Background

Anyone who has drafted or read a patent knows that creating this type legal of document is not easy. A patent must document the inventor’s discovery through text, figures, and tables and must summarize, in the claims, the specific parts of the invention for which protection is sought. However, even a slight typographical oversight, a mistake in drafting, an inappropriate choice of word of phrase, or an undefined word or expression can weaken a patent to the point of being unenforceable. Once the patent is issued, these errors are almost impossible to correct.

Unfortunately, patent errors are usually only found when a patent is the subject of a licensing negotiation, an infringement claim or an infringement lawsuit – since this is when multiple lawyers (often the best in the country) are reviewing every claim, word by word, in an attempt to find weaknesses.

In a perfect world, patents would receive the same review prior to submission as they get during a licensing negotiation or patent infringement case. However, it’s hard to justify this level of review and the associated additional expense (potentially thousands of dollars) when so few patents are licensed or litigated. In addition, exhaustive pre-submission review is hindered by the additional workload faced by patent attorneys and agents in recent years – with many more patents being managed by a constant number of patent professionals.

The Telaric patent examiner software was developed to automate many aspects of reviewing a patent for errors or weaknesses, with a special emphasis on the claims. It allows a patent, in draft form, to be examined in a few extra minutes for problems that might cripple the patent later. The software can also can be used by patent licensing and litigation attorneys to quickly and easily understand the weaknesses in issued patents that are the subject of a licensing negotiation or patent infringement case. Needless to say, it is far better to identify a patent’s weaknesses and problems prior to submission than, later, when the patent is being reviewed for enforceability.

Today, no one would finalize an ordinary word processing document without scanning it with a spelling and grammar checker. A manual review might still be performed, but almost everyone takes advantage of technology to obtain a second opinion and identify errors that might otherwise be missed.

Just like a spelling and grammar checker, the Telaric patent examiner uses word-processing technology to identify errors in patents – but with checks that are much more sophisticated due to the complex nature of patents and the financial impact of a mistake. As a result, the software:

• Identifies poorly constructed claims, inconsistencies and errors – all automatically.
  
• Performs specific checks that are nearly impossible to do manually.
  
• Reduces the time and effort of analyzing patents for quality.
  
• Ensures consistency of analysis.
  
• Serves as a quality assurance tool for evaluating the work of your patent team.
  
• Provides valuable insights into the construction of high-quality patents – due to the embedded expertise of some of our nation’s top intellectual property experts.

Some of the checks performed by the Telaric patent examiner could be completed by someone with enough time, patience, expertise and training, but the cost of such a detailed review would not be practical – despite its critical importance.

Patents are enormously complex and expensive to get – but can have substantial future value if drafted well. Therefore, like any product of a business, patents deserve to be put through a solid quality assurance process, before being released, to ensure they are as strong as possible and able to withstand future scrutiny – potentially saving millions of dollars of unrealized license income or future legal expenses.

And, if you’re a patent licensing or litigation attorney, you want to ensure that you’ve identified all weaknesses in patent(s) under consideration before finalizing a licensing agreement or infringement case.

In either case – before a patent is submitted or after it has been issued – the Telaric patent examiner can provide substantial value by automating many quality assurance checks.

Overview

The Telaric patent examiner is a quick and easy to use tool that allows you to examine the claims and text of a patent for problems, inconsistencies, and potential weaknesses. This software tool can examine:

• Patents in draft form - to avoid submitting a patent with errors
  
• Patents that have been revised in response to a patent examiners comments – to avoid introducing new problems
  
• Issued patents - to identify weaknesses as part of a prior art review, patent licensing process or patent infringement case.

Therefore, the Telaric patent examiner is designed to assist patent attorneys and/or inventors submit patents of the highest quality, as well as examine issued patents for underlying weaknesses.

This Rationale for Use Guide describes the capabilities of the Telaric patent examiner and explains the logic behind the tool’s ability to identify:

• Questionable claim language
  
• Claims that are not properly organized
  
• Claims having inadequate support in the text of a patent
  
• Item and figure numbering that is inconsistent or in error.

Test 1 - checking claim text for quality issues

The Telaric patent examiner quickly reads all of the claims in a patent and analyzes them.

First it determines that all the claims are in numerical order, with no skipping or repetition of claim numbers. For example, the software would flag two claims that are both numbered 19.

Next, it determines that dependent claims are associated with the most recent independent claim number – to prevent a patent from being improperly organized (such as with a patent having a large number of claims or a patent whose claims have been modified repetitively during draft or on recommendation of a USPTO patent examiner). Even slight mistakes in numbering can easily link an essential element of a dependent claim (sometimes the only thing that makes a patent enforceable) to the wrong independent or superior dependent claim. For example, the software would flag a dependent claim that was copied and pasted to depend on the wrong independent claim.

The Telaric patent examiner also searches independent claims to locate the preamble of the claim (usually the first or lead-in section or “paragraph” of a claim) and the body of the claim. The length of the preamble and the body of each independent claim is computed to determine if they exceed a set threshold number of words (this threshold can be altered by you). While there is no perfect claim length (claims need to be as long as necessary to clearly identify the protection sought), patent attorneys frequently identify increasing weakness in claim protection as a claim gets longer. In general, the more words in a claim, the greater the opportunity to identify a work-around opportunity or to find words with vague meanings that can be challenged. The claim text length-analysis feature focuses attention on the claims that seem excessively long, highlighting the potential opportunity to simplify the claim text and arrive at a shorter and preferably clearer statement of the same idea.

The tool performs a few other tests to ensure common formatting of independent claims, such as semicolon use and the use of the terminal “and” between sections in the body of a claim. This test can identify claims that are edited incorrectly.

The Telaric patent examiner also reviews each claim for words that may cast certain limitations on a claim or can have an imprecise meaning that may alter the meaning of a claim. Whenever these words are found, they are flagged for review.

For example, the word “means” was once thought to infer a broad characteristic, but has more recently been interpreted to convey a much narrower meaning to a claim. While the word “means” can still be useful, it must be used carefully. When the tool finds the word “means” once in a claim, it is flagged for review along with the claim numbering results (see above); if it is found multiple times, it is flagged for a higher level of review.

Another example is “substantially”, which can have more than one meaning depending on how it is used. For example, the phrase “substantially vertical” may be construed to mean at least a 85 degree vertical direction, but someone else may infer it to mean anything over 45 degrees. Prior art that shows the same invention using a 50 degree direction, might make the “substantially vertical” claim no longer enforceable. This of course is not a problem if the patent description defines that “substantially vertical” means over 85 degrees, but many times the word “substantially” is used to give a claim a dubious imprecision; trying to broaden a claim to the point that it can be too weak to defend. The Telaric patent examiner searches each claim to find “substantially” and several other words like it that can convey multiple meanings to readers. Each is presented to you for review as part of the claim numbering results (see above). The software can also be used to ensure that definitions provided for phrases like “substantially vertical” are properly defined in the patent description (see the next section).

Once the claim analysis is completed, the results are appended to the end of the patent document as a table - to show:

• How each claim is linked to prior claims
  
• Errors in claim numbering
  
• Errors in claim format
  
• Potential concerns about claim text length 
  
• Use of potentially harmful terms in the claims.

This table can be saved in the patent’s file for later reference after the patent has issued or when the patent is being reviewed as part of a licensing negotiation or infringement case.

Test 2 - identifying undefined words or phrases

The Telaric patent examiner can also be used to ensure that specific words in the claims appear in the description of the patent and that the use or definition of the words in the patent support the protections sought in the claims. An error where a word is used one way in a claim, but differenty in the patent description, can substantially modify the meaning of a claim. A worse situation is where a special word is used in a claim but it never appears in the patent description. This situation can make a claim subject to random interpretation at best, and unenforceable at worst.

To use this feature, you highlight specific words in the claims to identify them for analysis. The words chosen for analysis should be those that qualify the claim, are part of a specific description of a claim limitation (or might be construed as such), are not in common use in English, or do not have a single accepted definition in the technical literature of the field of the invention. After each word is identified, the Telaric patent examiner searches the patent description for each occurrence of the words in the order they appear in the claims. When a match is found, the word and text around the word are presented. At this point you may select the word and the text surrounding it for inclusion as part of a definition of the word. The program then continues to search for additional occurrences of the word to locate other better or possibly contradictory definitions. Alternatively, you may choose to skip to the next word to be searched.

When there is no text in the patent description to define a word in the claims, a special message is provided indicating this and allowing you to specify, for purposes of completeness, a definition source that has been relied on to define the word, e.g. a technical dictionary. At this point you should consider including the source used to define the word in the patent description or to copy the definition into the patent.

Note that nouns and verbs in English often vary from the singular to the plural, or present to past tense. Therefore, it may be necessary to only highlight a word’s root, e.g. the root “motor” as a subset of “motors” or "motorized", or the root “discharg” as a subset of "discharged" or  “discharging”. The Telaric patent examiner will then find any word in the patent description that at least contains the selected root. In some cases it may be necessary to add and highlight additional word fragments (e.g. for verbs with irregular past and present tenses - the word “kept” only has a small root in common with “keep”) in order to search for those fragments in the patent description. Typically, these word fragments should be added to the end of the claim section to allow for efficient removal after searching.

Once you complete this process, the results are appended to the end of the patent as a table – to show:

• The definition of each key word in the claims as it appears in the patent text
  
• External definitions from common references used to support a patent definition
  
• Words in the claims that do not appear in the patent or are not adequately defined in the patent

As with the Test 1 table, this table can be saved in the patent’s file for later reference

Test 3 - checking for errors in figure and item numbering

The correct and consistent numbering of figures and items in a patent is of vital importance to ensure that a patent, when submitted, has the highest quality. It is quite easy in the text of a patent to accidentally refer to an item in a figure using the incorrect item number. This often is the result of typing errors or due to extensive editing of a patent where “cam 105” is typed instead of “cam 150”. Just as dangerous can be the inconsistent use of text to describe an item, e.g. where “cam 150” is used and later it is referred to as “gear 150”. A gear is not normally thought to be a cam, but you have now allowed this to be the case in this patent. This error might undermine the power of your patent, especially if an infringer can identify prior art showing a gear performing what your patent claims even though there is no prior art showing a cam doing it.

While the concerns addressed by this analysis are particularly apparent for patents with lots of figures or individual figure items, these errors can also occur in any patent of substantial length where a typographical mistake can be made and remain undetected. This analysis does what no spell checker can, search for potential mistakes in the use of words (item names) and numbers (item numbers).

To prevent errors of this type and to document the items of a patent for quick future reference (e.g. as part of a continuation), the Telaric patent examiner reviews the description of a patent to search for figure and item numbers. Every time the text “Fig.” or “Figs.” is found followed by a number, it is entered into a table of figures that is appended to the end of the patent for review. The table of figure numbers quickly shows if there is a figure in a patent that only appears once (e.g. in the list of figures section), but not in the patent description. The concern here is that a figure may not be needed to explain the invention or there has been a typographical error in the patent, for example where “Fig. 5” has been incorrectly typed as “Fig. 4”.

Similarly, every time a word is found followed by a number less than 9999, the number is assumed to be an item number and the word preceding it to be an item name. The item numbers and names are presented in numerical order in a table of item numbers at the end of the patent.

Several errors can be located by a quick review of the table. Any time an item number occurs only once in a patent it is presented in red text. While there is nothing wrong with an item number being referenced only once (e.g. a step in a flow chart), it is unusual that an item is introduced once and then how it is used or how it acts upon other items later is never described. By reviewing the item numbers in red you can quickly discern if there is a potential error that must be fixed.

Another common error that can also be found in the table is using two or more item names for a single item number. While there may be no concern over using the text “cam 150” and “cams 150”, you do not expect to see “gear 150”. When this happens, the patent text should be examined (which is facilitated by the software) to find why “cam” and “gear” both refer to what must be the same item in a figure.

Having this table of item numbers is particularly useful when a patent is being added to as part of a continuation-in-part. It is not surprising that the person drafting the continuation may not recall the item numbering in a patent and may accidentally create a new item number when it is not needed, or may attempt to use an existing item number for a new purpose.

The figure and item number analysis quickly reveals mistakes, or at least areas of concern, that arise from the complexity of drafting patents. For the person drafting a patent, this analysis does what no amount of proof reading would ensure. Given that more and more patents are being filed, no one has any extra time to do manually what is automated by the Telaric Patent Examiner.

Conclusion

Great ideas should be protected by great patents, but reviewing a patent for quality is an arduous and expensive process – with critical, overlooked details often causing a major weakening in protection. The Telaric patent examiner was developed to automate many aspects of this process to help ensure that your ideas are as well protected as they can be