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April 26, 2024
LIMITING USE OF ACRONYMS IN IP DOCUMENTS (CONT.)
Several people commented on last week’s column on PHOSITA. The statement that all IP acronyms except “IPO” should be stamped out was a joke, but acronyms do make reading difficult for those who aren’t fluent in IP-ese. (Strictly speaking, IPO and CAFC are “initialisms” because the letters are pronounced individually.)
Entrenched abbreviations are virtually impossible to eradicate. Chief Judge Markey’s goal of calling the court the Federal Circuit instead of the CAFC has never been fully realized. PHOSITA is entrenched too, and unnecessary whichever way you spell it. One person doesn’t like PHOSITA because he doesn’t know whether to pronounce it “FOSS-i-ta” or “foh-SEE-ta. He doesn’t like the Federal Circuit’s new alternative, POSA, because it makes him think of POSER.
Reader DAVID BLACK said, “[It’s] always reassuring to know we aren’t talking about paid time off, power take off, or a parent-teacher organization.” We shouldn’t adopt acronyms that have already been taken. Can we get Wall Street to stop using IPO for initial public offering?
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The Curmudgeon
April 19, 2024
WHAT DOES “A” MEAN IN A PATENT CLAIM? HOW DO WE SPELL PHOSITA?
Shifting sands? Writing on his blog, IPO member KEVIN NOONAN mused that “most verities in patent law are not eternal . . . .” He was referring to the supposed rule that “a” in a patent claim means “one or more.” An April 1 opinion by the Federal Circuit in Janssen v. Teva suggested that in a claim “a psychiatric patient” might have meant only one.
While reading Jannsen, The Curmudgeon stumbled on to another possible shift. The court used the acronym “POSA,” which the court said was for “person of ordinary skill in the art.” Used it 32 times. The common spelling is “PHOSITA,” for “person having ordinary skill in the art.” The “H” is for “having,” tracking the statute.
By coincidence, this week an anonymous reader asked, “whether word limits in briefs encourage the use of acronyms (e.g., PHOSITA) that only patent lawyers understand?” The Curmudgeon wants to stamp out all acronyms and initialisms . . . except IPO.
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The Curmudgeon
April 12, 2024
READER COMMENTS AND CHURCHILL QUOTE
Last week’s patent issues were: allowing multiple-sentence claims; distinguishing between “eligibility” and “patentability”; using “indicators” instead of “indicia” for nonobviousness; and using “valid” instead of “not invalid” for claims.
Multiple-Sentence Claims – RAY DOSS said, “If we can make patents clearer and shorter, keeping appropriate protection, I am in! But I’m happy to make a bet . . . [that] when given multiple sentences, our colleagues find a way to write a novel!”
Eligibility v. Patentability – WALT LINDER uses the term “patent-eligible subject matter.” JEFF INGERMAN said that he used to use “patentable subject matter.” He likes “eligibility” better but thinks adding “subject matter” to “eligibility” doesn’t make it any clearer.
Indicators v. Indicia and Not invalid – People said good points but not keeping anyone awake at night.
Someone recalled this quote from Winston Churchill:
Short words are best and the old words when short are best of all.
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The Curmudgeon
April 5, 2024
THE CURMUDGEON PONDERS PATENT TERMINOLOGY
- Claims are limited to one sentence, giving us some of the world’s longest sentences. Would multiple-sentence claims be clearer or shorter?
- The word “eligibility” isn’t in the statute, but people use it to explain section 101. Non-experts confuse “eligibility” with “patentability.” Is it clearer to say “subject matter eligibility”?
- Courts say “objective indicia of nonobviousness,” but “indicia” is only the plural. The singular is the little-known “indicium.” Cursed Latin. How about saying INDICATORS and INDICATOR so the singular would be obvious? No pun intended.
- Courts find patents “not invalid,” but the statute tells us patents are presumed valid. If we started saying “valid” when not proven invalid, would it stop “not invalid yet” jokes?
Send me your comments on these questions and anything else on your mind. Click on “Curmudgeon” at the bottom of this column for my email address.
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The Curmudgeon
March 29, 2024
LESSONS FROM COURT OPINIONS
U.S. Judge BOB BACHARACH says a key to clarity is to give readers CONTEXT before getting into detail. Judge STOLL of the Federal Circuit did it on March 25. She opened with:
This case concerns the seven-day trip of two transcatheter heart valve systems in and out of San Francisco to attend a medical conference. Once in San Francisco, however, the . . . systems did not attend the . . . conference. They sat in a bag . . . in a hotel closet . . .
In the same case, Judge LOURIE started with CONTEXT too: “I respectfully dissent because the majority perpetuates the failure of this court . . . to recognize the meaning of the word ‘solely’ . . . .”
Referring to my column about the March 7 Federal Circuit opinion that construed the claim term “matingly engaged,” a reader suggested that the real problem was with the specification. Probably true, but awkward adverbs anywhere can be unclear.
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The Curmudgeon
March 22, 2024
FINDING CLEARER WORDS FOR PATENT CLAIMS
In a nonprecedential claim construction opinion on March 7, the Federal Circuit devoted 12 pages to the use of “matingly engaged” to describe how one member in a system to cool electronic devices was connected to another member. This was an example of how even short, non-technical words can cause trouble.
The patent owner asserted that “matingly engaged” meant “mechanically joined or fitted together to interlock.” The challenger argued it meant “joined or fitted together to make contact.” The PTAB came up with a meaning different from either of the parties. After all that, the Federal Circuit adopted its own construction: “mechanically joined or fitted together,” and remanded the case.
“Matingly” is an awkward adverb that was created by taking a known word and adding “ly.’ Strunk and White recommend against creating awkward adverbs. Their guidance: “Words that are not said orally are seldom the ones to put on paper.”
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The Curmudgeon
March 15, 2024
DON’T SAY “CLEARLY” OR OBVIOUSLY” IN IP BRIEFS
In briefs and memos, you’re trying to persuade the reader of the soundness of your position. It’s tempting to say “clearly” at the beginning of a sentence to prepare the reader for a conclusory statement, but it’s counterproductive. Adverbs such as “clearly” and “obviously” signal an attempt to compensate for a weak argument.
The late Federal Circuit Judge DANIEL FRIEDMAN wrote, “The claim that a particular statutory provision covers the case does not gain strength by stating that it ‘clearly,’ ‘plainly,’ or ‘patently’ does so.” This was also a pet peeve of BILL SCHUYLER, the first IPO president (1972 to 1981) and teacher of a pioneering law school class in which teams conducted semester-long patent trials.
Some can still recall Schuyler’s pithy lectures on winning a case. He believed understatement was the best test of a good argument and assertions should stand on their own.
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March 8, 2024
PRONOUNCING PRO HAC VICE AND AMICUS
The USPTO is proposing to change its practice for recognizing counsel to appear in a particular PTAB case “pro hac vice.” And the U.S. Supreme Court, with many blockbuster constitutional law cases this year, may see record numbers of “amicus” briefs. How do we pronounce these Latin terms?
Pro hac vice, known primarily to judges and litigators, has at least four pronunciations. According to Black’s Law Dictionary, three ways are: proh hahk VEE-chay, proh hak VI-see, and proh hak VEES. Also, according to one obscure internet site, it can be pro hahk VICE, as in vice president. The Curmudgeon hears the first way most often.
For amicus (short for amicus curiae), a term widely known among nonlawyers as well as lawyers and often not italicized, do you say “uh-MEE-kuhs” or “AM-i-kuhs”? According to Bryan Garner, the first pronunciation is predominant, but the second is common enough that it’s not considered an error. Plain English devotees may use “friend of the court” if not writing a brief.
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The Curmudgeon
March 1, 2024
FONTS, COMMAS, AND ORDER OF WORDS
Microsoft’s New Default Font is Aptos — Microsoft has rolled out to a wider audience its new default font named “Aptos.” It replaces Calibri, which has been the default for 17 years. You can still use Calibri or another font as your default. Aptos and Calibri are sans serif fonts. As far as the Curmudgeon knows, most courts and major newspapers are sticking with serif fonts such as Times New Roman.
PTAB Struggles with Missing Commas and Order of Words – Readers with stamina might be interested in an unusual PTAB decision, Netflix v. DivX (Feb. 22), a case on remand from the Federal Circuit. The PTAB judges in the majority and a rare dissenter debated the meaning of one limitation in a claim for 20 pages. They consulted some of the Curmudgeon’s favorite sources: Strunk & White and Bryan Garner. Questions included whether the claim drafters could have inserted commas and whether they observed the drafting principle of keeping related words together.
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The Curmudgeon
February 23, 2024
INSIGHTS INTO WRITING FROM THE MASTERS
Frank Bruni — In a December column in the New York Times, he opined that wrestling your thoughts into logical form and presenting them in writing can be the best test of those thoughts. He said, “WRITING IS THINKING, BUT IT’S THINKING SLOWED DOWN . . . to a point where dimensions and nuances otherwise invisible to you appear.” (Emphasis added.) Good writing, he said, “announces your seriousness, establishing you as someone capable of caring and discipline.”
Bryan Garner — In the ABA Journal last year, Garner, Editor-in-Chief of Black’s Law Dictionary, defined CLARITY as “the quality you achieve when you get your ideas across, however difficult they may be, so they reliably reappear in the reader’s mind.” Abstractness can lead to loss of clarity. Sometimes you need to add a few words. It may be better to write “three to five” than “several.” Garner believes clarity demands a knack (that can be learned) for knowing what to emphasize and what to omit.
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February 16, 2024
COMMENTS ON “THE LODESTAR” AND “EXEMPLARY”
Recently I said the name for the common method of calculating attorney fee awards, “the lodestar,” is repulsive legalese. Legendary attorney JOHN PEGRAM defends it.
He points out that the lodestar is more complex than merely hours times rate. He’s correct that the lodestar is a reasonable number of hours times a reasonable rate. According to Black’s Law Dictionary, it also may include other factors. But I still don’t see why a court had to name it in 1973 by appropriating a centuries-old, standard English word of general usage. One reader says it’s “a fancy, $10 word” and he likes “plain talking.” Let’s call it hours times rate or the Pegram method.
Last week I wrote on patent law’s use of “exemplary” instead of “example.” Reader JEFF INGERMAN responded that if you look hard enough, you can find definitions of exemplary close to example, but he thinks the ambiguity nevertheless is a reason for avoiding “exemplary” as an alternative to “example.”
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February 9, 2024
READER WANTS TO ERADICATE THE WORD “EXEMPLARY”
A reader’s pet peeve is patent law’s frequent misuse of the word “exemplary” as an alternative to “example.” The reader asserts, “[exemplary] is . . . a dangerous term for a patent prosecutor to use, but somehow it took root in our profession years ago and refuses to die.”
Patent law seems to be out of step with usage of “exemplary” everywhere else, including at the Supreme Court. Outside the patent world, something is “exemplary,” an adjective, when it’s the best it can be and worth imitating. See, e.g., OXFORD ENGLISH DICTIONARY (2016). “Example” means, well, an example. As recently as last month, the Federal Circuit referred to “several exemplary methods . . . .“ Could ALL of the methods have been the best?
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The Curmudgeon
February 2, 2024
“LODESTAR” IN ATTORNEY FEE SHIFTING OPINIONS IS REPULSIVE LEGALESE
A conspiracy could be afoot to add more words in legal writing. Attorney fees have been awarded to the prevailing party in several IP cases lately. This month the USPTO announced an award of more than $400,000 in a PTAB case.
“Lodestar” is an ordinary word with origins back to the 14th century. It means a principle that guides someone’s actions. The Supreme Court accepted the word, probably by accident, to be the name of the most common method of calculating fee awards. Under the “lodestar method,” you multiply an attorney hourly rate by the number of hours worked. The result often is called “the lodestar.”
To me it’s reminiscent of “mother lode” for veins of gold or silver ore. Judges create clutter by writing “lodestar” up to 40 times in a single opinion. We don’t need that name, or any name, for the calculation or for the sum of money. Just call it the “attorney rate multiplied by hours” method.
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January 26, 2024
PLAIN ENGLISH IN U.S. COURTS?
Some unnecessarily specialized language of U.S. court litigation may be fading away. The Curmudgeon takes no credit.
For example, “bench trial,” a term familiar only to lawyers and judges, seems less common. People say “nonjury trial” or “judge trial.” One of my pet peeves is judges calling themselves “the court.” Some judges now speak in the first person. They say “I” will decide the patent claim construction issue. Nothing wrong with that. Also, Latin words and phrases are less common.
We still have work to do. The creation of the PTAB in 2011 has resulted in a whole new vocabulary that isn’t understood even by many patent lawyers. And who knows what AI will do to plain English?
It brings to mind that the late Justice Antonin Scalia told audiences he defended the use of Latin to supplement English. “After all,” he would say, “There’s one field of law where neither English nor Latin is spoken — intellectual property law.”
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The Curmudgeon
January 19, 2024
THE READERS COMMENT
Patent Claim Construction – A reader observed that last week while I was explaining “a” or “an” in a patent claim generally means “one or more,” the Federal Circuit was construing “single” to mean “single.” (Pacific Biosciences, Jan. 9). The court relied on the meaning of the word in context and the pesky “comprising” was not in play, so the general rule on “a” and “an” was not affected.
Never Too Much Proofreading – A reader spotted a misspelling by a leading IP blogger who is known to be a careful writer. The blogger typed, “The case peaked [piqued] my interest . . . .” Too much wine over the holidays? It’s easy to type a word that’s pronounced the same and has a different meaning. Proofread. If you can’t spell, of course, you’re in trouble. Prof. Lemley said last year that his law students were brilliant on IP law, but clueless about the difference between “rein” and “reign.” These are judges’ law clerks.
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The Curmudgeon
January 12, 2024
DID YOU KNOW? IN U.S. PATENT LAW, “A” OR “AN” CAN MEAN “ONE OR MORE”
Why do outsiders think patent law is arcane?
In patent law, the terms “a” or “an” in a claim generally mean “one or more,” unless the patent owner shows a clear intent to limit the terms to “one.” That’s the established rule as articulated by the Federal Circuit in the FS.com case (2023), among others. In FS.com, the claim called for a fiber optic module comprising “a” “front opening. . . .” FS.com tried to escape infringement by arguing it used multiple front openings. The court said no dice.
“Comprising” in patent claims has a specialized meaning. Black’s Law Dictionary defines “comprising” as “embracing to the exclusion of others” in normal English. Black’s definition, however, is for “normal idiomatic writing outside the intellectual property context.” We’re abnormal. To avoid being considered arcane, should we say “including” instead of “comprising”?
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January 5, 2024
ON THE TERM “BIGLAW”
At the end of 2023, the media published lists of the biggest of almost everything. Since law firms are getting bigger, with many firms of more than 200 lawyers and a few with 2,000 or more, let’s consider the term “BigLaw.”
The Curmudgeon writes it with two capital letters and no space in the middle. That seems to be the trend. Some write “Big Law” (with a space) or “Biglaw” (with one capital letter). Those with the most rizz write “BIGLAW”; those with no rizz write “big law.” The battle over whether to require spaces between words in a name already has been won by advertising executives. If you include the word “firm” in your sentence, write “BigLaw firm,” not “BigLaw law firm,” which is redundant.
BigLaw is not for everyone, but I love BigLaw. IPO has about 50 BigLaw members. Nearly all, of course, practice in other fields in addition to IP. Do we need “SmallLaw” for smaller firms, which I also love?
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Happy New Year!
THECURMUDGEON
December 15, 2023
WORDS IP WRITERS SOMETIMES MISUSE
Here are a few words the Curmudgeon has seen misused in IP writing recently:
Myriad – One reader’s pet peeve is use of “myriad” as a noun instead of an adjective. E.g., “a myriad of ways” (noun) rather than “myriad ways” (adjective). Both forms have been around for centuries, but grammarians much prefer the adjective. It’s more concise.
Flesh Out – An author may need to “flesh out” a document with more detail. Don’t say “flush out,” which pertains to game birds and plumbing.
Oral v. Verbal – Something is “oral” if it’s said aloud. If you’re making an oral presentation, don’t call it “verbal,” which may just mean words, whether written or spoken.
Ensure v. Insure v. Assure – To “ensure” something is to make sure it happens. To “insure” is to cover with an insurance policy. To “assure” is to remove someone’s doubts. The most common misuse probably is writing “insure” when you mean “ensure.”
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The Curmudgeon
December 8, 2023
COURT DEALS WITH “DOUBLE-SPACED” KERFUFFLE
The most-read opinion in the U.S. last month, or at least the most humorous, may have been Jones v. Varsity Brands by a Tennessee district court. Above the Law, with 1.3 million readers, broke the story, and ABA Weekly Newsletter picked it up.
The court rule didn’t define “double-spaced.” Varsity, represented by four large firms, moved to compel Jones to follow the standard for double spacing used by popular word processing programs. Jones used the ancient Word Perfect, which gave it 3 extra lines per page. The parties filed MORE THAN 60 PAGES of briefing and exhibits on the issue, including an affidavit by a typography expert.
The judge said, “. . . the last thing any party needs is more words on a page,” but she denied the motion. She said about Varsity: “Reading between the slightly larger spaced lines, it appears that Defendants initially raised this issue in an attempt to extend their time to file a reply in support of their Motion for Summary Judgment.”
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The Curmudgeon
December 1, 2023
HAVE YOU WONDERED?
Why companies abandon good words in their names? Why Twitter is now a stylized X? And how the trademark suit over X is going?
Why anyone wants to abolish capital letters? Why many emails now begin with a lowercase letter? Why BP America, Inc., a stalwart IPO member, uses “bp” in its ads? I haven’t asked. But maybe “bp ip” would look good.
When to expect a new attack on apostrophes? The founder of the Apostrophe Protection Society died at age 97.
Why judges seem to refer only to themselves as “the Court” and don’t include the jury in “the Court”? Judges say “the Court” decides issues of law and the jury decides issues of fact.
Why we should care about words? If you are a reader of this column, you likely care.
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Your Friend,
The Curmudgeon
November 17, 2023
IS IT A PRODUCT OR A PERSON THAT INFRINGES A PATENT CLAIM?
Have you heard people say, “That smartphone infringes Apple’s patent claim?” The Curmudgeon sees it all the time, even in some court opinions.
The patent statute, however, states that “. . . whoever without authority makes, uses, . . . or sells any patented invention . . . infringes the patent.” (Emphasis added.) Whoever means a person — a natural person or a juristic person (e.g., a corporation). So, you must identify a person to find infringement.
Infringement, which includes indirect infringement, is difficult enough without getting confused over the definition. Let’s stick to the language of the statute, almost always a good rule in patent law.
Similarly, the Trademark Act refers to infringement “by any person.” In copyright law, an infringer has to be a copier, which means a person (at least for now).
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The Curmudgeon
November 10, 2023
CLARITY AND CONCISENESS IN IP LANGUAGE (NO. 4)
Patent Claim Clarity – Last Friday the Curmudgeon quoted RAY DOSS saying it’s impossible to draft patent claims that can avoid construction in litigation, even though “aiming for absolute clarity is laudable.”
This week’s Federal Circuit opinion in Actelion is a good example of claim language that at first glance seemed clear but required construction on multiple points. The sole issue on appeal was the meaning of “a pH of 13 or higher.” Did 13 mean 13? The court remanded. Everyone seems to agree that too much money is spent on claim construction, but no one knows what to do about it.
Concise Amicus Briefs – Congratulations to PAUL BERGHOFF, the author of IPO’s recent amicus brief in the LKQ case at the Federal Circuit. The brief came in at 3,000 words, less than half the limit of 6,500. Amicus briefs, especially, should be short. It’s the way to get courts to read them.
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The Curmudgeon
November 3, 2023
CLARITY AND CONCISENESS (CONT.)
Reader comments from last week:
- RAY DOSS thinks a patent claim that requires no construction in litigation is impossible. “The ‘other side’ will always find something to quibble about. . . . That being said, aiming for absolute clarity is laudable.”
- JOSH SIMMONS is driven crazy by “in order to.” In almost any circumstance, “to” does just fine on its own.
- GEEZER is the pen name of a reader who claims the real problem today is that, “We have the collective attention span of a gnat.” Unless you limit yourself to a few short, simple words, you won’t be read or understood.
Related:
- Know your subject. EDWARD BENNETT WILLIAMS, the most famous trial lawyer of his day, had the motto, “There is no substitute for knowing everything.” Still true after AI.
- Tips for achieving clarity and conciseness also apply to oral communications, except maybe at a bar, where repetition and disorganization are the norm.
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Your Friend,
The Curmudgeon
October 27, 2023
TIPS ON CONCISE IP WRITING
Last week I gave a few tips on clear IP writing. Clarity should trump conciseness. Adhere to that, but the best writing – IP and other — is pithy as well as clear.
- Use short words and phrases – Judge Bacharach’s Legal Writing (2020) has many examples. “About,” not “approximately.” “Under,” not “pursuant to.”
- Omit needless words and phrases – “The fact that” is an especially debilitating expression, according to Strunk and White.
- Excise redundancies – Put your draft under a microscope and you may see, with the redundancy in parentheses: (a period of) 12 months, (null and) void, (past) experience, emergency (situation), or (general) public.
- Keep documents as short as you can – Length depends on your assignment. This column is 175 words. Merits briefs at the U.S. Supreme Court can be 15,000 words, but build a reputation for coming in shorter than word limits.
No one replied to last week’s question about making patent claims so clear that you avoid claim construction in litigation. Too hard? Click on “Curmudgeon” at the bottom of this column for my email address.
Your Friend,
The Curmudgeon
October 20, 2023
TIPS ON CLEAR IP WRITING
Even writing authorities like Bacharach and Garner struggle to define clarity. Here are a few tips from the Curmudgeon on making your writing easy for readers:
- Organize the thoughts — Whether it’s a full-length book or a short Curmudgeon column, start with an outline.
- Know the readers – Don’t write just for engineers and IP lawyers. Readers may turn out to include executives or juries.
- Cut unnecessary words and details – A typical first draft of this column is 250 words, chopped to 175 before publication. But use as many words as needed for clarity, which should trump brevity.
- Make it interesting and simple – Spice up the vocabulary and punctuation a bit, but don’t use words the reader may have to look up unless the subject demands it.
Finally, a clarity puzzle for you: Billions are spent to construe and clarify virtually every litigated patent claim. Can we draft clearer claims in the beginning?
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Your Friend,
The Curmudgeon
October 13, 2023
THE MISTAKE IN PATENT NUMBER CONTRACTIONS THAT DRIVES A READER BATTY
A contraction combines words in an abbreviated form by using an apostrophe. E.g., can’t for cannot. An apostrophe looks like a comma at the top of a line. It curves to the left, which is easy to see in serif fonts used by most courts. E.g.,
❜
A “patent number contraction” is an abbreviated number for a patent that uses an apostrophe. E.g., Patent No. 6,529,123 (’123 patent). Our reader laments, “Way too many people use a single open quote (i.e., curved to the right ‘123) instead of an apostrophe (i.e., curved to the left ’123), and it drives me batty!”
How does it happen? If you strike the apostrophe key when you’re in the middle of a word, you will get an apostrophe. Annoyingly, if you strike the same key when you’re beginning a word, you get a curved-to-the-right, single open quote. For an apostrophe, hold down the control key and double tap the apostrophe key.
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Your Friend,
The Curmudgeon
October 6, 2023
TIPS ON QUOTATION MARKS IN IP WRITING
IP writing contains lots of quotations. We quote authorities; it’s the nature of the beast. These are some tips on quotation marks.
Multi-paragraph quotes – Use an opening quotation mark at the beginning of each paragraph, but use a closing mark only at the end of the last paragraph. E.g., The court said:
“The appeals are dismissed.
“Each side shall bear its own costs.”
Block Quotations – Don’t use quotation marks with indented quotes. E.g., The court said:
The appeals are dismissed.
Each side shall bear its own costs.
Inside or Outside? – Periods and commas go inside a closing quotation mark. E.g., The court said: “The appeals are dismissed,” and said, “Each side shall bear its own costs.” Colons, semicolons, and dashes go outside. Question marks and exclamation points go outside unless they’re part of the direct quote.
Too Many Quotes – You can have too many direct quotes. Sometimes you should paraphrase.
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The Curmudgeon
September 29, 2023
PROOFREADING BREAKDOWN: “A PRETTY BIG TYPO”
On Monday in a nonprecedential decision, the Federal Circuit upheld a district court’s invalidation of patent claims that contained the phrase “second part in between the first part and the second part.” Apparently the drafters meant to say a second part between a first part and a third part, but the specification as well as the claims used the erroneous language throughout, which both courts called “nonsensical.” They refused to redraft the claims. Prof. DENNIS CROUCH said it was “a pretty big typo.”
Sometimes the Curmudgeon feels proofreading is a dying art in the computer era. Proofreading has changed. Software often makes it possible to avoid the step of comparing drafts with final copy. Companies and firms have eliminated proofreading jobs. But still, it’s essential for at least one human being who understands the subject matter to read the final copy slowly and carefully. No writer or reviewer is above the need to proofread.
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The Curmudgeon
September 22, 2023
“PRIOR TO” NOT AN ACCEPTABLE ALTERNATIVE TO “BEFORE”
The Curmudgeon advocates ordinarily using the most common and shortest plain English words available. Write like educated people talk. Sometimes you can use more formal words to create a serious or official tone. In a legal brief or a will, you might want to say “residence” (formal) instead of “home” (common). Or “appears” (formal) instead of “seems” (common).
What about “prior to” instead of “before?” Is it acceptable formality? Bryan Garner considers “prior to” legalese at its worst. “Terribly overworked.” “Prior to” is everywhere in U.S. patent and trademark statutes and court opinions. Contrast the U.S. copyright statute, which uses “before” 368 times and “prior to” only 25 times. Congrats to copyright law. “Before” is the plain English choice. An old Garner source, Theodore Bernstein, once said:
. . . one should feel free to use prior to instead of before only if one is accustomed to using posterior to for after.
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September 15, 2023
RECENT ITEMS ON “INDUSTRIAL PROPERTY” AND IP RESEARCH SOURCES
“Industrial Property” – In August I said “Industrial Property” is an outdated term in IP language in the U.S. I have taken a second look and believe the term also has faded outside the U.S.
The World Intellectual Property Organization (WIPO) in Geneva doesn’t use it in current publications. Few patent or trademark offices are using it. The Paris Convention for Protection of Industrial Property remains a basic IP treaty, but people don’t often need to interpret the term in the treaty. People say “Intellectual Property,” “Patents,” “Trademarks,” or “Copyrights. They seldom say “Industrial Property” or “Industrial Property Plus Copyrights.”
Favorite Sources – My Sept. 1 column listed Google Scholar as a favorite research source. I use Google Scholar to search the texts of IP court opinions and articles on IP law. I don’t have enough patent searching experience to say whether Google should be a favorite for patent searchers.
Suggestions are invited. Click on “Curmudgeon” at the bottom of this column for my email address.
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The Curmudgeon
September 8, 2023
PTAS AND PTES: CONFUSING PATENT LAW NAMES IN THE SPOTLIGHT
The U.S. patent statute, which is notorious for inapt names, provides for patent term adjustments (PTAs) and patent term extensions (PTEs). PTAs and PTEs actually are two types of extensions. PTAs came into the spotlight last week in the Federal Circuit’s In re Cellect decision.
Hardly anyone can remember which type of extension is called an “adjustment” and which is called an “extension.” And sorry, patent challengers — “adjustments” don’t shorten the 20-year patent life. They only extend it. (There’s a “terminal disclaimer” shortening procedure, but we won’t go there.)
The Cellect opinion was complicated. It involved PTAs (75 mentions in the opinion), but also discussed PTEs (45 mentions). The Curmudgeon doesn’t know how to rename the extensions, but some patent law experts believe we haven’t heard the last of Cellect.
Comments are invited. Click on “Curmudgeon” at the bottom of this column for my email address.
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September 1, 2023
FAVORITE DICTIONARIES AND ENCYCLOPEDIAS FOR IP WRITING
Black’s Law Dictionary, Bryan Garner, Editor-in-Chief, (11th ed. 2019) 2,075 pp. – It dates from 1891. When Garner took over, he and a team of contributors did a massive rewrite and introduced plain English.
McCarthy’s Desk Encyclopedia of Intellectual Property, 3rd ed. (2004) – An authoritative classic. Nearly 800 in-depth entries. Now out of print with limited availability on Amazon.
Merriam-Webster.com – Clear, concise, and up to date. Start your dictionary lookups by googling or binging. Are these verbs? Your search term can be your word plus “definition” or “meaning.” You’ll find links to your word in most leading dictionaries.
Google Scholar, scholar.google.com – A vast, freely accessible web search engine that indexes the full texts of articles and court opinions.
Wikipedia, The Free Encyclopedia, wikipedia.org – 6.7 million articles in English created and edited by volunteers.
See also my column of March 10, 2023, for books on writing.
Do you have favorites? Click on “Curmudgeon” at the bottom of this column for my email address.
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The Curmudgeon
August 25, 2023
FOLLOWING UP ON PAST COLUMNS
Industrial Property — Referring to last week’s statement that the term “industrial property” is outdated in the U.S., reader LEO STEENBECK noted that the term defines the scope of the Paris Convention for the Protection of Industrial Property, first negotiated in 1883. I’ll explore this in another column.
Attorney Fees — Reader RORY PHEIFFER called attention to an article in the current ABA Journal on whether to use an apostrophe in “attorney fees.” He recalled that in 2021 the Curmudgeon advocated no apostrophe. Bryan Garner now recommends no apostrophe and says it’s the most common usage. “Attorney’s fees” and “attorneys’ fees” are acceptable, but don’t use “attorneys fees.”
Judgement — In the legal world, it’s “judgment.” “Judgement” is one of The Curmudgeon’s disfavored words. The ubiquitous slogan of Planet Fitness health clubs, which is a registered trademark, is “JUDGEMENT FREE ZONE.” Will this change the spelling of judgment? English is a constantly evolving language.
Comments are welcome. Click on “Curmudgeon” at the bottom of this column for my email address.
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August 18, 2023
IN U.S. IP, “INDUSTRIAL PROPERTY” IS AN OUTDATED TERM
According to multiple sources on the internet, “industrial property” means “real property that is used primarily for service center/light industrial/bulk warehouse (not heavy manufacturing) purposes.” It’s what you would think.
According to McCarthy’s Desk Encyclopedia of Intellectual Property, however, “industrial property” is a term used in many nations to refer to patents, trademarks, trade secrets, and related rights, but NOT copyrights. McCarthy says the term is considered outdated in the U.S.
The World Intellectual Property Organization (WIPO) has companion publications titled Understanding Industrial Property and Understanding Copyright and Related Rights. Why does WIPO retain the distinction between industrial property and copyrights? A WIPO official is speaking at the IPO Annual Meeting in Boston. I’ll ask him and let you know.
Reader comments and suggestions are appreciated. Click on “Curmudgeon” at the bottom of this column for my email address.
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The Curmudgeon
August 11, 2023
READERS COMMENT ON THE ANPRM ABBREVIATION
Last week I discussed ANPRM, the abbreviation for Advance Notice of Proposed Rulemaking. I called it an “acronym.”
Readers LARRY WELCH and JUSTIN SAGE pointed out that ANPRM is an “initialism.” Acronyms are abbreviations (via initials of words or parts of words) that can be pronounced as words. ANPRM does not appear to be pronounced as a word. Initialisms are abbreviations that are not pronounced as words, but rather each letter is pronounced. The Curmudgeon believes both initialisms and acronyms usually need to be avoided or at least defined.
I stated last week that the large April 21 package of PTAB rule proposals is the first ANPRM published by the USPTO since the patent rules began in 1854. Eagle-eyed reader BOB ARMITAGE, however, cited instances in 1983 and 1998 when the USPTO used an ANPRM. So the USPTO has published ANPRMs very infrequently.
Reader comments and suggestions are appreciated. Click on “Curmudgeon” at the bottom of this column for my email address.
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The Curmudgeon
August 4, 2023
DON’T FEEL BAD IF YOU’VE NEVER HEARD OF AN “ANPRM”
Last year President Biden said, “I’m so tired of acronyms.” The Curmudgeon is tired too. Granted, some acronyms are useful and don’t require definition, for instance, in the patent field “USPTO” and “PTAB.”
Experts who are following the USPTO’s April 21 rule proposals for the PTAB, however, use “ANPRM” without defining it. It means “Advance Notice of Proposed Rulemaking.” Many federal agencies publish ANPRMs, but this appears to be the USPTO’s first ANPRM since patent rules began in 1854. Yes, 1854.
Under the APA, ordinarily the USPTO adopts or doesn’t adopt rule changes after publishing a Notice of Proposed Rulemaking (NPRM), without first going through an ANPRM. These acronyms may be necessary, but define them. And get the lingo right. It’s “advance,” not “advanced.” The APA is the Administrative Procedure Act, without an “s” on “Procedure.” Since rulemaking is one word, it’s a mystery why the acronyms end with “RM” instead of “R.”
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July 21, 2023
“JUDICIAL EXCEPTIONS” TO A STATUTE? WAIT A MINUTE!
This column advocates precise language. The term “judicial exceptions” is used to explain patent eligibility issues under section 101. “Judicial exceptions,” not in the statutory text, include laws of nature, natural phenomena, and abstract ideas.
Wait a minute! The U.S. Constitution establishes three separate but equal branches of government: the legislative branch to make laws, the judicial branch to interpret laws, and the executive branch to enforce laws. How can a court make an “exception” to a law enacted by Congress?
Some say the answer is that we borrowed parts of our patent regime from England. When the Patent Act of 1793 was enacted with wording essentially the same as section 101, Congress meant to include exceptions already made by the English courts.
The Curmudgeon expresses no opinion on that answer but sees awkwardness in the term “judicial exceptions.” Can we just say “judicial interpretations?” Click on “Curmudgeon” at the bottom of this column for my email address.
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July 14, 2023
MORE ON THE LANGUAGE OF PATENT ACT SECTION 101
Last week the Curmudgeon pondered whether the phrase “or any useful improvement thereof” in section 101, which follows the listing of the well-known categories of eligibility, is redundant. The few people who commented believed it’s redundant but harmless.
One person suggested the drafters two hundred years ago might have been trying to cover “improved” as well as “new” inventions, and the courts didn’t see a need for the extra language. If Congress deleted “improvement thereof” now, it could raise a new issue. The Curmudgeon agrees; sometimes we have to tolerate redundancy.
Another archaic but harmless term is in section 100’s definition of “process.” Process is defined as “process, art, or method.” In 1790, “art” was a word for method, but no one uses “art” today.
This is the 100th weekly column in the run that started in 2021. Many thanks to the readers for their insightful suggestions and comments. Click on “Curmudgeon” at the bottom of this column for my email address.
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The Curmudgeon
July 7, 2023
“OR IMPROVEMENT THEREOF”: A CATEGORY OF ELIGIBILITY OR A REDUNDANCY?
Merriam-Webster says, “Avoiding redundancy is one of the prime rules of good writing.” With a new patent eligibility bill in Congress, it might be timely to look for redundancies in the eligibility section of existing law, which, remarkably, is numbered 101. If you took a basic course called Patent Law 101, you probably covered section 101 in your first class.
Every patent person knows 101 has FOUR categories of eligibility: “any useful process, machine, manufacture, or composition of matter.” But wait! Section 101 adds, “or any useful improvement thereof.” A FIFTH category?
It looks like a redundancy. Isn’t every invention an improvement on or alternative to prior art? The wheel was an improvement over sleds. Have editors been afraid to delete “improvement” for fear of losing something ever since 1790? Does someone want to tell Congress? WHAT DO THE READERS THINK?
BTW, The Curmudgeon expresses no opinion on whether the four existing categories need clarification. Click on “Curmudgeon” at the bottom of this column for my email address.
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The Curmudgeon
June 30, 2023
FAVORED AND DISFAVORED BY THE CURMUDGEON (FROM PAST COLUMNS)
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June 23, 2023
FOR THE SIMPLEST PUNCTUATION MARK, THE PERIOD, RULES CAN CHANGE
Following language rules is like playing cards. “You’ve got to know when to HOLD ‘em; You’ve got to know when to FOLD ‘em; Know when to walk away; And know when to run.” The Gambler, 1978.
One Space: For centuries people inserted TWO SPACES after the period at the end of a sentence. In the 21st century, for no good reason, people started inserting ONE SPACE. But that’s the usage, so FOLD on the old rule.
Abbreviations: The main use for periods besides ending sentences has been in abbreviations. E.g., U.S. This use of the period is on the decline, except in legal citations. Now we often write US. FOLD on the old rule.
No Periods: The Curmudgeon hears that some Gen Z workers don’t want to place a period at the end of a sentence. Should we follow their lead? Probably not: this year Harvard’s dean of undergraduate education told The New Yorker that “my students were . . . having trouble identifying the subject and the verb.” HOLD the old rule.
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June 16, 2023
HOW TO WRITE AND TALK LIKE AN ATTORNEY
“Mine-Run” – You must use this word. As an adjective, it means “ordinary” or “unexceptional.” The U.S. Supreme Court and its bar like to identify “mine-run” cases. In the mining industry the term referred to unsorted or ungraded coal. Prof. JASON RANTANEN discovered that the Supreme Court latched on to the term relatively recently. It appeared in 5 opinions in two hundred years before 2000. According to the Curmudgeon’s updated count, it has been in 86 opinions since 2000, including 5 during the past year.
“Prior to” – If you can find a way to use “prior to” instead of “before,” use “prior to.” Ignore Bryan Garner, who calls ‘prior to’ “a terribly overworked lawyerism.”
“The Totality of the Circumstances” – Use this. Don’t just say “all of the circumstances,” which means the same thing.
Confession: The Curmudgeon, who is an attorney, has used these words. Click on “Curmudgeon” at the bottom of this column for my email address.
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The Curmudgeon
June 9, 2023
MISUSED AND UNKNOWN WORDS AT THE U.S. SUPREME COURT
MISUSED?
A reader decried the Supreme Court’s six uses of “MONOPOLY” or “MONOPOLIZE” recently in Amgen v. Sanofi. Six times probably isn’t a record for the Supreme Court in a patent case. McCarthy’s Desk Encyclopedia of IP says “monopoly” is often “pejorative advocacy” in IP.
The Curmudgeon doesn’t know whether Amgen was decided correctly, but “monopoly” is an imprecise, ambiguous, and often misleading word. The Constitution authorizes an “exclusive right” for inventors and authors. Can’t we just say “exclusive right?”
UNKNOWN
Counsel, “Your Honors, the CAFC erred in its decision in this case.”
Chief Justice, “We don’t know the meaning of CAFC. Up here, we review only Circuit Courts of Appeals. Your case is dismissed.”
(This didn’t really happen, but the Curmudgeon can hope.)
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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.”
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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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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.
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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.”
Comments are invited. Click on “Curmudgeon” at the bottom of this column for my email address.
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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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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.
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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.
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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.
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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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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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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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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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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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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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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.
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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.
Comments are welcome. Click on “Curmudgeon” at the bottom of this column for my email address.
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!
Comments are always welcome. Click on “Curmudgeon” at the bottom of this column for my email address.
Your Friend,
The Curmudgeon
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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Your Friend,
The Curmudgeon
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.
Comments are always welcome. Click on “Curmudgeon” at the bottom of this column for my email address.
Your Friend,
The Curmudgeon
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.
Comments are always welcome. Click on “Curmudgeon” at the bottom of this column for my email address.
Your Friend,
The Curmudgeon
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.
Suggestions for topics are always welcome. Click on “Curmudgeon” at the bottom of this column for my email address.
Your Friend,
The Curmudgeon
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.
Suggestions for topics are always welcome. Click on “Curmudgeon” at the bottom of this column for my email address.
Your Friend,
The Curmudgeon
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.
Suggestions for topics are always welcome. Click on “Curmudgeon” at the bottom of this column for my email address.
Your Friend,
The Curmudgeon
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.
Comments are always appreciated. Click on “Curmudgeon” at the bottom of this column for my email address.
Your Friend,
The Curmudgeon
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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Your Friend,
The Curmudgeon
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.
Comments are always appreciated. Click on “Curmudgeon” at the bottom of this column for my email address.
Your Friend,
The Curmudgeon
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.
Comments are always appreciated. Click on “Curmudgeon” at the bottom of this column for my email address.
Your Friend,
The Curmudgeon
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.”
Comments are always appreciated. Click on “Curmudgeon” at the bottom of this column for my email address.
Your Friend,
The Curmudgeon
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!
Readers’ comments are always appreciated. Click on “Curmudgeon” at the bottom of this column for my email address.
Your Friend,
The Curmudgeon
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.
Readers’ suggestions for topics are always appreciated. Click on “Curmudgeon” at the bottom of this column for my email address.
Your Friend,
The Curmudgeon
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.
Your Friend,
The Curmudgeon
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.
Your Friend,
The Curmudgeon
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!
Comments are invited on any IP language topic. Click on “Curmudgeon” at the bottom of this column for my email address.
Your Friend,
The Curmudgeon
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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The Curmudgeon
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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The Curmudgeon
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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The Curmudgeon
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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The Curmudgeon
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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The Curmudgeon
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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The Curmudgeon
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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The Curmudgeon
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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The Curmudgeon
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.
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The Curmudgeon
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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The Curmudgeon
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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The Curmudgeon
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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The Curmudgeon
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.
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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?
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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.
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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).”
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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.
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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.
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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.
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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.
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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!
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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.
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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.
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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 . . . .”
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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.
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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.
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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.
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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.
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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.
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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.
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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
