Wednesday, November 17, 2021

Automated Claim Renumbering

 The Application Drafter tool in the Patent Bots Word add-in (see installation instructions) now has tools to automatically renumber your patent claims.

For most of my patent drafting career, I have used Word automated numbering for patent claims. As you all know, Word automated numbering is annoying in that it never works how you want it to.

People with more courage than I do also use Word references to get Word to properly update claim dependencies, but most people waste more time than they save in trying to do this.

We now recommend that you do all your claim numbering manually, and let Patent Bots automate it for you!

We have two types of automated claim numbering that we'll now describe. For both, we recommend that you turn on Word track changes first so you can exactly what changes we make.

Claim Renumbering

Our claim renumbering does two things:

  • Makes sure that all your claims are in numerical order.
  • Automatically updates your claim dependencies.

The most important thing to remember, is that your claim numbers must always be unique.

Suppose you have the following claims:

1. A method for foo.

2. The method of claim 1 wherein bar.

3. The method of claim 2 wherein baz.

and you want to insert a new claim between claims 1 and 2. 

To do this, you insert a new claim with a unique number:

1. A method for foo.

10. The method of claim 1 wherein spam.

2. The method of claim 1 wherein bar.

3. The method of claim 2 wherein baz.

After clicking the Renumber Claims button, your claims will look like this:

1. A method for foo.

2. The method of claim 1 wherein spam.

3. The method of claim 1 wherein bar.

4. The method of claim 3 wherein baz.

Note that the claims are now numbered correctly and new claim 4 now properly depends from claim 3 instead of claim 2.

The reason that we require all your claim numbers to be unique is that this ensures we can accurately update your claim dependencies. If two claims have the same number then we don't know which one to use.

Claim Set Merging

This is a little different. We don't require that your claims have unique numbers, but we do require that each claim set is already numbered correctly.

Suppose you have the following claims:

1. A method for foo.

2. The method of claim 1 wherein bar.

1. A method for baz.

2. The method of claim 1 wherein spam.

We have two claim sets where each claim set is numbered correctly. After clicking the Merge Claim Sets button, your claims will look like this:

1. A method for foo.

2. The method of claim 1 wherein bar.

3. A method for baz.

4. The method of claim 3 wherein spam.

 You now have one claim set with correct numbering.

There are some limitations to both renumbering tools:

  • You can't use any Word automated numbering.
  • Claim ranges and multiple dependent claims are not currently supported but we will support that in the future.

We hope you like this new addition!

Wednesday, October 13, 2021

Claim Diffs with OA Responses

Earlier this year, we launched our Claim Diff tool (one of the many great features of PatentPlex) to make it easy to see the differences between claims of any patent publication or issued patent.

We've now expanded our Claim Diff tool to allow you to see the differences between claims from all stages of prosecution! This includes the as-filed claims and the claims as amended at each office action response. Every document from the image file wrapper with a document code of CLM is included.

Here is how it works:

  1. Go to the PatentPlex page for any patent like this one.
  2. Click the View Diffs button to open the Claim Diff tool.
  3. The first two columns of the Claim Diff page allow you to select the claims to view. See below for an example.
  4. Select a claim in each of the first two columns to view the differences in the third column.
  5. You can also change the patent in either of the first two columns in case you want to compare claims between two different patents.

The Claim Diff tool is a great time saver for just about anyone working with patents. Here are a few examples:

  • Litigators working to invalidate a patent can see how claims changed between filing and grant.
  • Litigators can see how the claims changed with each office action response to formulate prosecution disclaimer arguments.
  • Prosecutors can review how claims have changed during prosecution to revise their strategy with the patent examiner.
  • Prosecutors can make better decisions when drafting claims for a child application by comparing the issued patent claims of other family members.

In my 15 years of practicing as a patent attorney, I've wasted so much time copying and pasting claims into Word and then using the Word redline feature to see the differences between claims. Thankfully I will never have to do that again!

The Claim Diff tool is only available for issued patents and public applications, but we would like to extend it in the future to include non-public applications. Also, the USPTO sometimes gives us weird or bad data so you might see some odd things for specific claim sets.

To use our Claim Diff tool, contact us to subscribe to our PatentPlex product.

Tuesday, September 14, 2021

Generation of Claim Summary Section

Patent Bots latest tool is for automatic generation of the claim summary section of your patent application. The claim summary section is the most tedious part of drafting a patent application...

Suppose you have a claim like this:

A method for perpetual motion comprising magic.

For the claim summary, you need to rewrite this claim like this:

In some aspects, the techniques described herein relate to a method for perpetual motion including magic.

Not hard for a single short claim, but mind numbing when you have several pages of claims.

The reason for creating a claim summary section is to ensure that your patent application has literal support for the claims. In my practice, I'm careful to make sure that the detailed description section (which does not include the claim summary section) describes the invention using the same words and phrases of the claims, but the claim summary section provides a good backup.

Our Word add-in allows you to generate a claim summary within Word. Here is a screenshot:

After you complete a draft of your patent application, you put the cursor in an empty paragraph. Then, click the Generate Claim Summary button, and we rewrite the claims as indicated above.

In particular, we make two changes:

  1. Prepend this text to each claim: "In some aspects, the techniques described herein relate to"
  2. Change "comprising" to "including" to favor an open-ended interpretation (see MPEP 2111.03).

In a poll we did last month, 80% of respondents stated that the above claim summary would work for them.

Hopefully it works for you too, but please let us know if you recommend any changes to how we generate the claim summary.

Wednesday, August 11, 2021

Generation of Brief Description of Figures

In drafting a patent application, one of the last things I write is the Brief Description of the Figures section. This is my process:

  1. Search for the first sentence to mention each figure (you can use our Figure navigation tools to make this part easy).
  2. Copy that sentence and paste it into the Brief Description of the Figures section
  3. Review and modify as needed.

This is a tedious task that requires very little brain power, and the Patent Bots Word add-in now does the first two steps for you!

Here is what it looks like:

We are smart about picking the best sentence for each figure. For example suppose you have a sentence like this in the beginning of your patent application:

  • Figs. 1-3 illustrate the invention.

and later you have sentences

  • Fig. 1 is a method ...
  • Fig. 2 is a system ...
  • Fig. 3 is a device ...

then we will figure out that these three sentences are better suited for the Brief Description of the Figures than the previous sentence and use those instead.

We hope you like this new feature, and we have more generation tools in the pipeline to automate other tedious parts of your work.

Tuesday, July 6, 2021

PatentPlex Claim Diff Tool

The inspiration for new Patent Bots features frequently comes from frustrations I encounter as a patent practitioner.  Recently, I was working on a child application, and I wanted to see the differences between the claims of the parent and the grandparent.  This is what I had to do:

  • Copy the claims of the grandparent into a Word doc
  • Copy the claims of the parent into a Word doc
  • Use the Word compare documents feature to see the differences

While this works, it is tedious and time consuming... To not have to do this any more, I created the PatentPlex Claim Diff Tool:

To see the differences between the claims of two patents, you just enter the patent numbers and select the claims you want to compare!  Our Claim Diff Tool is available for free for the next two weeks on our PatentPlex page.  Afterwards, you will need a PatentPlex subscription.

We also have a short video showing you how to use our Claim Diff Tool:

Friday, May 21, 2021

Errors in Issued Patents as a Measure of Patent Quality

“If you can’t measure it, you can’t manage it.”— Peter Drucker

Companies spend considerable sums of money to develop patent portfolios that protect their valuable innovations. Given the large stakes, it behooves companies to obtain high quality patents. I’ll start this article with an example of a patent mistake that resulted in a bad outcome for the patent owner.

iRobot lost a patent infringement claim against a competitor that perhaps could have been avoided. The issue was that important concepts of the claims were not described in the patent, and the meaning of the claims was not clear. The independent claims included the phrase “instructions configured to cause a processor” but the only use of “instructions” in the patent related to operational instructions for a user.

Because the patent did not sufficiently describe the “instructions” in the claims, iRobot did not obtain its desired claim construction, and the Federal Circuit found no infringement. It seems plausible that better claim drafting might have avoided these errors and achieved a better outcome for iRobot.

To avoid outcomes like the one above, a company could measure the quality of patents in its patent portfolio and take actions to improve quality.

Some measures of patent quality may relate to the overall patent portfolio. For example, the technology areas in which a company has patent protection. Other measures of patent quality relate to individual patents to increase chances of success in patent disputes, such as the one above. While both are important, I will focus on patent quality metrics for individual patents in this article.

While there are many aspects of patent quality for individual patents, they can generally be categorized into patent scope and satisfying legal requirements.

Patent Scope

A patent has value when it helps a company meet its business objectives. A patent that broadly covers important features of a product may prevent others from implementing that feature. Such patents may provide the owner with a competitive advantage that allows it to sell more products or charge higher prices for those products.

While the scope of a patent is clearly important, it is not easily measured for individual patents. Indicators such as the number of words in a claim or backwards citations are coarse measures that provide unreliable information.

In my view, there are no useful, objective measures relating to the scope of a patent. While artificial intelligence (AI) is evolving rapidly, the best way to determine the value of a patent’s scope is to ask a patent attorney to review it, and different patent attorneys may come to different conclusions.

Legal Requirements

Statutes and regulations set forth numerous legal requirements for patents. In some situations, violating these legal requirements may cause the patent to be invalid, unenforceable, or less valuable (e.g., narrower scope). Further, violations of legal requirements provide opportunities for defendants in court proceedings and can greatly increase legal costs.

Some legal criteria are not amenable to being measured. For example, at least with current technology, it is not possible to compute a reliable measure of whether a patent specification provides written description support for and enablement of the claims.

Some legal criteria, however, are objective and easy to measure, such as whether the claims are properly numbered. Patent Bots recently published Patent Quality Scores using several measurable legal criteria to determine a quality measure for individual patents, law firms, and patent owners.

The Patent Quality Scores are based on the following:

  • Numbering errors (non-sequential or repeated claim numbers)
  • Dependency errors (a method claim that depends from a system claim)
  • Antecedent basis errors (no instance of “a widget” prior to “the widget”)
  • Word support errors (claim words that do not appear in the detailed description)

I am using the term “legal errors” somewhat loosely here. The presence of any of the above does not necessarily render a claim invalid, but it does make it more likely that a claim will be invalid or not infringed (as illustrated by the iRobot example).

To rank law firms and companies according to the Patent Quality Scores, we downloaded an entire year of 306,738 issued patents and proofread them with an automated patent proofreading tool. By counting the number of errors in each patent and cross referencing them against the associated law firm and company, the tool computed an average quality score and ranking for law firms and companies.

Although the Patent Quality Scores measure just some aspects of patent quality, there is no doubt that eliminating the legal errors tracked by tools such as this will improve patent quality. Further, law firms that implement processes to have higher Patent Quality Scores are likely doing well with other aspects of patent quality that are not tracked by the Patent Quality Scores.

These scores may not be an accurate reflection for law firms that file a large number of patent applications drafted by others (e.g., from non-U.S. law firms or companies) and are not able to control for quality. For these law firms, the Patent Quality Scores reflect the patents they file as a whole, but these law firms may do higher quality work for the subset of patents actually drafted by them.

Reduce Error: Measure

Measuring patent quality is the first step to improving quality. A combination of the right processes and legal technology can help law firms and companies improve patent quality. An automated patent proofreading tool should be used at all stages of preparation and prosecution (before filing, with each office action response, at allowance, and after issuance). Patent attorneys should carefully review proofreading reports to ensure that identified errors are fixed. Review by a second patent attorney will also improve all aspects of patent quality.

A very small percentage of patents are ever litigated or part of a legal dispute. In those situations, however, a legal error in a patent can cause the patent owner to lose important rights to their innovations. To maximize the value of their patent portfolio, patent owners can measure the legal errors in their issued patents and take action to reduce those errors.

Tuesday, May 4, 2021

Top 50 Law Firms for Patent Quality 2021

At Patent Bots, we used our advanced machine learning software to proofread an entire year of issued patents and then ranked 802 law firms by the smallest average number of errors in the issued patents.

Congratulations to these firms for doing amazing work!  

To improve your firm's patent quality scores, use Patent Bots automated proofreading to remove errors in your work. 

Try Proofreading

See our PatentVerse page to see how your firm does in comparison. Other than the top 50 firms, you can only see your own firm's ranking (we don't want to publicly identify firms doing lower quality work). Note that these rankings are based only on average errors in issued patents and don't address other important aspects of patent quality.

This is the final posting of our second annual release of patent quality rankings for law firms and companies. For purpose of computing quality scores, we used only numbering errors, antecedent basis errors, and word support errors (words that don't appear in the detailed description).

We rank the top 50 firms overall and also the top 10 in each USPTO tech center:

Top 50 Overall

RankLaw FirmNo. of Issued PatentsQuality Score
1Hartman & Citrin LLC10499.6
2Holland & Hart LLP/Qualcomm8099.1
3Strategic Patents, P.C.6898.1
4Alleman Hall Creasman & Tuttle LLP60397.7
5Lindauer Law, PLLC8696.4
6Harrity & Harrity, LLP57096.2
7Robinson Intellectual Property Law Office17896.1
8Guntin & Gust, PLC59095.9
9Konrad Raynes Davda & Victor LLP21195.8
10Shimokaji IP6095.3
11GTC Law Group PC & Affiliates9694.5
12Pramudji Law Group PLLC6393.8
13Pierce Atwood LLP14393.2
14Posz Law Group, PLC51393.2
15McGarry Bair PC31293.0
16The Small Patent Law Group LLC33892.4
17Gibb & Riley, LLC5792.3
18IP Spring5692.0
19Athorus, PLLC15891.6
20Rowand LLP6691.3
21Chip Law Group89191.0
22Darrow Mustafa PC16590.7
23McDermott Will & Emery LLP151590.6
24Farjami & Farjami LLP12290.4
25Holland & Hart LLP79090.4
26Kimberly-Clark Worldwide, Inc.5990.4
27MLO, a professional corp.6489.7
28Hanley, Flight & Zimmerman, LLC81289.5
29Mahamedi IP Law LLP7789.3
30Alliance IP, LLC13989.3
31Patent Capital Group29389.2
32Bejin Bieneman PLC36889.0
33Leveque IP Law, P.C.5889.0
34Keller Jolley Preece24088.7
35Keating & Bennett, LLP92088.6
36Campbell Stephenson LLP9088.4
38Newport IP, LLC21088.3
39IP Business Solutions, LLC8388.0
40Behmke Innovation Group LLC22987.4
41Yee & Associates, P.C.33587.3
42Parker Justiss, P.C.5987.1
43Walters & Wasylyna LLC7187.1
44Dascenzo Intellectual Property Law, P.C.6786.9
45Carrier Blackman & Associates, P.C.17886.9
46Studebaker & Brackett PC141786.8
47Compass IP Law PC21486.3
48WPAT, P.C., Intellectual Property Attorneys26786.3
49Edwards Neils LLC5985.3
50ScienBiziP, P.C.118385.0

Top 10 in Tech Center 1600

RankLaw FirmNo. of Issued PatentsQuality Score
1Brown Rudnick LLP5299.1
2W&C IP10397.6
3Hamre, Schumann, Mueller & Larson, P.C.5097.5
4Perkins Coie LLP8994.4
5K&L Gates LLP12494
6Kilpatrick Townsend & Stockton LLP33993.6
7Quarles & Brady LLP13793.3
8Oblon, McClelland, Maier & Neustadt, L.L.P.25893
9Maschoff Brennan7189.6
10Scully, Scott, Murphy & Presser, P.C.6689.2

Top 10 in Tech Center 1700

RankLaw FirmNo. of Issued PatentsQuality Score
1IPUSA, PLLC5697.9
2McDermott Will & Emery LLP21097.3
3Yee & Associates, P.C.6496.9
4Global IP Counselors, LLP6696.4
5Baker Botts L.L.P.11496.3
6ScienBiziP, P.C.9896.1
7Studebaker & Brackett PC13795.5
8Burr & Brown, PLLC11695.2
9Kinney & Lange, P.A.5394.2
10Amin, Turocy & Watson, LLP7093.6

Top 10 in Tech Center 2100

RankLaw FirmNo. of Issued PatentsQuality Score
1Harrity & Harrity, LLP75100
2Muirhead and Saturnelli, LLC5297.8
3Holland & Hart LLP9197.8
4Konrad Raynes Davda & Victor LLP16397.3
5Alleman Hall Creasman & Tuttle LLP6797
6Hanley, Flight & Zimmerman, LLC9796.1
7Nicholson De Vos Webster & Elliott LLP24395.9
8Trop, Pruner & Hu, P.C.9295.8
9Zilka-Kotab, P.C.13093.7
10Heslin Rothenberg Farley & Mesiti P.C.21092.4

Top 10 in Tech Center 2400

RankLaw FirmNo. of Issued PatentsQuality Score
1Harrity & Harrity, LLP17599.5
2Holland & Hart LLP/Qualcomm5398.7
3Hanley, Flight & Zimmerman, LLC21097.8
4Holland & Hart LLP31497
5Edell, Shapiro & Finnan, LLC14796.3
6Guntin & Gust, PLC27094.7
7IP Legal Services, LLC5894.7
8Patent Capital Group6394.5
9McDermott Will & Emery LLP8694.2
10Osha Bergman Watanabe & Burton LLP7393.8

Top 10 in Tech Center 2600

RankLaw FirmNo. of Issued PatentsQuality Score
1Guntin & Gust, PLC168100
2Pierce Atwood LLP8799.8
3Harrity & Harrity, LLP6799.6
4Alleman Hall Creasman & Tuttle LLP15399.5
5Kile Park Reed & Houtteman PLLC5698.1
6Holland & Hart LLP10096.8
7Eversheds Sutherland (US) LLP7396.6
9Keller Jolley Preece7795.8
10McDermott Will & Emery LLP20695.5

Top 10 in Tech Center 2800

RankLaw FirmNo. of Issued PatentsQuality Score
1Guntin & Gust, PLC6399.5
2Holland & Hart LLP18799.5
3The Marbury Law Group, PLLC16198.7
4Chip Law Group21898.2
5Duft & Bornsen, PC5298.2
6Vierra Magen Marcus LLP12697.6
7Alleman Hall Creasman & Tuttle LLP8596.7
8Robinson Intellectual Property Law Office13596.6
9Thompson Hine LLP12396.5
10Pramudji Law Group PLLC5595.8

Top 10 in Tech Center 3600

RankLaw FirmNo. of Issued PatentsQuality Score
1Harrity & Harrity, LLP8399.5
2Bejin Bieneman PLC24999.4
3Alleman Hall Creasman & Tuttle LLP8498.8
4ScienBiziP, P.C.5498.8
5Keating & Bennett, LLP7997.7
6Darrow Mustafa PC8197.7
7Mori & Ward, LLP8696.3
8Paratus Law Group, PLLC5195.6
9McGuireWoods LLP6994.7
10Athorus, PLLC6993.9

Top 10 in Tech Center 3700

RankLaw FirmNo. of Issued PatentsQuality Score
1Posz Law Group, PLC17699.4
2McCoy Russell LLP35699
3Mayer & Williams PC8098.5
4Quinn IP Law9798
5Keating & Bennett, LLP5597.5
6McDermott Will & Emery LLP9697.2
7McGarry Bair PC12997.2
8KED & Associates LLP15797
9Snell & Wilmer L.L.P.19496.1
10Dority & Manning, P.A.57296.1