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June 2, 2023
A SHORT QUIZ ON WORDS IN U.S. TRADEMARK PRACTICE
Is “trademark” the correct spelling in U.S. practice? YES – one word with no hyphen. But it wasn’t always that way.
According to the “Past Leaders” section of the USPTO website, ROBERT WATSON, who headed the agency from1953 to 1961, “. . . made his mark . . . by taking the hyphen out of the word ‘trademark.’” He held a party to celebrate quashing the hyphen.
Is the revered Article I, Section 8, Clause 8 of the U.S. Constitution the “patent, trademark, and copyright clause?” NO. The U.S. Supreme Court ruled that the power of Congress to regulate trademarks flows from the commerce clause, not the patent and copyright clause.
Can you register a “trade name,” used to identify the name of a business, in the USPTO? NO. A “trade name” does not identify and distinguish products or services. The Curmudgeon suggests saying “business name” or “company name.”
Comments are invited. Click on “Curmudgeon” at the bottom of this column for my email address.
Your Friend,
The Curmudgeon
May 26, 2023
WHERE DOES THE U.S. COPYRIGHT OFFICE RESIDE IN GOVERNMENT?
The Curmudgeon is hearing about possible effects of AI on patent and copyright rights. The USPTO and the U.S. Copyright Office published Federal Register notices soliciting public input. Readers are intimately familiar with the USPTO – but a refresher on the Copyright Office might be timely.
The Copyright Office is outside the executive branch of government. In 1870 Congress centralized responsibility for registering copyrights in the Library of Congress. The Librarian of Congress appoints the head of the Copyright Office. The Copyright Office, not the USPTO or the White House, would have responsibility for any AI-related copyright rulemaking.
The Copyright Office head, HON. SHIRA PERLMUTTER, is called the “Register,” not the “Registrar.” Our readers would never misspell “copyright.” Dictionaries don’t recognize “copywrite” as a word, but the Curmudgeon’s spellcheck does. Is this AI taking over?
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Your Friend,
The Curmudgeon
May 19, 2023
USING THE PROPER WORDS
Law Prof. MARK LEMLEY posted, “Grading finished! I can report that my students are smart, know the material, write and reason well, and are entirely ignorant of the proper use of REIGN and REIN (emphasis added).”
Reader JON PUTNAM and others have noticed a trend toward ADVOCATE FOR as a substitute for the verb ADVOCATE. Generally, “for” is unnecessary, but it can be useful. If you were a lobbyist, you might say, “I ADVOCATE lower taxes.” But if the Republican Party retained you as an advocate for lower taxes, you could say, “I ADVOCATE FOR the Republican Party.”
An ANONYMOUS reader sees this statement used by law firms, “attached please find our document in respect to the . . . .” The reader believes “with respect to the . . . .” is better language. The Curmudgeon agrees.
Comments are invited. Click on “Curmudgeon” at the bottom of this column for my email address. Click here for the Curmudgeon Archives.
Your Friend,
The Curmudgeon
May 12, 2023
MORE ON “NOTICE” AND “RULEMAKING”
Last week we made the point that it’s “Advance,” not “Advanced,” Notice of Proposed Rulemaking. So far, so good.
Reader KRISTIN INNACONE, however, gently pointed out the error of the Curmudgeon’s statement that the phrase “advance notice” itself usually is redundant. She said, “One can provide notice of a change that is effective immediately, or after-the-fact notice. It is good business practice to provide notice in advance of a change, but in many circumstances that is not required.” One for the Curmudgeon and one for Kristin!
How do you spell “rulemaking?” One word? One word with a hyphen? Or two words? In modern U.S. federal government administrative law, it’s one word. This is so despite the landmark Administrative Procedure (don’t say Procedures) Act of 1946 (APA), which used “rule making.” Over time, the U.S. government and federal administrative lawyers have adopted “rulemaking.” State statutes still often use “rule-making” or “rule making.”
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The Curmudgeon
May 5, 2023
IT’S “ADVANCE,” NOT “ADVANCED,” NOTICE OF PROPOSED RULEMAKING
The USPTO published an “Advance Notice of Proposed Rulemaking” that grabbed the attention of experts on PTAB proceedings. When the Federal Register released the notice, an IP news outlet and many individuals called it “advanced” notice.
According to Grammarist.com, “advanced” is often used where “advance” would make more sense. That website claims the “mix-up is common and some readers won’t even notice it, so it’s not a serious error.” Baloney. Every error makes the Curmudgeon cringe. Take Advance Auto Parts, which is a fine company except that its name isn’t so good.
Is the phrase “advance notice” itself redundant? Generally it is, but not in the federal government rulemaking lexicon. Advance Notice of Proposed Rulemaking (ANPRM) is necessary to distinguish the notice from the formal Notice of Proposed Rulemaking (NPRM) that comes later. The names and acronyms are the Federal Register’s, not the USPTO’s.
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The Curmudgeon
April 28, 2023
A SYLLOGISM COULD HAVE CONCLUDED THAT SOCRATES HAD GREEN BLOOD
Is the 2,500-year-old science of formal logic useful for constructing IP arguments? Here’s the classic syllogism:
All humans are mortal (major premise)
Socrates is human (minor premise)
Therefore, Socrates is mortal (conclusion)
A valid syllogism must have a “middle term” (“human”) in both premises that is “distributed” (i.e., covers an entire class). The word “All,” above, distributes the middle term.
In a patent case in 2016, Federal Circuit Judge Taranto found a fallacy in a syllogism. He said, “That suggestion is fallacious: it employs . . . the fallacy of the undistributed middle, under which the two statements, “a dog is a four-legged pet” and “a cat is a four-legged pet” are asserted to give rise to the inference that a dog is a cat.”
Valid syllogisms can help, but don’t forget that a conclusion is true only if the premises are true. If the major premise said all humans had green blood, then the conclusion would have been that Socrates had green blood. More on logic later. Click on “Curmudgeon” at the bottom of this column for my email address.
Your Friend,
The Curmudgeon
April 21, 2023
AVOID SLANGY NEW VERBS IN LEGAL AND BSINESS ENGLISH
Reader SUZANNE FLATON-ORIGENES has a language pet peeve. She calls it “corporate speak that turns nouns . . . into verbs” or uses verbs in uncommon ways.
One of Suzanne’s examples is using socialize in the following way: “Please socialize that [idea, project, etc.] with so and so.” Another is cabin, as in, “Let’s cabin those discussion points for now.” She says these usages grate on her and colleagues who prefer plain English.
The Curmudgeon recommends caution in adopting new verb forms, sometimes called “verbing.” In legal and business writing and speaking, you’re better off choosing an established verb if one is available. New verbs can come across as slang or jargon. Instead of “showcasing” your work, just show it. Let’s not start “IP-izing” inventions instead of patenting them.
Comments are welcome. Click on “Curmudgeon” at the bottom of this column for my email address.
Your Friend,
The Curmudgeon
April 14, 2023
COMMENTS ON FONTS AND WORDS
JOHN PEGRAM, a longtime font fan, responded to the March 24 column. He believes serifs are great for text because they help lead the eye along the line. Times Roman was designed for newspaper columns, he says; other serif fonts are better for legal briefs. Sans-serif is good for signs and short headings. “Calibri is the worst sans-serif font.” John emailed the Curmudgeon in Arial, not Calibri.
HERB HART commented on the March 31 report that justices and counsel at the recent Supreme Court argument always said “Federal Circuit,” not “CAFC.” He recalled that Chief Judge Markey was fond of asking what “CAFC” referred to: the Court of Appeals for the First Circuit? Fourth Circuit? Fifth Circuit?
On useless words (April 7), RONALD EMBRY, JR. correctly pointed out that we can’t ban “inflection point” entirely because it’s a mathematical term of art. The Curmudgeon believes we should confine it to its math meaning, however, and not use it as a synonym for “turning point.”
Suggestions are welcome. Click on “Curmudgeon” at the bottom of this column for my email address.
Your Friend,
The Curmudgeon
April 7, 2023
BANISHING USELESS WORDS AND PHRASES
The faculty at Lake Superior State U. published its annual list of words and phrases that should be banished for uselessness, overuse, or misuse. Here are items from that list and a few others:
- Absolutely
- Amazing
- Fantastic
- Gaslighting (Merriam-Webster 2022 Word of the Year)
- GOAT
- Inflection point
- Irregardless (say regardless)
- Issued patent (say patent)
- It is what it is
- Oral hearing (say hearing)
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Your Friend,
The Curmudgeon
March 31, 2023
LESSONS FROM THE U.S. SUPREME COURT
The Curmudgeon learned a few things this week from the 90-minute oral argument at the Supreme Court in the possibly landmark patent case Amgen Inc. v. Sanofi:
- How do they pronounce the word “species” at the court? Dictionaries accept both “SPEE-shees” and “SPEE-sees.” During the argument, justices and counsel said the word 11 times. It was pronounced SPEE-shees 10 of those times. You should say SPEE-shees.
- How many amicus (friend of the court) briefs are too many? After cert. was granted in the Amgen case, 31 amicus briefs were filed. Justice GORSUCH said, “I’ve got so many friends I can hardly stand it (laughter).” The Curmudgeon believes that if the briefs were the common “me too” variety, 31 is too many.
- At the Supreme Court, do they say, “Federal Circuit” or “CAFC?” During the argument, justices and counsel said “Federal Circuit” 35 times. “CAFC?” Not once. You should say Federal Circuit.
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Your Friend,
The Curmudgeon
March 24, 2023
THE JACK DANIEL’S APOSTROPHE; TYPE FONT FASHION
[1] Is the Jack Daniel’s apostrophe usage correct? – On Wednesday, a trademark case was argued at the U.S. Supreme Court involving Jack Daniel’s whiskey. The distillery founder, born in Tennessee around 1850, was Jack Daniel, not Jack Daniels. So, the distillery’s punctuation is correct. The possessive is Jack Daniel’s, not Jack Daniels’. Whiskey fans should be relieved to know it.
[2] Serif and Sans-Serif Type Faces — The U.S. Secretary of State caused a stir among language connoisseurs by changing the font used in his department. The change was from Times New Roman, a popular, older font with serifs, to Calibri, a popular, newer sans-serif font. A memo said fonts with serifs create “issues for individuals with disabilities.” Bryan Garner suggested there is no science to support the claim.
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Your Friend,
The Curmudgeon
March 17, 2023
IPRs AND PGRs: POOR NAMES AND SURPLUS TEXT
This is not about the substance of the America Invents Act (AIA). This is a language column. Whether you love it or hate it, the AIA isn’t a model for legislative drafting.
Take IPRs and PGRs, Inter Partes Reviews and Post Grant Reviews. The names aren’t distinctive. An Inter Partes Review is a post grant trial with two or more parties. A Post Grant Review? It’s a post grant trial with two or more parties. If you don’t deal with the AIA every day, you may have trouble remembering which is which.
A larger problem is the gross cluttering of the Patent Act with a ton of unnecessary text. You have to read the statute to appreciate this. Chapter 31 on IPRs has nine sections with hundreds of words, followed by Chapter 32 on PGRs with nine sections that have 99% of the same words. It would have been so simple to fix this. Bah, humbug!
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Your Friend,
The Curmudgeon
March 10, 2023
BOOKS ON WRITING RECOMMENDED BY THE CURMUDGEON
The Bluebook – A Uniform System of Citation (Columbia L. Rev. et al. eds., 21st ed. 2020). When I took a shot at The Bluebook recently for growing to 365 pages, I didn’t mean it should be burned and replaced by a 2-page guide as once suggested by former Judge Richard Posner.
Bryan A. Garner, Modern English Usage (5th ed. 2022). Hot off the presses a few weeks ago. A leading authority on grammar, usage, and style. 1276 pp.
William Strunk Jr. and E.B. White, The Elements of Style (4th ed. 2000). The original was written by Strunk in 1918. A classic with concise nuggets of wisdom but incomplete on grammar. Reader John Cheek suggested, perhaps tongue in “cheek,” that Strunk and White could be resurrected. 105 pp.
Sandra Strokoff and Laurence Filson, The Legislative Drafter’s Desk Reference (2nd ed. 2008). Strokoff was the Legislative Counsel of the U.S. House of Representatives. 583 pp.
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Your Friend,
The Curmudgeon
March 3, 2023
DON’T USE “ESQUIRE” TO IDENTIFY ATTORNEYS
Reader MERCEDES MEYER says she was once told that “Esquire” following the name of an attorney was permissible only to use for a man, not for a woman. She wonders whether that was true. In fact, decades ago Esquire was thought to be only for names of men who were attorneys. Nowadays people who still use the word (or its abbreviation, “Esq.”) use it for men and women alike.
This leads to whether Esquire or Esq. should be used at all. The Curmudgeon says no. According to some style manuals, you shouldn’t use Esquire after your own name, but you may use it after the name of another attorney to show honor or respect. The Curmudgeon recommends against even that usage. Most people don’t know what Esquire means. It is seen less often today and seems to be used mostly by older attorneys. Exorcise it from your vocabulary!
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Your Friend,
The Curmudgeon
February 24, 2023
“COMPRISING” IN PATENT PARLANCE
The Most Common Word In Patent Claims Is “Comprising.” It’s Used In The Transition Between The Preamble And The Body Of The Claim. Attorneys Know That In Patent Parlance It Means “Including But not exclusively.” The problem: other folks don’t know that meaning. Except in patent law, comprising means “consisting of exclusively; embracing to the exclusion of others,” according to Black’s Law Dictionary.
In a Federal Circuit case decided on February 17, one issue was whether a claim for “A light fixture assembly, comprising . . . a magnet embedded in the base” could cover a device with more than one magnet. The court felt a need to cite four earlier opinions to support the patent law definition of comprising. The court used the expression “in patent parlance.”
Could we just say “including” and be done with this language burden? Click on “Curmudgeon” at the bottom of this column for my email address.
Your Friend,
The Curmudgeon
February 17, 2023
COMMENTS FROM READERS
JOHN CHEEK commented on last week’s column, which explained that the noun “counsel” should not have an “s” added for the plural. He turned to apostrophes. He said, tongue in cheek, that it’s a burden on him to add an “s” after the apostrophe when he writes JOHN’S BOOK. He has noticed that many people write DENNIS’ BOOK without an s after the apostrophe, since Dennis ends with an s.
According to Bryan Garner, however, the predominant usage when forming a possessive is to add an ’s to almost all singular nouns – even those ending in s. So it should be DENNIS’S BOOK. For plurals that end in s, which most do, add only an apostrophe. BOSSES’. For plurals not ending in s, add ’s. CHILDREN’S.
HERB JERVIS noted that the term “attorney and counselor” had its origin in the early courts in England. Two types of courts existed — law and equity. Practitioners in those courts were referred to either as attorneys-at-law or counselors-in-equity.
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Your Friend,
The Curmudgeon
February 10, 2023
USE “COUNSEL,” WHETHER REFERRING TO ONE OR MORE THAN ONE COUNSEL
When you’re using the word “counsel” as a noun, that’s the rule. Never an “s” on the end. It’s like sheep. One sheep. Two sheep.
“Counsels” is used in error frequently. The error may be most common when the term is preceded by a modifier. “General counsels” and “independent counsels” are incorrect. Always use “counsel.”
Here are some tougher issues for you to ponder: If “counsel” is both singular and plural, why is “attorneys” the plural of “attorney?” Is “attorney-at-law” just a fancier term for attorney? How about “attorney and counselor?” Are “lawyer,” “attorney,” and “member of the bar” synonyms? Don’t get me started on “esquire.” And why do dictionaries accept “bears” as the plural of “bear” when “sheeps” is unacceptable?
Suggestions and comments are welcome. Click on “Curmudgeon” at the bottom of this column for my email address.
Your Friend,
The Curmudgeon
February 3, 2023
BANISHING THE PHRASE “THE TOTALITY OF THE CIRCUMSTANCES”
Mark Twain said, “Don’t use a five-dollar word when a fifty-cent word will do.” On January 20 the Federal Circuit decided that a patent applicant delayed unreasonably in the USPTO. In explaining its decision, the court used the phrase “the totality of the circumstances” 14 times. “The totality of?” How about just saying “all of?”
According to Black’s Law Dictionary, “the totality of the circumstances” is a test. But if you consider every circumstance, is it a test? The IPO Daily News published a summary of the Federal Circuit’s decision (not written by the Curmudgeon) without needing to mention a test. Where did the phrase “the totality of the circumstances” originate? You guessed it! In the five-dollar word factory: the U.S. Supreme Court.
Do you have words or phrases to banish? Click on “Curmudgeon” at the bottom of this column for my email address.
Your Friend,
The Curmudgeon
January 27, 2023
“IF I WERE TWO-FACED, WOULD I BE WEARING THIS ONE?” ABRAHAM LINCOLN
Reader Phil Johnson says people today often don’t use the proper verb forms for the ‘subjunctive mood.” Lincoln knew his English grammar. He said “were,” not “was,” because he was expressing a wish, a hypothetical, or a condition contrary to fact.
The mood of a verb reflects the writer’s attitude and the intent of the sentence. The subjunctive mood differs from the common “indicative mood,” which states facts or asks questions.
Why use the proper verb form? Standard grammar is a mark of a learned person. The Curmudgeon can’t find a single error in use of the subjunctive mood by the U.S. Supreme Court or the Federal Circuit. Knowledge of the subjunctive mood elsewhere indeed seems to be declining, but I will do my part to keep it alive.
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Your Friend,
The Curmudgeon
January 20, 2023
THE HATED BLUEBOOK AND “FEWER” V. “LESS”
An anonymous reader ridicules The Bluebook: A Uniform System of Citation, the most widely used legal citation guide. It now weighs in at 365 pages. Former Judge Richard Posner said we should “burn all copies of the Bluebook.” Posner had his own legal citation guide: 2 printed pages.
We should strive for reasonable uniformity in legal citations without becoming obsessed with minutiae. The Bluebook publishers—law review editors at Harvard, Columbia, Yale, and Penn—deserve a failing grade on concise writing.
Reader Phil Johnson laments the failure to maintain the distinction between “fewer” and “less.” The general rule is to use “fewer” when referring to countable items and “less” when referring to volume or amount. Fewer cookies; less milk. This is still the rule. Judge Robert Bacharach gives it as an example when he states in his 2020 book on legal writing, “Some words are often misused, distracting the reader for at least a moment.”
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Your Friend,
The Curmudgeon
January 13, 2023
BATTLES OVER THE PERIOD AT THE END OF A SENTENCE
The One Space Rule — The rule in the 21 century is that you insert ONE SPACE after the period at the end of a sentence. The Curmudgeon grudgingly accepted this change from the old rule of two spaces after legal writing expert Bryan Garner grudgingly accepted it. How did it happen? The best story is that an anonymous software writer decided she would secretly change the world and it stuck.
The No Period Rule – Now the Washington Post claims that Gen Z workers — defined as those born between 1997 and 2012 – don’t want to use ANY PERIOD at the end of a sentence They believe a period may mean “This is what I’m saying, period,” and it may sound angry and cold The Curmudgeon will fight this We have to stand up for standard, educated English. Period.
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Your Friend,
The Curmudgeon
January 6, 2023
LET’S GET SERIOUS ABOUT DRAFTING LEGISLATION
According to an unscientific, nonpartisan poll by the Curmudgeon, the U.S. Congress doesn’t take writing seriously enough. Bill titles are jokes. According to comedian Dave Barry, the “Inflation Reduction Act” hodgepodge “will reduce inflation because it says so right in the title . . . .” The “Pride in Patent Ownership Act,” which didn’t pass last year, was about recording patent assignments and licenses, not about “pride.”
At year’s end, Congress abandoned “regular order” to pass a 1,653-page omnibus funding bill that hardly anyone had read. It included a few IP items; people were worried that it might include more. “Regular order” produces the clearest legislation. It requires both houses to adhere to their committee processes, including public hearings, careful bill drafting, and formal committee reports.
Comments are invited. Click on “Curmudgeon” at the bottom of this column for my email address.
Happy New Year,
The Curmudgeon
December 16, 2022
A FEW WORD ISSUES FOR THE HOLIDAYS
“Happy New Year’s” or “Happy New Year?” It’s Happy New Year. The apostrophe plus “s” is incorrect unless you’re including a word that “belongs” to the New Year. E.g., Happy New Year’s Day.
Is Hanukah or Chanukkah correct for the Jewish festival? Both spellings are considered correct, but Hanukah is more common. The number of k’s and n’s varies. Kwanzaa, the annual celebration of African-American culture, ends with two a’s.
What does “bah humbug” mean? It’s an exclamation that conveys “curmudgeonly displeasure,” according to Pop Culture Dictionary. It was most famously used by Ebenezer Scrooge, the main character in Charles Dickens’s A Christmas Carol (1843).
No curmudgeonly displeasure for the rest of the month. Click on “Curmudgeon” at the bottom of this column for my email address.
Happy holidays,
The Curmudgeon
December 9, 2022
THE MYSTERY OF THE MISSING “A” IN “APPLICATION FOR PATENT”
Back in 1836, when no one made mistakes, the U.S. patent statute stated that an inventor could file an “application for a patent.” In 1952 Congress rewrote the phrase to read that an inventor could file an “application for patent.” What happened to the “a?” Was it a typo? Was Congress in a drunken stupor?
The Curmudgeon doesn’t know what happened, but knows it’s weird to say, out loud, “application for patent.” A patent is a thing. It’s a good idea to write the way educated people talk. Those who are not obsessed with statutory language will say they’re filing an application for a patent, or, better yet, a patent application. Bah, humbug.
If you’re dealing with trademarks or copyrights, of course, it’s an application “to register” a trademark or a copyright. You already have rights, or believe you do. You’re registering them.
Pet peeves from readers are welcome. Click on “Curmudgeon” at the bottom of this column for my email address.
Your friend,
The Curmudgeon
December 2, 2022
PET PEEVE: “AS PER” FOR “IN ACCORDANCE WITH”
Reader JEFF INGERMAN hates it when people use the Latinism “as per” instead of “in accordance with.” The Curmudgeon agrees. It’s an 18th century phrase that has long been condemned by writing texts, but it can be found in the USPTO’s Manual of Patent Examining Procedure and patent rules, and it’s still used by some patent examiners.
It’s redundant. “Per” can mean “according to,” “through,” or “for each.” “As” adds nothing. More important, ordinary people may not know what you mean when you say “as per.” Shorter is not always better. Clarity trumps conciseness.
In the last column, I used the phrase “different from” because it’s more common in the U.S. than “different than.” If you want people to think you’ve spent time in the U.K, you can say “different to.”
More pet peeves are welcome. Click on “Curmudgeon” at the bottom of this column for my email address.
Your friend,
The Curmudgeon
November 18, 2022
PET LANGUAGE PEEVES: “IN THE IP SPACE”
Language curmudgeons have pet peeves. People say, “I’m in the IP space.” In the patent space, the trademark space, the copyright space, the biopharmaceutical space, and the high-tech space. I’m unsure when this “space” stuff started. It’s most common among academics, very smart people but not the clearest writers.
The closest synonyms seem to be “in the field” or “in the area.” “In the space” forces readers to look for subtle differences from the old words. The Curmudgeon can’t see any. Jargonistic. Very annoying. And you could just say “I’m in IP.”
Send me your pet peeves. Click on “Curmudgeon” at the bottom of this column for my email address.
Happy Thanksgiving!
The Curmudgeon
November 11, 2022
IT’S TIME TO PART WITH THE TERM “WRIT OF CERTIORARI”
Last Friday the U.S. Supreme Court granted a petition for a “writ of certiorari” in Amgen v. Sanofi. It was the first grant of review of a patent case in more than 2 years. Exactly what is a writ of certiorari and how do we pronounce it? Most non-lawyers don’t know. A writ is a court’s written order. A writ of certiorari directs a lower court to deliver the record of a case for review. Black’s Law Dictionary gives three pronunciations with none preferred: (1) sir-shee-uh-RAIR-eye, (2) sir-shee-uh-RAIR-ee, and (3) sir-shee-uh-RAH-ree. It causes embarrassing verbal stumbles even by lawyers.
Instead of using “certiorari,” the Curmudgeon suggests writing, “Last Friday the U.S. Supreme Court agreed to review Amgen v. Sanofi.” No meaning is lost. It may take courts a while to embrace the change, but they should do it.
Comments are always welcome. Click on “Curmudgeon” at the bottom of this column for my email address.
Your Friend,
The Curmudgeon
November 4, 2022
THE WORDS “COUNTERFEITING,” “PIRACY,” AND “INFRINGEMENT”
These words often are used interchangeably in the popular media. Our IP expert readers understand the words, but sometimes may be uncertain whether “counterfeiting” or “piracy” is the apt term. Trademark counterfeiting is an egregious type of trademark infringement. It’s the intentional act of producing or selling a product or service bearing a sham trademark that is a reproduction of the original mark.
Piracy, in the IP context, usually refers to egregious copyright infringement. Some writers also refer to trademark counterfeiters as “pirates.” “Infringement” is any act that interferes with one of the rights of a patent, trademark, or copyright owner. Trade secret infringement is called “misappropriation.” Does the Curmudgeon have it correct?
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Your Friend,
The Curmudgeon
October 28, 2022
THE VOGUE TERM “X” IN IP
The “Center for Intellectual Property x Innovation Policy” is part of the Antonin Scalia Law School of George Mason University. A reader asked, “What’s the x?” According to Wikipedia, x is used between names to indicate collaboration. It originally indicated collaboration between artists. The musical duo Chloe x Halle, for example. Now x can refer to other kinds of collaboration.
Writing expert Bryan Garner might call it a “vogue expression”—in fashion at a particular time. He lists many vogue words and symbols. They may begin as linguistic fads and become standard English or pass into obscurity. The Curmudgeon approves of vogue words in some writing to show you’re with it or young at heart, but no vogue words in legal documents, please.
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Your Friend,
The Curmudgeon
P.S. Wikipedia says x at the end of a message can mean a kiss. x
October 21, 2022
POTPOURRI OF REDUNDANCIES
Reader Andrew Currier wonders whether the phrase “example embodiment” often seen in patent specifications is redundant. McCarthy’s Encyclopedia of Intellectual Property defines embodiment as “An illustrative example of one use of an invention.” Redundant! Reader Herb Hart thinks the word “back” in a recent blog post reading “. . . resulted in a remand back to the Board” was redundant because “remand” means “send back.” Redundant!
Reader Thomas Sullivan notes that many sentences start with the phrase “In order to,” and wonders why we need to say “In order.” The Curmudgeon agrees that “In order” at the beginning of a sentence likely is surplusage. The words used in the middle of a sentence might help with clarity. A recent Bryan Garner Usage Tip of the Day identified “time period” as a common redundancy that became widespread in the late 20th century. The word “period” is almost always sufficient.
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Your Friend,
The Curmudgeon
October 14, 2022
MORE ON CAPITALIZATION IN PATENT DOCUMENTS, ET CETERA
Following up on last week, reader Kaveh Rashidi-Yazd says he was taught to capitalize “claim” in “claim 1” and he still does it because it helps in identifying claim numbers in documents. After more research, the Curmudgeon finds some USPTO patent examiners also use a capital “C” here. If you feel that’s better, do it. Courts don’t capitalize “claim” in “claim 1,” but they won’t sanction you for departing from their style.
Kaveh also likes to italicize prior art references in responses to the USPTO. That can be a good practice for making the references stand out. Don’t use all-caps, however, which is hard to read. BTW, did you ever notice that et cetera (abbreviated “etc.”, which is not italicized) is constantly mispronounced “eck cetera” by the illiterate class? Ugh!
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October 7, 2022
PATENT CLAIMS: SHOULD WE WRITE “claim 1” OR “Claim 1?”
Reader Ron Derrington asked the question. The Curmudgeon’s colleague, the IP Whiner, says to capitalize “claim 1” because patent claims are as long as books and we capitalize titles of books. We’ll ignore that comment.
The Curmudgeon has seen references to a specific claim such as “claim 1” capitalized in some articles and briefs, but the modern trend in legal writing generally is toward less capitalization. Recent opinions of the U.S. Supreme Court and the Federal Circuit use lower case for a specific claim. Grammar and punctuation follow usage, so the Curmudgeon recommends lower case, except, of course, when “claim” is the first word of a sentence.
Also on claims, if you aren’t a patent prosecutor you may not know that in a U.S. patent with one claim, the claim is not numbered. One claim? Now that’s concise writing!
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September 30, 2022
COPYRIGHT PROTECTS SOFTWARE, NOT FONTS
Last week an IP publication’s lead story was on a copyright suit involving Shake Shack. The story said the burger chain is accused of infringing a type foundry’s “copyrighted font.” This phrase is a bit inaccurate. Because a 1992 U.S. regulation expressly excludes “typeface” from copyright and the words “typeface” and “font” often are used interchangeably, the Curmudgeon concludes “fonts” cannot be protected by copyright either. Software can be copyrighted. The story should have said Shake Shack is accused of infringing copyright in the software that generates the font. The Curmudgeon doesn’t know whether the suit has merit
Boomers think the phrase “begs the question” discussed last week means circular reasoning. Gen Xers, millennials, and Gen Zs think it means “leads to another question.” Gen Alphas may be too young to know.
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September 23, 2022
WHAT “DOES BEG THE QUESTION” MEAN TODAY?
Reader Phil Johnson wonders whether the classical meaning of “beg the question” is being lost. “Beg the question,” which has been used in English since the 16th century, means to make an argument that assumes the truth of the conclusion, instead of supporting it. A simple example from language guru Bryan Garner is, “Life begins at conception, which is defined as the beginning of life.” This assumes the conclusion. It’s circular reasoning.
In recent years an alternative meaning of “begs the question” has appeared in many dictionaries. People will say, “a question that begs to be answered” or “one question that begs an answer,” followed by their question. This is entirely different from the classical meaning. Reluctantly the Curmudgeon recommends avoiding ‘beg the question” unless you’re talking to logic experts. You might say “evades any support for the argument ” or “raises a question to be answered,” depending on the meaning you want.
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September 16, 2022
WHAT’S THE DIFFERENCE BETWEEN IP AND IP “RIGHT?”
When do we say “intellectual property” and when do we say “intellectual property right?” Many writers call an invention or book itself “intellectual property.” It’s a creation of the mind. The patent or copyright that protects the invention or book is a legal right, so it’s an intellectual property “right.” Not everyone observes this distinction, but it may be advisable to include “right” when you want the reader to understand that the property is protected.
What about trademarks? A trademark is a name, symbol, or other source identifier. It’s the creation. The legal right protecting the trademark probably should be a “trademark right,” but no one says that. They use “trademark” for both the creation and the right. BTW, if your copyright attorney writes “copywrite,” get a new attorney.
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September 9, 2022
USUALLY YOU DON’T NEED TO SAY WHAT TYPE OF PATENT
We have many types of patents. The U.S. has “utility,” “design,” “plant,” and “reissue” patents. Utility patents are by far the most numerous. The awkward name given to utility patents comes from the requirement for the invention to be useful. The name never appears in any part of the statute that anyone reads. If your audience doesn’t need to know the type of patent, just say “patent.” Experts will know the type from the context. Lay people ordinarily don’t need to know.
Another unnecessary word is “issued” in the phrase “issued patent.” It’s not a patent until it’s issued. “Unissued patent” would be an oxymoron. Certain countries grant lower-tier patents called “utility models” or “petty patents.” Weird terms to avoid if you can. Stamping out unnecessary and nerdy words is an honorable calling, thinks the Curmudgeon.
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September 2, 2022
MORE ON WHETHER IP INFRINGEMENT IS BY A PERSON
Last week we concluded that to be consistent with the language of the U.S. patent statute, we should say infringement is by a person, not by a product or process. The infringer may be a natural person or a juristic person.
The other U.S. IP statutes use similar language. The Trademark Act of 1946 (Lanham Act) says “any person” may be liable as an infringer. The Copyright Act says “anyone.” Trade secret infringement is called misappropriation. The Defend Trade Secrets Act of 2016 says “person.” There you have it.
The Curmudgeon will attend the 50th IPO Annual Meeting, incognito, and hopes to see you there.
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August 26, 2022
IS A PATENT INFRINGED BY A PRODUCT OR PROCESS OR BY A PERSON?
We often read that products or processes infringe a patent, but such statements don’t follow the words of the U.S. statute. Section 271 says, “. . . whoever without authority makes, uses, offers to sell, or sells any patented invention . . . infringes the patent.” “Whoever” means a person, who may be a natural person or a juristic person such as a corporation.
So, ordinarily we should say Jane infringes the patent, not Jane’s widget infringes the patent. There’s an exception. Section 337 of the Tariff Act of 1930, which deals with unlawful importation, refers to “articles that . . . infringe a valid and enforceable United States patent . . . .“ Use the words of the statute. Next week we’ll look at who may infringe trademarks and copyrights.
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August 19, 2022
USE CAPITAL LETTERS SPARINGLY IN LEGAL WRITING
The modern trend is to capitalize fewer words in legal writing. Compare today’s style with the original text of the Constitution of the United States, written in an era when words were capitalized in nearly every sentence merely for emphasis or for no apparent reason. Everyone knows to capitalize the first letter of the first word of a sentence and to capitalize the first letter of proper nouns. Dictionaries and style manuals set out many other capitalization rules. The editor of Black’s Law Dictionary, Bryan Garner, says use lower case unless a rule requires capitalization.
Younger lawyers seem to use fewer capitals. They’ve probably taken legal writing courses recently. Write in the style used by your audience. The Federal Circuit this week capitalized “Requests for Director Rehearing” where the Curmudgeon might not have done so.
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August 12, 2022
PRUNING OLD LANGUAGE IN PATENT ACT SECTION 101
The hottest IP legislation now is Senator TILLIS’s patent eligibility bill S.4734, introduced August 2. If Congress adds language to an existing law, it should clean up the old language. Old laws, like trees, need pruning. Tillis prunes one superfluous word from existing section 101. It’s the word “new” in “new and useful process . . . .” New (novel) inventions are covered in existing section 102.
The Curmudgeon believes Tillis may have overlooked a few other unnecessary words in section 101. They are, “or any useful improvement thereof . . .” and, later in the same sentence, “therefor.” Should they be deleted? I opine only on drafting issues, not whether new legislation is needed.
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August 5, 2022
LET’S DROP “ORAL” FROM “ORAL HEARING”
USPTO “oral hearings” are on my list of most-hated terms. Do we really have to say “oral?” Is it needed to distinguish conventional hearings from mythical “written hearings?” Or mythical “silent hearings,” in which the participants look at each other and say nothing? The U.S. Supreme Court and the Federal Circuit use “oral argument.” That has meaning.
“Oral hearing” has been in the USPTO rules and culture, on the patent side, for generations. In a step backwards in 2011, Congress put “oral hearing” in the Patent Act for the first time, to describe IPR and PGR proceedings. So far, the trademark and copyright statutes have escaped.
Yesterday the Curmudgeon approached USPTO officials and proposed amending the rules to shorten “oral hearing” to “hearing.” Without even consulting the new Director, they said no rule change can ever shorten a rule. Oh wait — that was just a bad dream I had.
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July 29, 2022
ARE IP CIVIL ACTIONS CIVIL?
IP rights are enforced in “civil” actions, not criminal actions. The word “civil,” of course, among other things also can mean following rules of good behavior. You might think IP litigation involves a lot of bad behavior. Just in the past week we’ve seen stories reporting “covid-19 patent wars are spreading” and “wireless technologies are a litigation battlefield.” Patents are axed” or “killed.” Suits are “tossed” or “thrown out.”
Publications seem to believe such language attracts readers. In reality, litigation over IP rights usually is civil. Judges frequently comment that IP attorneys may be the most civil and professional. It’s time for headline writers to tone down the rhetoric.
Reader Tom Burger responded to the column on “not invalid” patent claims by suggesting “remain valid.” The Curmudgeon likes it. A judge could say, “Claim 1 is invalid. Claim 2 remains valid.”
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July 22, 2022
MORE ON WHETHER A PATENT CLAIM IS “VALID” OR “NOT INVALID”
Some friendly readers took issue with my recent column asserting that it’s unnecessarily complex, language-wise, for a court to hold patent claims “not invalid.” As the readers view it, courts never determine that a claim is valid. Courts merely determine whether evidence or law renders a claim invalid.
The Curmudgeon is not persuaded. By statute, claims are presumed valid if they’re not proven invalid. Why shouldn’t we call them “valid”?
Yes, around 1986 Chief Judge MARKEY said courts shouldn’t declare claims valid and nearly everyone fell in line. But the U.S. Supreme Court in several earlier opinions had held claims “valid.” The Curmudgeon can disagree with courts!
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July 15, 2022
EVERYONE’S TALKING ABOUT STARE DECISIS
After the U.S. Supreme Court’s landmark decision in Dobbs v. Jackson, everyone’s talking about the stare decisis doctrine. Without getting into legal analysis, here’s a refresher on usage.
According to Black’s Law Dictionary (2019), stare decisis is the “. . . doctrine of precedent, under which a court must follow earlier judicial decisions when the same points arise again in litigation.” Stare decisis is Latin for “to stand by things decided.” The Curmudgeon, usually a critic of Latin phrases in law, believes Latin is all right here, because there’s no simple English alternative. It can be pronounced either stahr-ee di-si-sis or stair-ee di-si-sis.
Did the Supreme Court’s constitutional law decision change the stare decisis doctrine in any way that might affect future IP decisions? That’s beyond the scope of this column. And the Curmudgeon doesn’t know.
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July 8, 2022
DISTINGUISHING BETWEEN “OPINION” AND “DECISION”
A judicial “decision” is a court’s determination of what to do in a case: affirm, reverse, remand, dismiss, etc. The “opinion” is the written explanation, if any, for the decision. Judges make this distinction unerringly, but lawyers don’t. It’s taught in the first year of law school but easy to forget.
The term “final written decision” used in the America Invents Act for IPRs and PGRs is just plain wrong. It should be “final written opinion,” but it’s in the statute and we’re stuck with it. In addition to opinion versus decision, we often see confusion among ruling, order, judgment, decree, and verdict. If in doubt about proper usage, consult a legal dictionary or court rules.
This week marks the first anniversary of the Curmudgeon’s current run: 50 columns in a year. Readers’ suggestions are always appreciated. Click on “Curmudgeon” at the bottom of this column for my email address.
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June 24, 2022
LET’S STOP SAYING VALID PATENT CLAIMS ARE “NOT INVALID”
This week, like nearly every week, the Federal Circuit reviewed a district court opinion that had determined the patent claims were “not invalid.” Why do we have to say “not invalid” when the challenger fails to prove invalidity? It’s unnecessary complexity of language.
Attorneys and judges know claims can be challenged more than once. It’s like the first base umpire telling the base runner, “I’m calling you ‘not out’ instead of ‘safe’ because you might be ‘out’ if you run to second.” Say “not invalid” only if a judge insists.
Next week we’ll find something on trademarks or copyrights. Comments are invited on any IP language topic. Click on “Curmudgeon” at the bottom of this column for my email address.
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June 17, 2022
ARE WORDS BECOMING LESS PRECISE?
Words are arguably becoming less precise. Take job titles. Job title inflation means increasing the number or prestige of job titles in an organization without increasing pay. This week the Curmudgeon was shocked to learn that a venerable patent-owning company now has at least six business unit heads whose titles are CEO and who report to the actual CEO. Will we all become fake CEOs? Will remote workers’ homes become “C-suites?”
Word inflation is hard to detect. Years ago, Congress thought it was elevating the statute of the head of the USPTO by changing the title from “Commissioner” to “Director and Under Secretary.” Maybe the change was just title inflation. The Curmudgeon tries to keep track of word inflation and growing imprecision. Let’s hope title inflation is less than 8 percent a year! Bah, humbug!
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June 10, 2022
REMEMBER TO SAY THE CLAIMED INVENTION “WOULD HAVE BEEN” OBVIOUS
This is a sequel to last week’s column. Last week, based on section 103 of the Patent Act, we concluded that when dealing with an obviousness issue we should say “the claimed invention,” not “the claim.” Still referring to section 103, the statute reads “. . . the claimed invention . . . WOULD HAVE BEEN obvious before the effective filing date . . . (emphasis added).”
In oral conversations, the Curmudgeon sometimes hears inventors and even patent attorneys slip into saying an invention IS obvious. This is always wrong after a patent application has been filed. An invention that is obvious today would not necessarily have been obvious before the patent filing, which may have occurred many years earlier. Follow the statute.
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June 3, 2022
LET’S SAY THE “CLAIMED INVENTION,” NOT THE “CLAIM,” WOULD HAVE BEEN OBVIOUS
Reader JOHN KILYK, JR. wondered whether it’s a patent claim, or alternatively, the invention defined by a claim, that would have been obvious (or nonobvious).
Section 103 of the Patent Act tells us the test is whether “. . . the claimed invention . . . would have been obvious . . . (emphasis added).” The Curmudgeon believes we should follow the statute diligently here. Clarity trumps brevity on this question. “The claim is obvious” is a lazy shortcut. The rule is the same for novelty. A friend once told the Curmudgeon that Judges RICH and MARKEY, the deans of the Federal Circuit, didn’t like saying claims would have been obvious. It doesn’t matter that the U.S. Supreme Court broke this rule as recently as 4 years ago in its SAS opinion.
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May 27, 2022
“PLEADED” OR “PLED”?
Is it okay to say, “She pled guilty to the charges” instead of “She pleaded guilty to the charges?” Pled is used in some courts. A Google Scholar search of Federal Circuit opinions showed pled was used one-third as often as pleaded. Legal writing expert Bryan Garner says pled is not wrong, but he prefers pleaded.
In non-legal writing, pled appears to be less common. It would sound strange to say, “He pled for help.” The British call pled an Americanism. The Chicago Manual of Style says, “Avoid pled.” The Curmudgeon recommends pleaded in legal and non-legal work. Your boss could believe pled is wrong!
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May 20, 2022
READERS ON ACRONYMS
Following up from last week, PHIL SWAIN, who clerked for Judge GILES RICH, said the great judge believed acronyms led to fuzzy thinking and misunderstanding. The handbook of the U.S. Court of Appeals for D.C. (2018) states, “Parties are strongly urged to limit the use of acronyms.” Multiple readers called out the Department of Defense and its contractors for acronym-itis.
RAY DOSS wondered about the use of “a” or “an” before an acronym. The way you say it aloud controls. Use “an” before acronyms or abbreviations beginning with a vowel sound. E.g., an LED lamp. Use “a” before acronyms beginning with a consonant sound. E.g., a NATO member. If you know the pronunciation, your ear will guide you. If you use an acronym not familiar to everyone, of course, the words should be written out in full the first time with the acronym in parentheses. NEXT WEEK: Pleaded or pled?
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May 13, 2022
BREAKING NEWS: PRESIDENT BIDEN COMES OUT AGAINST ACRONYMS
On May 9, according to Politico, POTUS said, “I am so tired of acronyms. I can’t stand them.” He was speaking in the Rose Garden about ACP (the Affordable Connectivity Program). He has also said acronyms violate his rule that “anybody should be able to read this or hear it and understand what I’m talking about.” He’s tough on speechwriters.
The Curmudgeon has observed an annoying increase in use of IP acronyms. Everywhere we see FRAND, SEP, CAFC, DOJ, ITC, MPEG, and NIST. Judge Robert Bacharach of the Tenth Circuit approves of acronyms “when we can assume readers know what we mean.” His examples are FBI, IRS, and US. Some acronyms are necessary, but you may be able to find alternatives. After the first use of Patent and Trademark Office, say “Office.” More on acronyms in a future column.
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May 6, 2022
DON’T BE BULLIED BY A WORD
A reader drew the Curmudgeon’s attention to a speech by legendary Judge GILES RICH titled “Escaping the Tyranny of Words . . . .” Rich spoke about the struggle to pry judges loose from the vague requirement for “invention” to obtain a patent after Congress enacted the more objective nonobviousness standard in 1952. Judges insisted “invention” was still required. The word was used elsewhere in the statute. It was the equivalent of “discoveries” in the constitution. Etc.
Rich quoted Frankfurter: “It is a part of wisdom . . . not to be victimized by words.” And Holmes: “A word is not a crystal, transparent and unchanged; it is the skin of a living thought and may vary greatly in color and content according to the circumstances and the time in which it is used.”
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April 29, 2022
CHOOSING THE BEST WORD
Reader GILLIAN THACKRAY wonders whether “utilize” is vastly overused as a synonym for “use.” The Curmudgeon believes it is. The two words mean the same thing to most people and “use” is simpler. That said, The Chicago Manual of Style states, “‘Utilize’ is usually an overblown alternative of ‘use,’ but it is occasionally the better choice when the distinct sense is ‘to use to best effect.’” If you have a group of readers who believe “utilize” adds a bit of meaning, you should speak their language. Otherwise “use” is better.
The phrase “prior to” appears in IP legal documents a gazillion times a year. Attorneys often write “prior to,” but say “before” when they are speaking informally. The Curmudgeon urges “before” for both writing and speaking. It’s not pretentious or legalistic-sounding and it saves a word. Four characters saved by avoiding “utilize” and a word saved by avoiding “prior to.” That’s progress!
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April 22, 2022
MORE ON “NONPROVISIONAL” PATENT APPLICATIONS
Readers JEFFREY GLUCK and JEFFREY INGERMAN commented on the Curmudgeon’s suggestion that you don’t need to say “nonprovisional” patent application, at least in most cases. The Curmudgeon stated incorrectly that after you file a nonprovisional, your provisional ceases to exist. In fact, you may still have a provisional after the filing of a nonprovisional. See the USPTO regs. So, to avoid confusion, you may have to say “nonprovisional,” but don’t say it unless it’s needed.
One reader would prefer a hyphen in “nonprovisional.” The Curmudgeon agrees that a hyphen would help readability, but the USPTO’s omission of a hyphen is consistent with usage of other “non” words, which don’t include a hyphen. Taking another step, the drafters of the statute should never have called a provisional application an “application.” How can it be an application if it doesn’t have claims? But we’re stuck with it.
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April 15, 2022
I AIN’T, YOU KNOW, GOING TO TELL YOU, YOU KNOW, WHAT TO SAY OR WRITE — NOT!
The Curmudgeon advocates standard, educated written and spoken language in professional IP settings. Can you say or write “ain’t” in IP meetings or documents? Never. The word, which usually means am not, are not, or is not, was used by educated people in early times. Today it is universally rejected for standard English. If you say it to prove you aren’t an education snob, you may be walking into quicksand. “Ain’t” is a common slang term, of course, but you have to be savvy about when you use it.
Can you say “you know?” It buys time while you’re thinking what to say next. Judges even use it in court, but it has almost no meaning. The Curmudgeon believes it’s fine to use when you have trouble finding the right words, or if you like to edit transcripts.
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April 8, 2022
A PATENT CLAIM IS VALID OR INVALID, NOT HIGH OR LOW “QUALITY”
Commenting on last week’s column on “bad patents,” reader Jeff Ingerman said, “I have a similar problem with ‘low-quality patents.’ There are no gradations of validity. A patent is either valid or invalid.” The Curmudgeon agrees.
IPO once worked with associations in Europe and Japan to define “patent quality.” After 2 years of debate, the consensus was that patent quality means validity/invalidity. A patent may have beautiful prose or drawings, but if the claims are invalid, aesthetics mean nothing. “Quality” could be a useful term when study of the validity of sample claims in a patent portfolio is used to estimate the likelihood of validity of all the claims.
Comments are invited on any IP language topic. Click on the word “Curmudgeon” at the bottom of this column for my email address.
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April 1, 2022
CURMUDGEON GOES BERSERK OVER “BAD PATENTS”
A friendly reader said columns have lacked the harsh words expected of a curmudgeon. Let’s try this. What does “bad patent” mean? It’s the most ill-defined term in patent law. To start, the more precise term would be “bad patent claims.” The statute requires each claim to be judged independently.
More important, when people refer to bad patents, but they don’t define “bad.” They usually mean invalid, but they don’t use the statutory words for the grounds of invalidity. The vague label “bad” implies something morally corrupt about patents. But “goodness” isn’t a requirement for patenting. Don’t give us your feelings about morality; give us facts and analysis. Bah, humbug!
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March 25, 2022
“PATENT APPLICATION,” NOT “NONPROVISIONAL PATENT APPLICATION”
Recently the Curmudgeon pointed out that you don’t need to say “issued patent.” Just say “patent.” Similarly, you don’t need to say “nonprovisional” patent application, at least in most cases. Once an application is no longer provisional, it’s an application. Unfortunately, the word “nonprovisional” appears 146 times in the USPTO’s Rules of Practice in Patent Cases. The incoming USPTO Director could fix this, but even the Curmudgeon wouldn’t suggest it for her first project.
Last week reader Rafael Salomao noted that the other word “patent” is very common in Brazil’s legal language. He said it’s frustrating to search for patent law cases and get non-patent cases.
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March 18, 2022
LET’S AVOID THE OTHER WORD”PATENT,” PRONOUNCED WITH A LONG A
In a patent opinion last week the Federal Circuit used the phrase “patently erroneous” when the court could have used “clearly erroneous.” The Curmudgeon finds it mildly unnerving to see a patent law document using any form of that other word “patent,” which means “clear” and is pronounced with a long a. Do we want to write “patent error” instead of “clear error?” “Patent patent claims” instead of “clear patent claims?”
The other word “patent” is cool in the name of Professor Crouch’s excellent blog Patently-O, a play on words, but not elsewhere in patent law. Picky? That’s the Curmudgeon.
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March 11, 2022
ISSUES WITH THE TERM “ISSUED PATENT”
The Curmudgeon can’t think of an instance where you need to say “issued patent” instead of just “patent.” If a patent application has been issued by the USPTO, it’s a patent. Save a word.
The Curmudgeon also has other issues with issue. What does it mean to issue a patent? The late GERRY MOSSINGHOFF, a former head of the USPTO, didn’t like it when people said he was responsible for issuing patents. He told people to say he “granted” patents. A “grant” is a formal transfer of a legal right. The general public may know “grant” from deeds or other legal instruments. Unfortunately, the Patent Act uses both “issue” and “grant.” There’s no lobbying group for improving IP language except the Curmudgeon’s readers.
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March 4, 2022
“DIFFERENT FROM” VERSUS “DIFFERENT THAN”
Reader Cindy Huang wonders whether “different from” or “different than” is the better usage. This comes up often in IP. We are constantly comparing this and that in patents, trademarks, and copyrights. It’s not a special rule for IP, but Merriam-Webster says “different from” is the most common usage in the U.S. E.g., “This is different from that.” The Curmudgeon recommends usually going with the most widely used alternative. However, language rules have limited reach. For example, you could say, “I had a different experience than you did.” Obviously not “from.”
On avoiding unnecessary Latin phrases, reader David Black suggests simplifying “quid pro quo” to “bargain.” Good suggestion. Comments are invited on any IP language topic. Click on the word “Curmudgeon” at the bottom of this column for my email address.
Your Friend,
The Curmudgeon
February 25, 2022
ARE WE RUNNING OUT OF SUPERLATIVES IN IP LANGUAGE?
Have you noticed that when a moderator introduces panelists during an IP webinar, the panel is described as “incredible,” “amazing,” and “fantastic” and every topic is “exciting.” That’s before we’ve heard the panel. Some days all patented inventions are “breakthroughs” or “revolutionary.” Can we go higher than “insanely awesome?”
We’re plagued with understatement too. Minus 10 degrees is “a little” cold. Litigation is “a little” slow. The constant use of the adjective “little,” except to indicate size, makes the rest of your message suspect. Is this just kindness during the pandemic? Or do we need to start over closer to reality than in the mythical town of Lake Woebegon in central Minnesota, where all the men and women were strong and good-looking and all the children were above average?
Comments are invited on any IP language topic. Click on the word “Curmudgeon” at the bottom of this column for my email address.
Your Friend,
The Curmudgeon
February 18, 2022
WHICH-HUNTING
Reader Alex Menchaca finds difficult the overuse of “which” when “that” is appropriate. The Curmudgeon has noticed that IP attorneys, scientists, and engineers often are oblivious to the difference. It could be because, like the Curmudgeon, they spent more time in school studying STEM than English.
Normally you should use “which” only in clauses set off by a comma or commas. These are called non-restrictive clauses and are not essential to the meaning of the sentence. The lawnmower, which is broken, is in the garage. If the clause is essential to the sentence, use “that.” The lawn mower that is broken is in the garage. “Which” is used too often in IP documents. Go Which-Hunting. But if a sentence has multiple thats, you might want to break the rule sometimes and substitute a “which” not preceded by a comma.
Comments are invited on any IP language topic. Click on the word “Curmudgeon” at the bottom of this column for my email address.
Your Friend,
The Curmudgeon
February 11, 2022
USING THE WORD “INFRINGEMENT” IN PATENT LAW
Reader Jeremy Kriegel prefers “infringes the patent” to “infringes on the patent.” The Curmudgeon agrees. It’s the more common usage, it saves a word, and the Patent Act says “infringes the patent.” Is it a person or a product or process that does the infringing? The Patent Act says, “Whoever makes, uses . . . any patent invention . . . infringes the patent.” So, it’s a person, natural or juristic, who infringes. The language is a little different in Section 337 of the Tariff Act of 1930, but we won’t explore that. Just say, “Jane Doe infringes my patent (or patent claim).”
Comments are invited on any IP language topic. Click on the word “Curmudgeon” at the bottom of this column for my email address.
Your Friend,
The Curmudgeon
February 4, 2022
THE COURT’S PHRASE “APPLICANT ADMITTED PRIOR ART” NEEDED A HYPHEN
On Monday, a Federal Circuit opinion dealt with “applicant admitted prior art.” After reviewing the language play on the IP Language Instant Replay System, the Curmudgeon declares that a hyphen was needed between “applicant’ and “admitted.” If two consecutive words make sense only when understood together as an adjective modifying a noun, they should be joined with a hyphen. The hyphen avoids reader confusion, even if for only a moment. Did the applicant admit that something was prior art, or did the applicant admit prior art into something? When in doubt about clarity, always hyphenate an adjective phrase that modifies a noun.
Comments are invited on any IP language topic. Click on the word “Curmudgeon” at the top or bottom of this column for my email address.
Your Friend,
The Curmudgeon
January 28, 2022
USING “SAID” IN PATENT CLAIMS IS A NO-NO
Reader Teige Sheehan doesn’t enjoy seeing the word “said” in patent claims when “the” will do. The Curmudgeon agrees. The word “the” is as clear as “said” for letting the reader know that a term being referred to has antecedent basis. The modern trend in legal documents is to avoid the legalistic-sounding “said.” Black’s Law Dictionary calls patent claims the last bastion for “said.”
The Curmudgeon raised this point a decade ago in an earlier incarnation of this column. A recent perusal of newly granted claims reveals that little has changed in the mechanical arts. “Said” does seem to be less common now in electrical and chemical claims. Comments are invited on any IP language topic. Click on the word “Curmudgeon” at the top or bottom of this column for my email address.
Your Friend,
The Curmudgeon
January 21, 2022
HOW DO YOU PRONOUNCE AMICUS?
Do you say “uh-MEE-kuhs” or “AM-i-kuhs?” An amicus brief, of course, is a friend-of-the-court brief. Amicus is the Latin word for friend. The volume of amicus briefs has exploded in the 21st century, to the point where nonlawyers as well as lawyers usually know what amicus means, but they aren’t sure how to pronounce it.
According to word guru Bryan Garner, the first alternative is the predominant pronunciation, but the second is common enough that it’s not considered an error. The traditional phrase was amicus curiae brief, but today the more common form is just amicus brief. The plural form, amici, is usually pronounced “uh-MEE-kee.” Because it’s been fully anglicized, amicus doesn’t need to be italicized. Comments are invited on any IP language topic. Click on the word “Curmudgeon” at the top or bottom of this column for my email address.
Your Friend,
The Curmudgeon
January 14, 2022
CONTINUING THE BATTLE AGAINST UNNECESSARY LATIN
The Curmudgeon hates use of Latin words and phrases that have simple English synonyms. A Latinism that crops up often is sua sponte. The eager litigator heard sua sponte and said, “Yeah! Let’s sue. What’s a sponte?” Then there’s vel non (or not). Pretentious in Latin and unnecessary words in English.
Vacatur is a weird Latin word. It means a vacated judgment. You can keep vacatur out of your writing. The majority in a recent Federal Circuit opinion said “We vacate and remand.” A dissenting judge, however, used vacatur when she could have said “vacating the judgment.” The Curmudgeon supports teaching Latin in schools but doesn’t like it in IP writing. Comments are invited on any IP language topic. Click on the word “Curmudgeon” at the top or bottom of this column for my email address.
Your Friend,
The Curmudgeon
January 7, 2022
PROGRESS REPORT ON THE CURMUDGEON’S CAUSES
This is the 25th column in the Curmudgeon’s current run. The Curmudgeon tries to remain dispassionate when writing on IP language. But the Curmudgeon, being a Curmudgeon, has some causes that are continuing passions: E.g., (1) The PTAB should use the names of the parties in its opinions, as courts do, not “petitioner” and “patent owner”; (2) There’s no such thing as an irrebuttable presumption; (3) Everyone should call the court the Federal Circuit, not the CAFC; and (4) The usage of the word “comprising” in patent claims is out of step with ordinary English.
The good news is that readers have submitted many kind comments and have suggested several future topics. Many thanks. The bad news is that the Curmudgeon has not moved the world a bit on the causes above. The battle will continue. Happy New Year!
Your Friend,
The Curmudgeon
December 17, 2021
CONTINUING THE BATTLE AGAINST UNNECESSARY LATIN
The Curmudgeon hates use of Latin words and phrases that have simple English synonyms. A Latinism that crops up often is sua sponte. The eager litigator heard sua sponte and said, “Yeah! Let’s sue. What’s a sponte?” Then there’s vel non (or not). Pretentious in Latin and unnecessary words in English.
Vacatur is a weird Latin word. It means a vacated judgment. You can keep vacatur out of your writing. The majority in a recent Federal Circuit opinion said “We vacate and remand.” A dissenting judge, however, used vacatur when she could have said “vacating the judgment.” The Curmudgeon supports teaching Latin in schools but doesn’t like it in IP writing. Comments are invited on any IP language topic. Click on the word “Curmudgeon” at the top or bottom of this column for my email address.
Your Friend,
The Curmudgeon
December 10, 2021
A PATENT IS A RIGHT TO EXCLUDE OTHERS, NOT AN EXCLUSIVE RIGHT
Recently the Curmudgeon urged readers not to call a patent a monopoly. How about calling it an “exclusive right?” The answer is in Patent Act section 154, which defines a patent as a “right to exclude others from making, using, . . . or selling . . . .” (Emphasis added.)
Most of you know a patent is not an exclusive right. The owner may have patented an improvement of an invention patented by someone else. An improvement inventor may be unable to practice their invention without obtaining a license under the other patent, called a “blocking patent.” Also, an inventor can’t practice a patented invention if doing so would violate some law outside patent law. You know it’s not an exclusive right, but it’s easy to forget when you’re writing in a hurry.
Comments are invited on any IP language topic. Click on the word “Curmudgeon” at the top or bottom of this column for my email address.
Your Friend,
The Curmudgeon
December 3, 2021
DETAILS MATTER: SHORT FORM PATENT CITATIONS
The short form for citing the cumbersome 7 or 8 digit number of a U.S. patent is an apostrophe followed by the last three digits of the number. Here is a short form cite: ’829 patent. The concave side of the apostrophe, conspicuous in some fonts, should face left, according to the Bluebook. How do you make it face left? In Word, press CTRL and then the apostrophe key. Thank you, reader Andrea Evensen.
Readers commented on the recent column advising that the term “patent assets” usually can be shortened to “patents.” A majority believed “patent assets” is widely understood to mean patents plus patent applications. The Curmudgeon’s quip that an invalid patent may be a liability instead of an asset may have been a weak joke. But one reader thinks of patents “as options (in the financial sense) rather than assets, whose value (if any) is dependent on future events . . . .”
Comments are invited on any IP language topic. Click on the word “Curmudgeon” at the top or bottom of this column for my email address.
Your Friend,
The Curmudgeon
November 19, 2021
YOU USUALLY DON’T NEED TO SAY “PATENT ASSETS”
“Patent assets” is a term used by people buying and selling patents and doing M&A work. News releases often give the number of patent assets transferred without defining the term — U.S. patents, foreign patents, applications, etc. And, of course, the number doesn’t tell you the asset value anyway.
Sometimes inserting the word “assets” after “patent” may help make a point. A court brief argued that “devaluation of patent assets” would discourage R&D. But my accountant says, “If a patent is invalid, it’s a liability.” In most cases, just say “patents,” not “patent assets.”
Comments are invited on any IP language topic. Click on the word “Curmudgeon” at the top or bottom of this column for my email address.
Your Friend,
The Curmudgeon
November 12, 2021
LET’S NOT SAY “PATENT MONOPOLY”
The phrase “patent monopoly” seems to pop up everywhere. It’s inaccurate and provokes arguments. “Monopoly” has multiple meanings in antitrust law and as a word meaning exclusive possession or control over almost anything. It never appears in the Patent Act. A patent is a right to exclude others from practicing an invention. Just say “patent,” not “patent monopoly.” We’ll leave for another day the difference between a right to exclude and an exclusive right.
After last week’s column, reader Kevin Ecker cited a First Circuit, non-IP case involving a missing Oxford comma. The plaintiffs obtained a $5 million settlement. The New York Times lamented, “. . . there will be no ruling from the land’s highest courts on whether the Oxford comma . . . is an unnecessary nuisance or a sacred defender of clarity, as its fans and detractors endlessly debate.”
Suggestions from readers are invited on any IP language topic. Click “Curmudgeon” at the top or bottom of this column for the Curmudgeon’s email address.
Your Friend,
The Curmudgeon
November 5, 2021
ON THE OXFORD COMMA: EATS, SHOOTS, AND LEAVES
Today we take up the Oxford (or serial) comma, which comes before the “and” in a series of three or more items. Lynne Truss’s best-selling, witty book on punctuation opens with a gun-packing panda who walks into a bar. “The panda eats, shoots and leaves.” Or, with an Oxford comma, “The panda eats, shoots, and leaves.” Without that last comma, very different interpretations are possible.
The Curmudgeon sides with the majority of American style guides. In IP, legal, and technical writing, always place a comma before the “and.” It’s the only way to insure against ambiguity. Fiction writers say the Oxford comma interferes with their rhythm, but we’re not writing fiction.
Suggestions from readers are invited on any IP language topic. Click on the word “Curmudgeon” at the top or bottom of this column for the Curmudgeon’s email address.
Your Friend,
The Curmudgeon
October 29, 2021
KEEPING OUR OBVIOUSNESS LANGUAGE STRAIGHT
How many times have you heard someone who isn’t educated in patent law, maybe a journalist, say an invention “IS” obvious? The Patent Act, of course, makes the test whether the invention “WOULD HAVE BEEN” obvious – that is, whether it would have been obvious before the filing date. Another common mistake is to say the “PATENT” would have been obvious. We should say the “CLAIMED INVENTION” would have been obvious. This tracks the statute.
Follow-up on “attorney fees”: Reader Rob Isackson thinks “attorney fees” is a misnomer “because the recovery includes more than just the fees charged by the attorney/s.” He suggests “legal spend.” Rob is correct, but the patent and trademark statutes use “attorney fees” and they’re hard to change.
Suggestions from readers are invited on any IP language topic. Click on the word “Curmudgeon” at the top or bottom of this column for the Curmudgeon’s email address.
Your Friend,
The Curmudgeon
October 22, 2021
ATTORNEY FEES, ATTORNEY’S FEES, OR ATTORNEYS’ FEES?
In some lawsuits in the U.S., the opponent must pay fees charged by attorneys. The patent statute uses the term “attorney fees.” The 1952 patent act changed it from “attorney’s fees” for reasons unknown. The trademark act uses “attorney fees.” In the copyright act, it’s “attorney’s fees.” Supreme Court justices write “attorney’s fees” unless they’re quoting a statute with a different phrase. Others are all over.
The sky is not falling, but the Curmudgeon has become convinced that everyone should write and say “attorney fees.” You don’t have to ponder whether to put an apostrophe before or after the “s.” You’ll save a character. And you’ll be consistent with the patent and copyright statutes. Maybe the Supreme Court will follow us.
Suggestions from readers are invited on any IP language topic. Click on the word “Curmudgeon” at the top or bottom of this column for the Curmudgeon’s email address.
Your Friend,
The Curmudgeon
October 15, 2021
TYPE FONTS FOR LEGAL AND OTHER DOCUMENTS
Some people are passionate, even emotional, about the best fonts. Courts usually prefer “serif” fonts. Serifs are small strokes finishing off the ends of the main lines that make up the letters and numbers of a font. One well-known serif font is Times New Roman. The Supreme Court of the U.S. requires serif fonts from the Century family. U.S. Courts of Appeals are more flexible.
Science on readability of fonts is hard to find. The Seventh Circuit says, “Studies have shown that long passages of serif type are easier to read and comprehend than long passages of sans-serif type.” Putting courts aside, the modern trend is toward sans-serif fonts for short articles, blogs, and emails, but not for books or most newspapers. The Daily News uses the sans-serif font Arial.
Comments from readers are invited on any IP language topic. Click on the word “Curmudgeon” at the top or bottom of this column for the Curmudgeon’s email address.
Your Friend,
The Curmudgeon
October 8, 2021
A FEW NOTES ABOUT “PER CURIAM” COURT OPINIONS
The Curmudgeon has observed a recent and distressing epidemic of misspelling of “per curiam” as “per curium” by otherwise careful writers. Microsoft Word prods you to change the correct spelling to the incorrect. Can someone tell Bill Gates? Anyway, a per curiam opinion is an opinion handed down by a multi-judge appellate court without identifying the individual judge who wrote the opinion. It’s Latin for “by the court.” We probably should stick with the Latin words, because writing about an “opinion by the court” can be confusing.
Per curiam opinions sometimes are called unsigned opinions. At the Federal Circuit, the judges who participated are named and the Clerk signs the per curiam opinion (or order) on behalf of the court. Per curiams usually are unanimous. Per curiams also usually are short, but not always. On September 26 the Federal Circuit issued a 15-page, precedential, per curiam order granting a mandamus petition to transfer a case from the Western District of Texas, a current hot topic.
Your Friend,
The Curmudgeon
October 1, 2021
WHAT IS “PERFORMING THE FUNCTIONS AND DUTIES” AT THE USPTO?
Have you noticed that Drew Hirshfeld, leader of the USPTO since the resignation of former Director Andrei Iancu, has the title, “Performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director the USPTO?” Why not just “Acting Director?”
The “functions and duties” language comes from the complex Vacancies Act of 1998. The act governs positions that require appointment by the President with approval of the Senate. It imposes limits on who can be acting officers and for how long. When a new President takes office, acting officers can perform the functions and duties of a position for up to 300 days before the President nominates a person to fill the position permanently. It’s all right to call Mr. Hirshfeld the acting director in informal communications, but in formal correspondence he should be addressed by the “performing the functions and duties” title.
Your Friend,
The Curmudgeon
September 24, 2021
A MODEST PROPOSAL TO REVISE THE ORDINARY-READER DEFINITION OF “COMPRISING”
The most common word in patent claims is “comprising.” Attorneys and judges know that comprising means “including but not including exclusively.” It makes a claim open-ended. But wait! Dictionaries written for ordinary readers say “comprising” often means “including exclusively.” According to Black’s Law Dictionary, the ordinary-reader meaning goes back to the 17th century. Is this what Justice Scalia had in mind when he said patent attorneys don’t write in the English language?
How do we fix it? Patent law is locked in by the Federal Circuit and the USPTO. Those people, with respect, write patent law on stone tablets. Readers, please write to all dictionary editors. Ask them to revise the ordinary-reader definition of “comprising.” It’s out of step with patent law.
Your Friend,
The Curmudgeon
September 17, 2021
THE BEST WRITERS USE LATIN SPARINGLY
U.S. Tenth Circuit Judge Robert Bacharach in his 2020 book Legal Writing argues, “Latin terms generally impede communication.” He says legal briefs are intended to persuade and judicial opinions are intended to explain. “So why use Latin when a simple English word is more readily understood?” The Curmudgeon agrees we should avoid Latin terms that have an easy English alternative. Examples are ab initio (from the beginning), arguendo (for sake of argument), inter alia (among others), and vel non (or not). Some Latin terms are acceptable because they’re understood by almost all educated readers, or because they have no concise, precise English alternative. Examples include amicus curiae, de minimis, prima facie, and res ipsa loquitur.
The late Supreme Court Justice Antonin Scalia once told an IP audience, “In one field of American law, they write and speak a language that is neither Latin nor English. That field is patent law.” In coming weeks we’ll discuss patent language, and the languages of copyright and trademark law as well.
Your Friend,
The Curmudgeon
September 10, 2021
THE REGISTER OF COPYRIGHTS OR THE REGISTRAR?
The head of the U.S. Copyright Office is the “Register of Copyrights,” not the “Registrar of Copyrights.” Attorneys and authors experienced in U.S. copyright law know this. Other readers may not. Is Register a weird title? As early as the 1500s in England, some public officials were called Registers. The U.S. Congress established the Register of Copyrights in 1897, but by then, according to the Copyright Office website, the use of the title Register in government offices already was in decline globally.
Today the U.S. copyright leader is the only one with the title Register. Ninety-three heads of copyright offices are Directors and 28 are Registrars. We should use the correct U.S. title, which is Register. But perhaps when Congress has an opportunity, it should modernize the title by changing it to Registrar?
Your Friend,
The Curmudgeon
September 3, 2021
SOME PATENT CLAIM PREAMBLES MAY BE NEEDLESS WORDS
The Curmudgeon seeks to annihilate needless words wherever they can be found, even in patent claims. A claim preamble is an introductory statement that precedes the body of the claim. Whether the preamble can be a substantive limitation on the scope of the claim is a recurring issue. In an opinion on August 16 (2020-1876), Federal Circuit Judge Lourie discussed the issue. The preamble was, “A method for treating headache in an individual, comprising . . . .” The court found it limiting in that case, but in a 12-page review Lourie concluded there is no bright-line rule for determining whether a preamble is limiting.
What about preambles that are not limiting? To the Curmudgeon, they look like needless words. If a preamble is determined not to be limiting, how about deleting it in the interest of clarity and conciseness? Who should do the deleting? The patent examiner? The PTAB? A court? That’s above the Curmudgeon’s pay grade.
Your Friend,
The Curmudgeon
August 27, 2021
A BAD DREAM ABOUT CAPITALIZATION OF “COURT”
This was a dream about an oral argument before the Supreme Court of the U.S.
CHIEF JUSTICE ROBERTS: Good morning, Mr. Curmudgeon. My first question is, Why didn’t you capitalize the first letter of the word “Court” in your briefs when you referred to our Court?
CURMUDGEON: Umm . . . Well, Mr. Chief Justice, my English teacher taught me not to capitalize the first letter of any word unless it is the first word in a sentence or a proper noun. If a court isn’t named in full, “court” isn’t a proper noun.
CHIEF JUSTIC ROBERTS: Counsel, up here parties usually follow the Blue Book®. It tells you to capitalize “Court” in documents submitted to a court when you refer to the Supreme Court, or when you are in a lower court and you are referring to that court.
CURMUDGEON: Mr. Chief Justice, I apologize.
Note to readers: The Chief Justice stated the rule correctly. It shows deference to the court, and everyone follows it.
August 20, 2021
LET’S CALL THE COURT THE “FEDERAL CIRCUIT,” NOT THE “CAFC”
The legendary Howard Markey, first chief judge of the U.S. Court of Appeals for the Federal Circuit, had his work cut out for him. According to Wikipedia, “He is often credited with establishing that court’s renown and competence in intellectual property law.” A prolific public speaker, Markey asked audiences to call the new court the “Federal Circuit,” not the “CAFC.” “Federal Circuit” conveyed the message that it was a prestigious federal appellate court on the same level with the other 12 courts of appeals.
For years it was an uphill battle to get away from “CAFC.” The court got stuck with the domain name cafc.uscourts.gov, presumably to make the address jibe with addresses of the other courts of appeals (ca1.uscourts.gov for the First Circuit, etc.). And some attorneys had an affection for the acronym. A recent, informal review of newsletters, blogs, and law reviews, however, revealed that “Federal Circuit” is now predominant. Let’s keep using the name preferred by Chief Judge Markey.
Your Friend,
The Curmudgeon
August 13, 2021
USE THE CORRECT NAME FOR THE APA: THE “ADMINISTRATIVE PROCEDURE ACT”
Congress enacted the landmark APA in 1946. Section 1 read, “This Act may be cited as the ‘Administrative Procedure Act.’” Traditionally, IP attorneys were not trained in administrative law. Today, however, federal administrative law has become one of the hottest issues in IP cases at the Supreme Court and the Federal Circuit. Everyone in IP is talking about the APA.
The Curmudgeon has observed a usage problem by IP attorneys. Many of them incorrectly call the APA the “Administrative Procedures Act.” If you mistakenly called the now-famous 2011 AIA the “American Inventions Act” instead of the “America Invents Act,” it would raise eyebrows. So, let’s say “Administrative Procedure Act,” unless you happen to be in state court in Rhode Island where the legislature enacted a state “Administrative Procedures Act.”
Your Friend,
The Curmudgeon
August 6, 2021
JUSTICE THOMAS USES “CLEANED UP” QUOTATION IN COURT OPINION
You might have noticed some Federal Circuit opinions recently that contain an unfamiliar phrase, “cleaned up,” in parentheses at the end of a cite for a quotation. What’s going on? This isn’t in The Bluebook®.
It departs from the rule that you must show every non-substantive alteration you make in a quotation or in a quotation within a quotation. This new parenthetical tells the reader that a quotation omits material like ellipses, brackets, single quotation marks, and footnote reference numbers.
It got a big boost in March, when Clarence Thomas became the first U.S. Supreme Court Justice to use it. Some call it lazy, but The Curmudgeon believes it is acceptable if you take care to avoid any alteration that could mislead the reader. Justice Thomas seems to be on a roll! As the most senior justice, he has asked his questions first at the oral arguments that have been held by phone during the pandemic.
Your friend,
The Curmudgeon
July 30, 2021
WHICH IS IT? “PATENTABILITY” OR “VALIDITY”?
The patent code says novelty and non-obviousness are conditions for “patentability.” It calls for reexamination of new questions of “patentability.” It tells us a PTAB petitioner may request cancellation of claims as “unpatentable.” When referring to suits in court for patent infringement, however, the code uses the term “validity.” Which is it? “Patentability” or “validity”?
The Curmudgeon concludes the terms mean the same thing in substance, but “patentability” usually is the best usage when a patent has not yet been granted or is being reviewed in the USPTO. “Validity” is the term to use later. Sometimes the words are used interchangeably. In the recent Arthrex opinion, Chief Judge Roberts said, “The validity of a patent previously issued by the Patent and Trademark Office can be challenged before the Patent Trial and Appeal Board . . . (emphasis added).” When courts uphold patents, they often say “not invalid.” One wit claims this expression means “not invalid yet.”
July 23, 2021
Don’t Capitalize “internet” or Put a Hyphen in “email”
Let’s visit the ubiquitous words “internet and “email.” They were born in the world of technology and IP.
Not so long ago, we were capitalizing “internet” in a sentence. On May 17, 2021, Bryan Garner, editor of Black’s Law Dictionary, tweeted, “Now is the time to lowercase internet.” He adapts to what the people are doing.
Hyphens come and hyphens go. According to trademark folklore, back in the 1950’s USPTO head Robert Watson declared the office would no longer use “trade-mark” in office publications. He held a lively party to celebrate taking out the hyphen. The Curmudgeon has not heard of any wild celebrations over the demise of the hyphen in email, but hardly anyone is using a hyphen. The trend seems to be against hyphen usage except for hyphenating phrasal adjectives, a topic for another day!
Your Friend,
The Curmudgeon
July 16, 2021
THE STATUTORY PHRASE “FINAL WRITTEN DECISION” HAS WORD USAGE ISSUES
In the world of PTAB decisions and the Federal Circuit, the phrase “final written decision” is everywhere. Congress inserted it into the Patent Act when it invented IPRs and PGRs, and word mavens have been cringing ever since.
Two of the word issues may seem small: (1) “Written” is a surplus word. All USPTO business is conducted in writing; and (2) A “final” written decision isn’t final. A party can ask for a rehearing.
The third issue is revolting. The “decision” isn’t a decision. It’s an opinion. The legendary Howard Markey, first Chief Judge of the Federal Circuit, said, “The decision is ‘affirmed’ or ‘reversed.’ Everything else, which is the opinion, is the court crowing about it.” How long will it take Congress to clean up the phrase? It only took 59 years to add the missing letters in front of the paragraphs of section 112 of the 1952 Patent Act!
Your friend,
The Curmudgeon
July 9, 2021
Using The Word “Rebuttable” With “Presumption” Can Cause Headaches
A “presumption” is a rule of law that permits a court to assume a fact is true until a preponderance (or greater weight) of evidence disproves or outweighs the presumption. The Curmudgeon is fond of the presumption of sanity.
The newly-minted Trademark Modernization Act of 2020 says a trademark plaintiff seeking an injunction “shall be entitled to a rebuttable presumption of irreparable harm . . . .” (Emphasis added.) “Rebuttable” here is just a feel-good word. All presumptions are rebuttable! “Irrebuttable” or “conclusive” presumptions are mere fictions used to disguise a substantive rule of law. Without using “rebuttable,” the 2019 STRONGER Patents Act (not enacted) said “the court shall presume . . . irreparable harm.” Would the trademark presumption and the patent presumption be the same strength? Surplus words give me a headache.
Your friend,
The Curmudgeon
July 2, 2021
IT MAY BE TIME FOR THE PTAB TO START WRITING OPINIONS USING NAMES OF REAL PEOPLE
In an inter partes review proceeding in which Smith is the petitioner and Jones is the patent owner, the PTAB throughout its opinion would refer to the parties as “Petitioner” or “the Petitioner,” and “Patent Owner” or “the Patent Owner.” On appeal, however, the Federal Circuit and the Supreme Court throughout their opinions would refer to the parties as Smith and Jones.
My preference is to follow the courts. The practice of using names of real people (or companies) helps the reader remember the parties and makes it easier to follow the story. Even in cases with multiple parties on each side, it may be best to settle on one name per side and stick to it. Do real names distract the judge from focusing on the issues in the case? No. The judge already knows who the parties are and it doesn’t matter. And it would be good practice for any PTAB judges aspiring to be Federal Circuit judges!
It’s good to be back after a long hiatus. See you next week!
Your friend,
The Curmudgeon
