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Getting Started Guide
To use the Telaric patent software tools, you'll need to open the Word template file that you saved during installation. To do this, follow these instructions.
- Open a new blank document within Word
- On the File menu, click New
- Word will present a window containing a list of available templates to create a new document (Note: this list is presented differently in the various versions of Word). Open Telaric Examiner (double-click on the icon or select the template and click OK). A new blank document with the Telaric software toolbar will be created.
- Follow the directions below to use the software.
The Button Bar
The Telaric patent examiner tool adds six new buttons to a new Word button bar.
Scan Claim Format - constructs a "dependency branch" for every independent claim in the patent and all dependent claims which descend from them.
Scan Claim Text - constructs a glossary at the end of the patent, containing snippets of text surrounding and including search terms you specify. This allows you to quickly determine if you are defining terms properly and consistently.
Scan Item Number - constructs a table at the end of the document showing all occurrences of item numbers. You may select whether you want the table to show either one or two words before the item number. This helps you judge the consistency of use for each item in the patent.
Locate Item Number - rapidly locates all occurrences of a particular item number, highlighting it throughout the document.
Note: Although Windows is capable of juggling many tasks simultaneously, Word is not. While the tools are busy examining the patent text, you should not attempt to open other documents. If you have selected Word as the composing tool for Outlook, you should refrain from composing e-mail messages while the patent examiner is running. Even if doing so does not interrupt or alter operation of the patent examiner, it will certainly slow it down.
During lengthy operations, the tools often display a small status or control window to inform you of progress. While these windows are active, the keyboard is often locked to prevent you from accidentally interfering with ongoing operations. You may regain control of the keyboard by returning focus to the document window with a mouse click anywhere in the document. This will be discussed in more detail in "Scan Claim Text".
In well-written patents, there is a clear progression from the broader scope of independent claims to increasing focus in later, dependent claims. Regardless of the content of individual claims, you can glean useful information from analyzing the structure of the dependencies. If you imagine a patent as a tree of claims, each independent claim is a branch off the trunk. Independent claims may then sprout dependent claims, which themselves may sprout more dependent claims. The "Scan Claim Format" tool depicts each branch from the trunk of the patent as an indented list of claim numbers. This "Indented Claim Analysis" is appended to the end of the patent text.
If you are analyzing patents retrieved by patent retriever, you need not worry about the formatting of the patent text, however if you are authoring a patent yourself, or have obtained the patent text from another source and pasted it into the document, you must make sure that the claim section of the patent is clearly marked, so that Examiner can find the claims. Examiner expects the claim section to begin with the word "Claims" on a line by itself, and end with the word "Description" or "Abstract" on a line by itself.
There are some general rules about claim formatting that apply to most well constructed patents (there are exceptions of course). "Scan Claim Format" catches or makes apparent instances where these rules are bent or broken:
- Patents with few claims may offer protection too thin to be of much use. The claim format scanner places an alert in the indented claim analysis if it finds fewer than 21 claims in the patent.
- Avoid the use of "fuzzy" words such as "means", "or", "whereby", "substantially", "approximately" etc. The patent examiner has a built in list of "fuzzy" words it will flag in the claim text. That list shows up at the end of the indented claim analysis, and throughout the analysis the occurrence of those terms is marked in it's corresponding place in the dependency branch.
The use of "fuzzy" terms in claims elicits some argument in the patent community. There are those who claim that using such terms gives you some opportunity to cover a little "extra ground" in your claims, but our experience has been that that ground is often covered by earlier patents. Snagging your claims on those patents will not help you in court and we advise against wording claims to attempt to cover undiscovered territory.
"Fuzzy" terms are flagged in the Indented Claim Analysis in the position their enclosing claim occurs in the claim branch.
- Claims should not be too long. Excessive claim text often narrows and weakens a claim. There is no accepted norm for the length of a claim, so the tool allows you to set six threshold word counts above which the claim scanner will generate advisories or alerts in the indented claim analysis. The thresholds apply in two levels (advisory and alert) to the total length of the claim, the preamble and the body. You may adjust the thresholds to suit your particular preferences.
The default values are to advise if the total claim length exceeds 120 words and alert if it exceeds 150. For claim preambles the advisory occurs when length exceeds 70 words and the alert above 80. The same thresholds apply for claim body text.
Note: We use the terms preamble and body as follows. Claim preambles extend from the first word of the claim up to the colon (:). This is usually the introductory portion of the claim, often where the dependency on prior claims is stated. The body of the claim sometimes consists of one or more subclaims, separated by punctuation, the last subclaim often introduced by the connective "and". Short claims may consist entirely of preamble. These conventions, though not codified by the USPTO, are in common use and the "Scan Claim Text" tool supports them. The tool will spot excessively long claims, preambles and bodies as well as the missing connective prior to the last subclaim.
- It is important to clarity that indepenent claims descend in proximity to their parent claims. If dependent claims are introduced long after the claims they depend upon, the train of thought can become tenuous. In the Indented Caim Analysis, this error shows as branches that have large gaps in the numbering sequence.
- It's also important that dependent claims not depend on claims not yet introduced in the patent. This particular problem is flagged automatically by the claim format scanner.
Here's an example of a couple claim format problems that have been detected by the Examiner:
Note: Although these rules seem obvious, and you might never break them in the writing of a patent, USPTO office actions often result in the rearrangement of claims by the examiner. Such rearrangements often produce claims that run afoul of the common sense rules enforced by the claim format scanner. We've found this tool invaluable in keeping track of the alterations made to our patent applications by the USPTO.
Changing Scan Claim Format ParametersThe patent examiner gives you control over the claim word count thresholds used to generate advisory and alert messages in the indented claim analysis. To edit these thresholds, open a blank document and click on "Scan Claim Format". The following window will appear, asking you for the answer to an initially trivial question. This is a password window that, when given a suitable challenge question, allows you to set the analysis criteria on your copy of the software and then allow others to perform the actual work.
Once past that window, you will be presented with the Word Count Limit window, which allows you to change the "Advisory" and "Alert" limits for the total length of a claim, its preamble and its body. Counts above the limits will generate advisory or alert messages in the indented claim analysis. This window also provides a button to open the challenge question window, where you may replace the default "1+1" challenge with something easy for you, and impossible for others, to answer.
Background and rationale
The proper definition and consistent use of terms is crucial to the defensibility of any patent (it helps the granting process too). The definition of terms can be localized or distributed throughout the patent. Left to memory alone, it can be difficult to understand the exact definition of a term which is defined in bits and pieces, or to remember to include all the bits of a distributed description in a patent under construction. The "Scan Claim Text" tool allows you to search patent claims for terms whose interpretation is important and, if you are writing the patent, help you make sure that those terms are defined and used properly and consistently throughout.
If you are analyzing an existing patent for relevancy and quality, this tool helps you assess the patent and distill out the important terminology. We've used this tool to clarify our understanding of patents and to spot weaknesses or gaps in definitions. In patents we write, this tool is invaluable in keeping our definition and use of terms clear and consistent. This is the most complex and interactive tool in the examiner, as it requires you to think carefully about what terms are important and the best way to find them.
If you are writing a patent or quality checking outsourced patent work, the benefit is that you strengthen your claims and possibly reduce the number of office actions caused by incomplete or inconsistent definition of terms. If you are analyzing patents for prior art or in preparation for a defense, this tool helps you spot weaknesses or gaps.
What it does...
The Scan Claim Text tool accepts search terms or phrases you select (or enter) in the claim area of the patent and finds them throughout the patent text. As instances of each term are found, examine the text immediately surrounding the term to determine if it provides definition. If it does, select the text and append it to a glossary for that term. At the end of the scan, all instances of the terms you searched for are highlighted in yellow to remind you that they've been searched (handy if you return to a patent after a long absence and wonder what you thought was important about it in the first place).
If you detect inconsistencies in patents you author, make changes as necessary. If you find no suitable definitive text for a term in the patent, you may enter citation information yourself by copying text from another patent or source known to those practiced in the art. Patent continuations often depend on term definitions from the original patent, and it's helpful to append those definitions in a glossary at the end of a continuation during construction. At the end of scanning, you have a glossary of terms at the end of the patent that can help you fix problems in patents you are writing or spot them in patents you are analyzing.
How to use it...
First you must show the tool what terms or phrases (terms) you are interested in. Find an occurrence of the term anywhere in the claim area and underline it (put the text cursor anywhere in the term and type "Control-u"). Find any other terms you want to check and underline them as well, the Scan Claim Text tool can batch process any number of search terms or phrases. If the term you are searching for is a verb or adverb, you may need to underline only the root of the word so you catch other tenses or forms (e.g., partially underline quickly to find quick or quickly, or verify to find verify, verifying, verification etc.) If the root of the word cannot be obtained by partially selecting the term, you may type in the root nearby and underline it instead.
The term you underline will be placed on the first line of the glossary entry, followed by a snippet of text from around your underlined selection. We suggest you make your selection at the instance of the term that creates the most uncertainty or needs the most definition, often the first occurrence of the term in the claims section. After you have identified all of the terms and/or phrases you wish to build glossary entries for, click the "Scan Claim Text" tool. The following "Search Control" window will appear...
The Search Control window has several buttons:
- Next - jumps the search ahead to the next instance of the search term/phrase. (The tool searches the entire patent).
- Previous - backs up to the previous instance of the search term/phrase
- Accept - if the current instance of the term sits within a region of text that defines it, you may drag the text cursor through the text that comprises the definition and click "Accept" to append the selection to the glossary entry for the term.
- Enter a Citation - if you cannot find text in the patent that suitably describes the term, or if you wish to add supplementary definition, click this button. A window appears with a text box into which you may add a citation that will be appended to the terms glossary entry.
- Search Next Phrase - if you underlined more than one term or phrase before starting the scan, this button terminates the search for the current term and starts the search for the next term it finds underlined in the claim section.
- Stop - when you are finished looking for definitions, click this button to stop the scan. No glossary entry will be made for the term you were currently scanning, so don't click "Stop" unless you are abandoning the current term, instead continue using "Next" until you run to the end of the scan.
Here is an example glossary for a scan of two terms from the claim section...
- The peach areas mark the terms you selected from the claim section for scanning.
- The gray areas show a snippet of text around your text selection to show it in context.
- The white areas show the definition phrase or phrases you selected from the patent text. The pink areas alert you to terms for which no defining text was selected from the patent or entered as a citation.
- Pink areas mark empty definitions, where you did not "Accept" any selected text from the patent to define the term. If you are crafting a patent this is a reminder to construct a definition for the term or verify that its definition is known to those practiced in the art. If you are analyzing an existing patent this is a reminder that the patent may have a problem that you should have fixed (if you outsourced its creation) or might exploit (if you are infringing or avoiding it). Pink areas also mark citations, which are definitions obtained from external sources and typed into the citation window.
Note: Once you have scanned the patent for a claim term, it is highlighted to remind you that it's been scanned. If for some reason you wish to rescan that term, you must first remove its highlighting and then underline it. You should delete the glossary entry for a term from the document before rescanning it. You may scan for additional terms at any time. Each subsequent scan will produce another glossary at the end of the patent. Like all other examiner output, the glossaries may be edited or deleted like any other text in the document.
This tool scans the patent text for item and figure numbers and produces two summary tables that list all figure and item references in numerical order. A quick review of the Figure Number Analysis table will reveal missing figure references or gaps in the numbering sequence. Figures referenced only once in the patent are highlighted in red. Often, figure and item numbers are found at least twice in a patent, once when introduced and again later when referenced. Although single references are not necessarily errors, the tool highlights them as cautionary.
By convention, patent figures are labeled as Fig. N, but there is no convention for the labeling of item numbers. A motor may be labeled as item 1, motor 1, electric motor 1 etc. To guarantee the consistent use of item references, the Scan Item Number tool shows either one or two words prior to the item number itself, so you can quickly and easily see if items are referred to consistently throughout the patent. When you click the "Scan Item Number" tool, the following window appears. If you wish to see only one word in front of the item number (eg. motor 1) click "No". If you want to see two words in front (eg. electric motor 1) click "Yes".
Depending on the length of the patent, the scan for figure and item references may take quite some time. You will see the construction of the tables as it happens. Here is an example of the figure and item tables...
Notice the cautionary entries in both tables showing "Count = 1". The item table shows that item 22 has been described as
- transceiver device 22
- communication device 22
- infrared transceiver 22
Inconsistencies in the description of item 22 would be readily apparent. The gaps in the item number sequence are either the result of missing or erroneous references or true gaps in the item numbering.
Once the Figure and Item number tables have been built, you may use them as launching pads for searches into the patent text. To find occurences of figure references in the patent, position the text cursor anywhere in a figure reference description(the rightmost column of the figure table). Then click the "Locate Item Number" tool. Word will jump to the first occurrence of that reference in the patent. If there are more references you may navigate through them using the "Next" "Prev" and "Done' buttons in the "Item Number Search Control" window...
Searching for item references is similar, but because the "Scan Item Number" tool built the item reference table using either one or two descriptive words, you have a choice in the way you search for item references. Using the previous table as an example, to search for all occurrences of "device 22", place the text cursor anywhere within the text "device 22" and then click the "Locate Item Number" tool. To find all occurrences of "communication device 22", place the text cursor anywhere in the word "communication" and click the tool.
As long as the 'Item Number Search Control" window is active, only the space bar, tab and enter/return keys will function. The space and enter keys operate as if you had clicked on the current highlighted button in the control window. The tab key switches between the three buttons in the control window. This allows you to navigate to the next or previous item using only the keyboard, saving some wear and tear on your mouse hand. If you wish to make an alteration to the item description in the patent, click the mouse in the patent text and make the change. To resume searching, click one of the buttons in the Item Number Search Control Window.
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