{"id":69205,"date":"2016-05-17T09:15:51","date_gmt":"2016-05-17T13:15:51","guid":{"rendered":"https:\/\/ipwatchdog.com\/?p=69205"},"modified":"2016-05-18T22:10:12","modified_gmt":"2016-05-19T02:10:12","slug":"pursuit-extremely-short-patent-claims","status":"publish","type":"post","link":"https:\/\/ipwatchdog.com\/2016\/05\/17\/pursuit-extremely-short-patent-claims\/id=69205\/","title":{"rendered":"Pursuit of Extremely Short Patent Claims"},"content":{"rendered":"

Any views or opinions expressed by me in this article are solely my own and do not necessarily represent those of Oracle Corporation, its subsidiaries or affiliates.<\/em><\/span><\/p>\n

_______________<\/p>\n

\"silhouette-businessman-laptop-1\"<\/a>Dear Patent Attorney,<\/p>\n

Please stop filing extremely<\/em> short, overly<\/em> broad patent claims. This may seem like a simple request, one for which it is easy to say: \u201cHe\u2019s not talking about me\u2014my claims are reasonably short and broad, but not extremely<\/em> short and overly<\/em> broad.\u201d If you are a patent attorney who prosecutes applications in the software-related arts, it\u2019s safe to assume I am<\/em> talking about you<\/em>.<\/p>\n

Over the past couple of years in my roles as Senior Patent Counsel at Oracle and as Adjunct Professor of Software Patents at Chicago-Kent College of Law, IIT[1], I have often found myself discussing extremely short and\/or overly broad patent claims with patent attorneys and patent agents who draft patent applications. Whenever I suggested the claims were extremely short and\/or overly broad, I received responses that were, to my surprise, mostly defensive of the strategy: \u201cthis claim would be a really valuable claim if we got it,\u201d and \u201cwe might get it\u2014I\u2019m not aware of any prior art on point.\u201d My initial response was \u201cyou\u2019re wrong, fix it\u201d with reference to several examples of prior art off the top of my head. That said, at that time, the discussion had become one of competing dogmas (checked by my knowledge of the prior art) rather than one of science.<\/p>\n

I am not the first person to make the observation that extremely<\/em> short independent claims can serve as one good indication . For example, the U.S. Patent Office (USPTO) has recognized that overly broad patents are an issue and has taken steps to address it. The USPTO created a Sensitive Application Warning System (\u201cSAWS\u201d) to provide additional review for improving patent quality. As described on the USPTO web site<\/a> and in response to a FOIA request<\/a>, SAWS was designed to provide additional pre-issuance review of, for example, \u201capplications with claims of broad or domineering scope\u201d and \u201capplications with claims of pioneering scope.\u201d[2] The SAWS program received some criticism for being kept secret, and because there were no apparent rules to guide its potentially broad but practically narrow application.[3] The program was retired in 2015.[4]<\/p>\n

The USPTO examiners and patent practitioners have also loosely and less formally used a \u201cOne-Hand Rule<\/a>\u201d to gauge extremely<\/em> short and overly<\/em> broad independent claims.[5] The one-hand rule is used by some to determine that a claim is unlikely to contain allowable subject matter if it is not longer than the reader\u2019s hand. As will be explained in more detail below, it turns out that the One-Hand Rule (or a more precise variation of it) is a good way to identify low quality patent applications (i.e., applications that are not expected to efficiently proceed towards allowance).<\/p>\n

The clear need to improve patent quality has been well documented in both mainstream media and technical and legal sources.[6] The discussion for improving patent quality needs to proceed scientifically, driven by an empirical analysis of data, to avoid the pitfalls of competing dogmas. I recently conducted a study to measure the effectiveness of various prosecution strategies. The study covered over a hundred thousand patent assets pursued by software companies, and for this sample, I found that filing extremely<\/em> short, overly<\/em> broad patent claims is a bad strategy in just about every way imaginable.<\/p>\n

My study addressed the following questions:<\/p>\n