Another MVNO Takes Aim At The Free-Cell-Service-With-Ads Model

Why You Don't Want Lawyers With Senses Of Humor Writing Your Patent Applications

from the what-can-you-do? dept

Thu, Nov 2nd 2006 4:19am — Mike Masnick

Davis Freeberg writes in to point us to Eugene Volokh pointing to a somewhat embarrassing claim in a patent application that just goes to show that the applicant never bothered reading what his lawyers came up with:

"9. The method of providing user interface displays in an image forming apparatus which is really a bogus claim included amongst real claims, and which should be removed before filing; wherein the claim is included to determine if the inventor actually read the claims and the inventor should instruct the attorneys to remove the claim."

Oops. Of course, this highlights one other problem with the patent system today. It's not the inventors who write most patents. It's often the lawyers who are wording the patent very carefully to make sure that it's as broad as possible. That means, at times, the patent wording isn't really about what the inventor actually came up with.

Thank you for reading this Techdirt post. With so many things competing for everyone’s attention these days, we really appreciate you giving us your time. We work hard every day to put quality content out there for our community.

Techdirt is one of the few remaining truly independent media outlets. We do not have a giant corporation behind us, and we rely heavily on our community to support us, in an age when advertisers are increasingly uninterested in sponsoring small, independent sites — especially a site like ours that is unwilling to pull punches in its reporting and analysis.

While other websites have resorted to paywalls, registration requirements, and increasingly annoying/intrusive advertising, we have always kept Techdirt open and available to anyone. But in order to continue doing so, we need your support. We offer a variety of ways for our readers to support us, from direct donations to special subscriptions and cool merchandise — and every little bit helps. Thank you.

–The Techdirt Team

33 Comments

If you liked this post, you may also be interested in...

Reader Comments

Subscribe: RSS

View by: Time | Thread

Anonymous Coward, 2 Nov 2006 @ 5:34am

wow thats funny
[ link to this | view in thread ]
derrick, 2 Nov 2006 @ 5:39am

Sonuvabitch, they stole my patent!!
[ link to this | view in thread ]
Anonymous Coward, 2 Nov 2006 @ 5:54am

Hi-frickin-larious
[ link to this | view in thread ]
Stephen, 2 Nov 2006 @ 5:56am

Guess the attorney didn't reread it either.
[ link to this | view in thread ]
Matthew, 2 Nov 2006 @ 6:09am

Yeah, but
On top of the silly entry 9, isn't this just a patent for an on-screen display?
[ link to this | view in thread ]
Greg, 2 Nov 2006 @ 6:16am

hahahahaha that's awesome

I want that lawyer to represent me in any future cases I'm involved in.
[ link to this | view in thread ]
zap brannigan, 2 Nov 2006 @ 6:39am

patent
The law requires the inventor to read the claims. Since it looks like he didn't read them, this could be a problem for the validity of any patent that results from this application. The lawyer might have a good sense of humor, but he may have shot himself in the foot.
[ link to this | view in thread ]
Chris, 2 Nov 2006 @ 6:59am

sweet
[ link to this | view in thread ]
Dave Vick, 2 Nov 2006 @ 7:00am

Re: patent
On the other hand maybe the inventor did read it but had no idea what it meant, so he figured it must be right, since the lawyer wrote it. That doesn't excuse him from not asking the lawyer about anything he didn't understand but I know that I often find legalese quite confusing.
[ link to this | view in thread ]
Mikey, 2 Nov 2006 @ 7:05am

Patent Attorney
I wonder how many others of the millions of patents that have been filed over the years are just as bogus!
[ link to this | view in thread ]
Kurt, 2 Nov 2006 @ 7:45am

I see things like this in patent applications my lawyers draft and in corporate contracts all the time. Too often people describe their idea (for patents) or come to a verbal agreement (any licensing contract) but do not actually read what is going down in writing.

I dislike legalese as much as anyone, but it exists and we must deal with it.

This is another good example of why you cannot simply leave it to the lawyers but actually need to read any contract that you sign. The fine print does matter...
[ link to this | view in thread ]
jsnbase, 2 Nov 2006 @ 8:26am

Re: Re: patent
The person you've described would be so gut-wrenchingly stupid that any patents they held would need to be immediately revoked, along with their lungs.

the claim is included to determine if the inventor actually read the claims and the inventor should instruct the attorneys to remove the claim

Yep, that's some high-end legalese right there.
[ link to this | view in thread ]
Wolfger, 2 Nov 2006 @ 8:33am

Dave Vick
what is "legalese" or "confusing" about the phrase "the claim is included to determine if the inventor actually read the claims and the inventor should instruct the attorneys to remove the claim"? That's pretty straightforward English that any high school grad should have no problem understanding. If you're smart enough to invent something, you darn well ought to be smart enough to read the language you are filing for a patent in.

I think items like this should be included by all attornies, and filed patents in which these claims have not been removed should be summarily denied with no explanation.
[ link to this | view in thread ]
A chicken passeth by, 2 Nov 2006 @ 8:34am

At least the lawyers themselves are aware of the BS going around. They wouldn't be doing this out of sheer frustration if people patented *SENSIBLE* things instead, not things like The Wheel*. _>
[ link to this | view in thread ]
Never trust a lawyer, 2 Nov 2006 @ 8:49am

Great the lawyer spent time (time=$$$) writing a bogus claim, to have the customer instruct him to remove it...costing more time (time=$$$)

Lawyer are paid by the minute you see.
[ link to this | view in thread ]
DittoBox, 2 Nov 2006 @ 8:58am

Re:
Or the attorney is making a point...
[ link to this | view in thread ]
Sam, 2 Nov 2006 @ 9:14am

Or the attorney has a conflict of interest, a bigger dog to answer to, someone that wants this patent rejected and this is the easy way to accomplish it... through an obvious error.
[ link to this | view in thread ]
J3ff, 2 Nov 2006 @ 9:19am

by the minute
How many minutes do you think it took a lawyer to write that? 3 maybe? 5 tops.. It didn't cost that mauch IF he actually charged him/her. BTW, As far as I know, only defense lawyers charge by the minute, not patent lawyers.
[ link to this | view in thread ]
Kurt, 2 Nov 2006 @ 9:28am

Re:
"Or the attorney has a conflict of interest, a bigger dog to answer to, someone that wants this patent rejected and this is the easy way to accomplish it... through an obvious error."

Note: This is a patent application only, not a patent.

Claims can be edited, rewritten, added and removed after the application is filed. It is the description and body of the patent application that cannot be changed. This will not result in the application being thrown out, but it will likely result in a closer look by the patent office through the rest of the process.
[ link to this | view in thread ]
nunya_bidness, 2 Nov 2006 @ 10:13am

I read the patent application form, and my head exploded.
[ link to this | view in thread ]
Jim, 2 Nov 2006 @ 10:39am

Patents
The Patent Office "used" to break even but a few years ago, NOW Uncle Sam gets a cut...the incentive is to approve anything...and everything...it is sort of a joke. The guy that wins is the guy that invents something and makes it to the bank before the check bounces....skip the patent they "usually" are not worth the paper they are printed on. That is my 2 cents...besides if there IS money floating around your idea you better believe some laywer somewhere has a theory why the company he represents has already been working on the very same idea....

The Patent Office just stamps and collects its cut....
[ link to this | view in thread ]
Jeremy, 2 Nov 2006 @ 11:05am

Malpractice
This is clearly malpractice. The lawyer and his firm had better hope that actual damages do not result from problems that may arise in the adjudication of this patent.
[ link to this | view in thread ]
Kathi Day, 2 Nov 2006 @ 11:23am

Re: Dave Vick
Why should an inventor be literate? Sure, we need it to survive in our current society, and he/she may not survive. But what makes you think even half of the inventors in the world have ever been literate, or even seen writing?
[ link to this | view in thread ]
Michael Grimm, 2 Nov 2006 @ 11:30am

Good Lawyers
It's often the lawyers who are wording the patent very carefully to make sure that it's as broad as possible. That means, at times, the patent wording isn't really about what the inventor actually came up with.

I oversee part of the patent process at a software company and I have to say that any patent lawyer worth his salt knows there is a balancing act between protecting the invention (by writing claims broadly) and giving it the best chance of success (by making sure those claims are innovative.) The last sentence of this story is really very misleading.
[ link to this | view in thread ]
Matt, 2 Nov 2006 @ 3:38pm

Reminds me of the old Van Halen story...

Back when Diamond Dave was still with the band, Van Halen was notorious for, among other things, actually including a provision in their performance contract that demanded a big bowl of M&Ms, minus any brown candies, in their backstage area. The clause further went on to state that the presence of one brown M&M gave Van Halen the right to refuse to perform with the promoter forfeiting all promised amounts to the band.

It sounded like another case of rock and roll excess, but David Lee Roth said later that there was actually a method to the madness. The staging for the band's performance was rather extensive and technical, and a lot of the venues would just take one look at the phone book-like tome that held the technical details and decided to just wing it. More than once, this had caused problems that would have been non-issues had the specs been read correctly.

The band reasoned that if they found a bowl of M&Ms with the browns, or (even worse) no bowl at all, then there was probably going to be a greater problem later on because the promoter/venue didn't RTFM.

Sounds like more or less the same thing here.
[ link to this | view in thread ]
Douglas Sorocco, 2 Nov 2006 @ 5:47pm

Inventor is in trouble as well.
To the inventor who asked why he should actually read the application.

Answer: because you sign an oath under penalty of perjury that you have read and understood the application - including the claims.

So the reason you might want to spend the time to read it and not perjure yourself.

See article at PHOSITA
[ link to this | view in thread ]
Mike Brown, 3 Nov 2006 @ 7:36am

In fairness to the inventor...
> Answer: because you sign an oath under penalty
> of perjury that you have read and understood the
> application - including the claims.

That's certainly true, but I think this case is a bigger problem for the law firm who filed it, who obviously didn't proofread the application before they filed. The "read and understood" is something of a legal fiction when you're dealing with foreign inventors - in this application, the inventor is Japanese and the original provisional applciation on which this was based was filed in Japanese.

It's quite possible that he can't read English, any more than I can read the Japanese claims our agents file for my clients. If we're filing in a Western country, I can usually puzzle out the claims at least to some extent. When you're dealing with countries like Japan or China, where they don't even use the same alphabet as we do, you have to depend on the agent in the country to file what you thought they filed. I'm sure the same is true in reverse.
[ link to this | view in thread ]
Douglas Sorocco, 3 Nov 2006 @ 8:19am

No fairness due inventor
While I certainly agree that the lawyer and law firm involved should be blasted to the moon and back on the ethical charges, the fact remains that the inventor signed a statement that was factually false - under penalty of perjury.

While you say it is a "legal fiction" - the fact remains that the inventor has an obligation and duty to read the application, including the claims, and ascertain that the application represents what he believes to be the invention.

Reading claim 9, as someone else stated herein, there isn't any technical wording - it is rudimentary English. Whether it was the law firm's fault, the fault of the inventor's English, etc. The fact remains that the inventor signed a false statement under penalty of perjury.

Although I think we can all agree that the application at issue is pretty much a dead duck - the inclusion of claim 9 and the inventor's false statements more than likely render any patent which would issue from the application inherently invalid.

Douglas
www.okpatents.com/phosita
[ link to this | view in thread ]
Ritchard, 3 Nov 2006 @ 6:40pm

Re: Patent Attorney
Speaking as a Patent Agent and searcher I have seen much more ignorant claims in many disclosures. I work for many large tech companies but the most hilarious appear to come from the MAJOR computer companies. Take a guess. The name of the game is quantity. not quality! I would love to provide some samples, but its obvious I would lose my contracts. Its really getting bad in the corporate world for research and development. Enough said
[ link to this | view in thread ]
MPL, 14 Nov 2006 @ 5:44pm

Re: by the minute
We're paid by the minute, but those of us with a conscience (there really are some) would certainly deduct the time it took to insert something like that before raising an invoice.
[ link to this | view in thread ]
MPL, 14 Nov 2006 @ 5:47pm

Re: Re: by the minute
... but of course, those of us with a conscience would also have taken the time (without charging) to delete that claim before filing the application.
[ link to this | view in thread ]
sOJU pUNNOOSE, 12 May 2008 @ 2:52am

Technical document writing
I have worked as a technical document writer for US patent applications on Electronics, IT systems and Nano technology inventions. My experience in dealing with varying technologies helped me in addressing the technical document writing with minimum period.

I understand that you are dealing in this business and we could have a fruitful association. I can sign an NDA and do the technical documentation works.
I am an electronics engineer with 24 years experience and can work from India .

Hope to hear from you

Thanks and Regards
Soju Joseph Punnoose
Ph 0091 93878 28405
[ link to this | view in thread ]
Bob Gibson, 24 Nov 2008 @ 10:56am

Lawyer Sense of Humor
Hiring a patent attorney does not relieve the inventor of his responsibility to verify the correctness of his application. If the inventor does not feel qualified to double check the application he/she should seek some one who is.

This kind of kind of prank can go VERY wrong and create serious unintended consequences.

Get your giggles another way!
[ link to this | view in thread ]