case you all were wondering where this somewhat strange language was coming from, T 2619/11 slights garbled up.

Not too helpful of the editor of the Guidelines to omit the case citation. Without the somewhat strange language it would have been impossible to google the case that is the source of the text added.


MaxDrei said...

Thanks NM. I recognised the language but had not identified the specific T Decision.

But isn't this typical? DG3 lays down some text. It goes into the White Book. And then, if it is particularly weighty, it finds its way into The Guidelines, whereupon DG1 suddenly flips from dismissing that text out of hand into treating it as "holy writ".

NM said...

2.4  In considering the reference in the passage on page 6 of the specification concerning the "entire length" feature to offer no basis for the "substantially the whole length" feature, the division can, nevertheless, be considered to reaffirm its view that "substantially its whole length" and "entire length" are alternatives.
Fair enough for the Board to decide that "entire length" has the same meaning as "whole length" but to decide that "substantially its whole length" are "alternatives", i.e. synonym, with "entire length"! 2.4 and 2.5


Anonymous said...

Ex. Meter Rule.

Length = 1 metre.
Entire length = 1 metre.
Whole length = 1 metre.
Substantially whole length = ?

Best part of a metre?
About 1 metre?
0.95m? (rounds up to 1 metre).
0.9m? (also rounds up to 1 metre)?
2 metre? Jst claims the same 1 metre twice. Where's the harm in that?

Real answer = could mean the same, could mean different, and therefore are not always the same, and therefore are not the same, and are therefore alternatives.

If, as must be the case, the definition is important for understanding the invention, working the invention, or differentiating the invention from the prior art, then the patent draftsperson should have been more thorough. With the poor quality of attorneys out there, patentees will jst have to suffer. It is not the job of the EPO or any other patent office/court to fix the mistakes of highly paid so-called professionals.

Anonymous said...

@MaxDrei - isn't that how it should be?

MaxDrei said...

As to "substantially" it was pointed out to me when I started, in the early 1970's, that "substantially" is implicit. Otherwise, merely to make sure that the meaning of the claim is established as a matter of substance, one would be obliged to write "substantially" in front of most every term in the claim, rendering the claim absurdly cumbersome. And that just isn't sensible or reasonable.

I think there is no difference between a claim that is "clear" and one that is "substantially clear". No claim can ever be 100% "clear". With or without the "substantially" decoration, the claim has to exhibit the same degree of clarity, namely "clear enough". Same with terms like "entire".

Of course, that is not to say that an ED ought to allow you to amend "the entire length" to "substantially the entire length". The amendment begs the question: why is the amendment so important to the Applicant? If (as you say) it doesn't change the original meaning, well then there's no need to make the amendment, now is there?

Anonymous said...

Anonymous of 8.51 not all patent specifications are drafted by patent attorneys. Sometimes a research organisation cannot afford that, and the most cost-effective strategy is simply to take a description of research, cobble some claims together and file it. Not every invention is worth high quality drafting.

Anonymous said...

"Not every invention is worth high quality drafting."

= Funny. The rejection of such patent applications is therefore wholly justifiable.

Anonymous said...

"Not every invention is worth high quality drafting."

An invention not worth high quality drafting is an invention not worth a patent application.

As my architect father told me when I was still a toddler: "If you set out to do something, do it well. Do you think my clients are going to appreciate my work if the house I build for them collapses?"

Like a half-arsed building, a half-arsed patent application is worse than worthless: it will cause only headaches to its owner, the patent office and the general public for no discernible benefit to anyone.

MaxDrei said...

I do not follow that last anonymous comment. Architecture is different.

I think cheap and cheerful, quick and dirty patent drafting, filing, WO publication then lapse is a perfectly good defensive patenting business model, especially with the AIA's 35 USC 102 and 3 that allows obviousness attacks as if the WO had been published on its earliest priority date.

If that last anonymous disagrees, please will he say why.

Anonymous said...

Except, if the PCT application is simply allowed to lapse, it is not in any way a patenting model, defensive or otherwise. it is simply an expensive junk publication model.

Such crap applications are identified and dismissed as such by me, on behalf of my company, and many others, on behalf of theirs, on a daily basis.

A cheaper publication model is something called "publication". Don't have to wait 18 months either.

I therefore agree with the "child of architect".

MaxDrei said...

Interesting, that engineers are reading these pages, and not just patent attorneys.

Anonymous, published WO documents are the bedrock and backbone of the Patent Office search for material on which to base refusal of the patent applications of your competitors. In the USA, these WO publications are effective as prior art 18 months earlier than their publication date. So you who file cheap and cheerful PCT applications keep your 18 months of lead time, before the world can read what you have in your R&D pipeline, while pushing back 18 months in time the blocking effect they are having on the patent applications of your competitors. It's a good way to keep your own advancing R&D path clear of the patents of others.

Still see this defensive patenting model as useless crap, do you?

Anonymous said...

I get it Max. I am a no-nothing engineer and not a know-it-all patent attorney.

As a so-called "no-nothing engineer", why is it that I am able to draft high-quality patent applications rather than spend my days justifying the drafting of crap?

Your clients may be advancing their own R&D path, but what with all that close prior art out there on their own developments, you must be very clever to convince the EPO and others that it is only citable against competitor applications.

If you want to trade personal insults, go back to PatentlyO.

Anonymous said...

Publish online or anywhere else cheap and obscure and file third party observations. Unless there is an absolute novelty knock-out from the WO publication, you get a lot more effect from the publication. A "crap" application is unlikely disclose much of prior art value.

Personally, I'd only rely on a PCT publication in such a way if it was being dropped though lack of interest. In which case, it would have been drafted in order to obtain good protection.

Anonymous said...

So-called know-something people should improve their drafting skills instead of wasting time blogging.

Anonymous said...

bedrock or backbone or however you want to label the inputs, the adage still applies:


Anonymous said...

"As to "substantially" it was pointed out to me when I started, in the early 1970's, that "substantially" is implicit. "

Says who? Statute or case law support please.

Architect's Son said...

"I think cheap and cheerful, quick and dirty patent drafting, filing, WO publication then lapse is a perfectly good defensive patenting business model, especially with the AIA's 35 USC 102 and 3 that allows obviousness attacks as if the WO had been published on its earliest priority date."

MaxDrei, as others point out, if the purpose is defensive publication, there are cheaper ways than through a PCT (whose official fees are pretty steep). Apart from that, I can see how some applicants may use "junk" PCT applications to try to keep competitors away for at least 30 months, but this is hardly the business model of the penniless research organisation which was mentioned upthread. Surely, a research organisation who intends to earn money from licensing granted patents would be better advised filing copper-bottomed patent applications rather than quick-and-dirty stuff that will sink at the first serious challenge.

As for the business model of filing junk applications not just as publications but to dissuade competitors while the application is still pending, it is morally questionable at the very least. Surely, the purpose of the patent system is to grant monopolies in exchange of complete disclosures of actual, useful inventions, not to temporarily discourage competition in exchange of incomplete disclosure of purported, useless non-inventions...

Finally, regarding the usefulness of such junk applications as prior art, I can assure you, as a former patent examiner, that in 99% of cases such junk applications merely increase the noise-to-signal ratio of prior art searches. After all, an insufficiently enabled disclosure will not just be a crap application, but also useless as prior art.

MaxDrei said...

Nice to get so much reaction. Thanks all. And of course, if you are going to pay those PCT official fees it is worth spending a proportionate amount on professional drafting. Of course those WO publications don't work as novelty attacks if their teachings are not enanbled, but how often does that happen then?

I remain unabashed. Using WO's to keep clear the way forward is a reasonable and effective business plan, the more so now that the AIA makes them all obviousness attacks 18 months ante-dated from the date the WO publishes. That's heavy stuff.

Son, what do you mean by "dissuade" competitors? What I'm on about is planting roadblocks to stop those competitors acquiring their own powerful patent Portfolio, that will be used to "dissuade" me from bringing my new products to market.

Somebody above asked for a case reference on "substantially" I cite Catnic and the Claim language "extend vertically" which was found to cover angles well off the vertical. Thus:

"My Lords, a patent specification is a unilateral statement by the patentee, in words of his own choosing, addressed to those likely to have a practical interest in the subject matter of his invention (i.e. "skilled in the art"), by which he informs them what he claims to be the essential features of the new product or process for which the letters patent grant him a monopoly. It is called "pith and marrow" of the claim. A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge. The question in each case is: whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention so that any variant would fall outside the monopoly claimed, even though it could have no material effect upon the way the invention worked."

Anonymous said...

So, when I claim a compound, e.g. R-X (R poviding the novelty and inventive step for argument's sake) and I claim X = carbon, substituted by something or other, can I insert 'substantially' in front of my carbon?

If it is anything that is substantially carbon, I could go for nitrogen or silicon, or any other heavier atom, which embrace everything about carbon.

Or, if I claim 'precisely at an angle of 89.999999 to 90.000001 degrees, do I get coverage for 80 to 100 degrees which would work equally well?

Catnic supports purposive construction, not the insertion of 'substantially' willy nilly.

MaxDrei said...

Not sure I can fulfil the demand for caselaw that supports "the insertion of "substantially" willy-nilly". In fact, even imagining that such a Decision exists is beyond me. Sorry.

Anonymous said...


You misspelled "unashamed."

Anonymous said...

RE: supports purposive construction, not the insertion...

agree. for example, purposive construction defined by other claim limitations

Architect's Son said...

"Of course those WO publications don't work as novelty attacks if their teachings are not enanbled, but how often does that happen then?"

In my experience, pretty damn often, as a matter of fact. Of course, for a case to go all the way to court or the the EPO Boards of Appeal for a piece of prior art to be then rejected as insufficiently enabled is (relatively) uncommon, but not being able to rely on a potentially novelty-destroying document as such because it's incompetently drafted and some important features are missing has happened quite often to me, both as an examiner and as a patent attorney.

"Son, what do you mean by "dissuade" competitors? What I'm on about is planting roadblocks to stop those competitors acquiring their own powerful patent Portfolio, that will be used to "dissuade" me from bringing my new products to market."

I have noted that, but you have seemingly moved the goalposts. I initially responded to an Anonymous who asserted that "not every invention is worth high-quality drafting" and put forward the example of a research organisation which could not afford it. In this respect, I had first to answer that a PCT application as a spoiling publication is of little use to such a non-practicing research organisation, which in any case won't be bringing itself the invention to market and whose researchers will usually be itching for publication in conferences and peer-reviewed journals, anyway...

We are still waiting for your explanation as to why a PCT application, AIA or not, makes for a better spoiling publication than just, well, publishing with proof of date of disclosure.

As for what I meant with "dissuading competitors", I referred to the only *real* use I can see for such a doomed junk application: sowing FUD among your competitors for a couple of years. I have little doubt that the main current use of junk applications is just that, and it is a big problem for the whole patent system, together with applicants unaware of the weakness of their own applications.

Anonymous said...

Well said Architect's Son.

I have noted that conversations across the blogosphere are full of the same inane FUD and half-thought through rhetoric that seems to espouse such as "good tactics" while apparently unable to grasp why these fall short repeatedly in any conversation on the merits.

MaxDrei said...

To the commentator who writes:

"We are still waiting for your explanation as to why a PCT application, AIA or not, makes for a better spoiling publication than just, well, publishing with proof of date of disclosure"

I say for the third time that the blocking effect of a patent filing kicks in 18 months earlier than its publication date. You block his applications 18 months earlier than he finds out what the blocking material is. A full 18 months of secret blocking, before the world finds out what you are up to, is extremely useful in technical fields like medical devices, where rivals watch like hawks the emerging WO publications of their competitors.

But, hey, don't worry about it. It's not your Job, is it?

Anonymous said...

In my experience of working with university tech transfer offices at least 80% of patent cases are abandoned at the end of the international phase due to lack of commercial interest. In this situation is it better to file 10 cases drafted for £4000 each or 20 cases drafted for £2000 each? Some would argue the latter, but I accept this is not a straightforward decision.

MaxDrei said...

Anonymous above writes:

"at least 80% of patent cases are abandoned at the end of the international phase due to lack of commercial interest"

Is this optimal? Is it OK that 4 out of 5 fail, that 5 paent programmes are financed, for every one that attracts commercial interest?

Or is it an indictment of Universtity Technology Transfer Offices, that they pay for 5 patent applications, just to get one sign of commercial interest?

Anonymous said...

Hi MaxDrei, the 80% figure I gave was for a university tech transfer that does very well and makes a lot of very good decisions. In my opinion I don't think it's possible to do much better because commercial interest is so difficult to predict. Surveys in the US show that the vast majority of university tech transfer offices do not even break even. That's a complex issue to resolve!

Anonymous said...

MaxDrei inadvertently makes an interesting comment.

What would be considered a "good" return from patent efforts?

One source that I have (D.L. Babcock, 1996 Managing Engineering Technology: An Introduction to Management for Engineers) puts the cumulative percent at 1.68% - with one successful product from 60 starting points.

1 in 5 sounds like a goldmine.

Anonymous said...

The 'return' or percentage of patents that turn out useful is not relevance to the issue of quality. However quality is commonly not ensured as a result of the low number of valuable patents.
Where is the drive to increase patent quality in a system where the majority of cases are dropped, or remain alive even though of no commercial interest? The mistakes are rarely picked up. If only one application in a thousand is found to be of low quality, does that mean the patent attorneys are doing a great job? Of course, not. They are simply never caught out.

Applications should be drafted in a manner suitable for their purpose. If, when an application is first drafted, the technology is believed to have potential commercial utility, then that application should be drafted in such a way as to provide good protection (within the bounds of the contribution), to survive diligent examination (would be nice for the EPO to do this again) and to be enforceable in the court against infringers, as well as standing up to a validity challenge.

The application should be drafted with the intent of it being that 1in a 1000 that is of commercial value. Unfortunately, a large proportion are drafted as if they were guaranteed to be one of the 999 others.

Anonymous said...

As a junior attorney I was once working for a cost-sensitive client and I handed a new draft to my boss for checking. His comment was 'Can you not make this look as if you've not spent that much time on it?'

Anonymous said...

The real world intrudes.

Sorry Anonymous @ 08:55, but your view is simply not correct. Only in an ideal world would such perfected efforts be the proper way forward.

The reality of this world is that there is a spectrum of effort that mirrors the price being willing to be paid (as well as the desired end product - AS DETERMINED BY THE CLIENT) that directly affects the level of drafting. It is beyond pollyanna to expect goldplating on a tin budget (and note that such "tin" effects come not only through the price being willing to be paid, but in the Golden Triangle sense of any Project Management effort - the other legs of the triangle, such as time, can be the "tin" driver).

We live in the real world folks, with real world trade-offs. If you are not having this conversation with your client - you are not serving your clients needs, but your own.

Anonymous said...

Re Anon at 14:44:00 BST on Monday 13 October 2014: (i.e. latest post of earlier today, although there may be intervening, as yet unpublished, comments:

Who is talking about perfection? Certainly not me.

Quality isn't simply about perfection. There is a huge continuum from trash to gold-plated. However, if everything was low quality, then what is the point? A patent application is rarely created simply to exist, with no other purpose, surely?

When it comes to what clients are willing to pay etc, I am an in-house attorney, and I pay (with the money of shareholders) large amounts of money for drafts that should be of high quality. Many hours are charged and frequently the product is poor quality. I spend a lot of time fixing drafts that should not require fixing.

Why don't I use better attorneys, I hear you ask? Not my call. I am a mere minion. We use several 'well-respected firms', and who am I are to argue?

So, one simple fact is, I act solely in the interest of my client, whereas our external counsel act solely in their own interests, albeit they are serving us to the best of their ability.

Another simple fact, is that the quality of attorneys in private practice is generally not great, and rarely worth £300-500 per hour.

Anonymous said...

Shhhhh!!!! Not allowed to mention quality in the company of private practice agent. Did you not read the Fellowship code?

Anonymous said...

You can talk about patent attorney quality, sure. No self-respecting attorney in private practice will mind the quality of their drafting (or prosecution or contentious proceedings) work being analysed.

But they will ask you to bear in mind that jobs are frequently done to a budget, whether explicit or implied, and that budget is frequently considerably lower than the actual amount of time they will need to spend completing a job. They'll also ask you to consider the quality of the instructions/information they've been given by their client, their client's willingness to engage with them in the drafting process and to do things as simple as answering questions about how the client' own invention works. Or they'll ask you to consider the sometimes ludicrous timescales imposed by certain clients.

Just as there are bad attorneys there are also bad clients. One or the other, or both (or neither) could be responsible for a bad patent application.

No-one is forcing anyone to use attorneys from private practice, but you wouldn't think that from some of the comments here!

Anonymous said...

Trademark application 3020140286157 filed in Germany was so poorly drafted that the EPO now has a senior vacancy.

Anonymous said...

"But they will ask you to bear in mind ...." Excuses. Excuses. Excuses.

I am referring to cases where none of your excuses are relevant, which, if you'd read the post properly (rather than treat it as a client's letter) you would have appreciated.

I find the attorneys are not very happy to discuss the quality of their drafting, either, because it is abundantly clear that they are not up to the job.

Re: Anon at 10:39; please explain.

Anonymous said...

More here:

Anonymous said...

Anonymous @ 10:12,

Exactly - the real world is a factor that must be accounted for in any application effort.

Truth be told, Clients decide - and may decide for "quick and dirty" - as is their right.

They may decide so for any number of reasons, including the rather pedestrian reason of pumping up the number of applications.

Anonymous said...

A lot of support and argument in favor of garbage, "because that is what the client wants to pay for". Anyone ever say to their client that for £10K they will draft some useless garbage application, but if they want a quality application "it's going to be expensive"?

Anonymous said...

Anonymous @ 19:46,

You quite miss the point that gold does not come at the price of tin.

Just because a client wants tin, does not mean they want garbage.

"Not gold" is simply NOT synonymous with garbage. Your post indicates a lack of appreciation of the spectrum of results. There is - in fact - NO "lot of support and argument in favor of garbage"

Please pay attention.

Anonymous said...

Anonymous of 18:24:00 - would you care to justify that? You seem to be interpreting "The claim or claims shall be clear and concise" as saying "You can write any old claims you want to, as long as you amend them to be clear and concise if and when you decide you want a patent". I can't see anything in the former wording to suggest that the applicant has a "right" (your emphasis) to do this.

Anonymous said...

Thank you 20:43 for providing me with the price of tin: £10K a pot.

For £10K, at £300 per hour, I would spend 33.33 hours on a draft. Roughly a week of work with no distractions. In a week, I would draft applications that are not only gold-plated, but solid gold with seams of platinum forming a glorious design. It would be delivered with orchids, bred especially for the application and delivered to the patent office on a virgin unicorn.

Next to my draft, I suggest your pot of tin would look and smell like garbage. It would also give the owner a nasty allergic rash they weren't expecting at an important milestone in their project's life.

Anonymous said...

Anonymous @ 08:52,

You want to give away solid gold at the price of tin....?

Your post shows several things:

- You do not get the analogy
- you are not an actual attorney
- you would not be in business long if you were an actual attorney

Anonymous said...

@Anonymous Tuesday 12:17

Why don't you give us some real examples of what you mean here, rather than just slinging mud at those of us in private practice?

Perhaps you could also give us the number of a granted patent that you drafted, so we can all check up on that as well?

Anonymous said...

Anon at 11:29: Isn't it odd that you believe a non-attorney could draft a high-quality patent application in a week, whereas you cannot?

Anon at 11:39: No and could but no. And you can forget about pulling the 'told you so anonymous nonsense'. My patent drafting has been assessed by high quality attorneys in internal review procedures designed to maximize quality across the organization. So, I have been very happy to risk having my work subject to possible negative criticism, only to find it appreciated for the high quality it is.

I shall not provide examples of poor drafting for my current firm or others because that would be unprofessional and I must act in the interests of my employer and also not act against the interests of previous employers. It would be very unprofessional to cite a patent and point out a serious flaw to the public. Or do you not think so?

To be honest, I can only imagine those who aren't very good at drafting being critical of my comments and questioning my own ability. Why would someone who was highly competent do so?

Anonymous said...

Anonymous @13:38

"It would be very unprofessional to cite a patent and point out a serious flaw to the public. Or do you not think so?"

Of course it would be unprofessional. But we can deal in generalities here. All you've said is that frequently the product of external drafting is "poor quality" but have in no sense explained why. Are these drafts which were manifestly unclear, not novel, didn't cover commercial products? Did the drafters ignore your instructions or information provided? All you've done so far is be rude and call that an argument.

And "internal review procedures"? When your drafting has passed the test of external due diligence and/or litigation, *then* you can brag.

"Why would someone who was highly competent do so?"

Because we don't like being tarred with your very broad brush...

Anonymous said...

I doubt someone in private practice would think any of their own attitudes are odd. Their favourite joke is

Knock Knock.
Who's there?
Bill who?
Bill for you for time spent on this joke!!! Ha Ha Ha.

Remember, you can't polish a turd, but you can roll it in glitter and charge a client for it. (unattributed, but contender for CIPA motto?)

Anonymous said...

This is Anonymous @ 11:29 replying to Anonymous @ 13:38.

You ask a question about oddity and only highlight your lack of reading comprehension. My post specifically noted your inability to grasp the earlier point, and somehow you have construed the post as to some inane admission that I cannot draft a high-quality patent application in a week.

If you use this type of logic in your patent drafting, I would say that your view of "high quality" is necessarily suspect.

Further, I do not see why you insist on making this a personal "I could do better" type of argument. The plain fact of the matter is that a whole spectrum of drafting quality is not only possible (due to the well understood Project Management triangle of trade-offs), but that that spectrum of options is a decision point for the client to make - and the client does routinely make such decisions. As a further solid example, the level of a pre-writing clearance search varies tremendously.

I do not understand the animus that you seem to be overcome with on this rather straight forward topic.

Anonymous said...

Yes, it has on several occasions passed external due diligence. Litigation? I don't believe so, yet, but as I stated earlier, applications should be drafted to provide the best chance in litigation, whereas several commentators believe they should not be: "Any old tin will do", which you seem to agree with.

As regards specifics, where to start?
Unclear claims. That is, from a very scope of protection viewpoint, as opposed to just from an EPO examiner viewoint.

Novelty. I would certainly be a novelty for the claims drafted to be novel in view of the art provided to the attorneys. Apparently, if the examiner doesn't find it or realise its significance, it doesn't matter.

Inventive step. Let's not worry about describing an actual invention shall we? Since when did that matter? We can always attempt to explain the invention in oral proceedings and hope the examiner doesn't spot there was never any mention of possible (real or imaginary) advantages in the application as filed.

Scope of protection. Last but not least. The big PP poo poo. Real life is, unfortunately for private practice attorneys (PPs), not the a CIPA or EQE exam question. The patents are supposed to cover real examples and provided protection against real competitors. A better understanding of the subject-matter would be helpful here, but hey, that biologist from Bath knows a thing or two about microchip design and jet propulsion and even dabbles in a spot of quantum theory. So much so that he/she can be both a pharmaceutical expert and an electronics expert at the same time. No Heisenberg uncertainty where PPs are concerned.

My broad brush is a magic brush as it only covers those covered by my criticisms.

Anonymous said...

Person A states low quality drafting is not acceptable and notes their experiences with patent attorneys used by his firm.

Persons B et. al. challenge Person A with the argument that Person A is not a very good drafter themselves, is not even a patent attorney, has probably never had their work scutinised by others, and so on.

Why do commentators believe challenging the competence of Person A defeats their argument? If they are correct, it seems to me that all that is proven is that Person A is as incompetent as those he criticizes. Person A's argument would still stand.

Why is it that so many attorneys have a problem with the importance of drafting high quality specifications?

Anonymous said...

It is irrelevant to me whether people believe I am incompetent or not as good as I make out.

To summarise the "real-world" position:

I am the client.
For £10,000 I expect gold.

We are in the process of identifying new firms to try out. It would be a help, therefore, for those attorneys in here who can only provide tin for £10,000 to identify themselves so that I can make sure they're not on the list. We can spend £20,000 if justified as such figures are peanuts to us. However, I don't like to waste peanuts.

Anon at 20:28 can personalise his arguments all he likes. As a client who has never heard of the project management triangle of trade-offs (seriously?) before, I'll just stick to good old-fashioned experience and knowledge.

Anonymous said...

It's like the Bermuda triangle, except you lose your IP, rather than ships.

Anonymous said...

Anonymous @ 09:30,

May I presume that you are the same as Anonymous @ 13:38?

If so, once again may I point out that what you posit as "real world" just is not so.

To wit: "I am the client. For £10,000 I expect gold." to which - appropriate to this discussion, gold is at £50,000, you will not get your expectation. Not only that. but anyone promising you that you will get what is basically something for nothing is more likely not understanding what they are doing, trying to rip you off, or both.

(may I suggest that you perform just a simple search and understand the triangle reference before you proceed in ignorance? - you can start here: )

Further - if your counsel is not having this discussion with you, then you need to be talking with different counsel.

Anonymous said...

Presume away.

Then, you can explain how it is "ignorance" to not be aware of a non-scientific theory generated by management consultants.

£50000 for a competent draft? Up to 200 hours drafting. I'd get rid of your quill and buy a pencil.

Anonymous said...

p.s. I am an attorney and I do not need to have discussions with counsel. I have been drafting applications in the chemical and pharmaceutical fields for over 20 years. I have never spent anything approaching 200 hours drafting even the most complex of applications. My applications have proceeded to grant in many territories around the world, protect highly valuable products, and have been the subject of large licensing deals.

If an attorney charged £50000 for a draft, I would refuse to pay.

Anonymous said...

My dear anonymous,

You continue to not bother fully reading my replies to you. That alone goes a long way to explaining the "ignorance" that I mention.

I am very happy that you have been successful in your own neck of the woods - I really am. I do hope you realize just how little that success has to do with the topic under discussion, that there exists a range of work product - and a range of costs for that work product - and that the term "gold-plating" likewise has a distinct meaning (that you likewise have not bothered to understand before you mounted your very tall steed and deigned to proclaim your view must be accepted by all of the world).

Please though, before you jump to the conclusions you hold so dear, please actually read what I have written.

Thank you.

Anonymous said...

This has become extremely tedious. Must be down to my ignorance I presume. I can see how the billable hours build up for your clients.

Anonymous said...

As a late arrival to this debate, can I just say that I'd be delighted to talk to the client happy to pay £20k for a new draft? Especially if your ideas are in the physics/mechanical field...

Actually, on reflection, I'd still be very happy indeed to talk to the clients who are apparently happy to pay £10k.

Anonymous said...

Anonymous @ 14:06,

How about the client only willing to pay £2k...? Or less?

What if that client still wants gold?

Or is this topic too "tinny," too tedious to read through and grasp the point of the discussion (for the other anonymous)?

Anonymous said...

As an in-house patent liaison assistant, I am tired of our agents wasting time and money on cases. For example, they are always writing to other agents or patent offices trying to speed up examination without my permission. Or, I have to spend time declining their offers to request acceleration for no good reason, but expecting me to provide the appropriate reasons. Nothing but a bunch of self-serving con artists.

MaxDrei said...

What a startling comment today, from an in-house patent liaison, complaining about outside counsel wasting their clients' time and money.

I'm outside counsel, constantly trying to help colleagues here in the firm to grasp what corporate clients want and what they expect from outside counsel. It is startling that some of my brothers and sisters in other private practice firms spend their time inveigling their clients into unwanted and unrequested expedited prosecution. Do they have nothing better to do?

Would the anonymous in house liaison care to write more about what is irksome about outside counsel? I hope so. I'm hungry to read more.

And by the way, in house, we are not all so careless of the needs of our clients. I am sorry you have had poor experience. Perhaps a switch to different outside counsel would help your employer's business?

Anonymous said...

This is an old PP trick. What is the view of the PP Kats on this behavior?

Anonymous said...

I am most sorry for offending you Mr Drei. In future I will remember that my company exists to serve the needs of the self-serving private practice fraternity of which you are a most humble member.
'in house'

MaxDrei said...

Crikey, in house, how could my words have been so grievously misunderstood. I apologise for failing to make myself clear enough. Of course your company does not exist to serve the patent attorney profession. It is the other way round. I hope we agree on that.

But I meant what I said. Take me at face value please. I'm genuinely surprised that some firms do what you say they do. I do want you to tell me all your other grumbles about the service you are getting from private practice firms, so that my firm can take note, and avoid them.

Anonymous said...

I am a little puzzled by in-house liaison's difficulty. I am in private practice and leaving aside the fact I don't have time to get involved in the sorts of activities mentioned, I have no problem telling the associates we deal with to stop sending progress checks to the USPTO or the like and that they should assume that unless we tell them we want to accelerate prosecution, they should assume we have no interest in accelerating prosecution. I also have no problem with making it clear that we will not pay any invoices for those sorts of services. I am not sure why in-house liaison's firm cannot do the same. In my experience, in-house departments are king. We work for a couple of in-house departments and the way it works is that they tell us how they want the work managed and we do as we're told.

Anonymous said...

I am new to this so I didn't realize that these tricks were played by lawyers. Hopefully after a few years I'll be better able to judge.
'in house'

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