Sunday, December 13, 2009

Long patent specifications

Dennis Crouch wrote a recent post at PatentlyO entitled "The Requirement that the Written Description be Concise." His point was that the statute itself says "concise" but neither the courts nor the BPAI have paid much attention to this requirement.

The comment thread for this post had an interesting discussion among practitioners about why patent application are wordy. (Check it out here. And an older thread on the same topic here.) Several points of view are presented, but general consensus is that a big driver of fat specifications is claim construction – and the uncertainty surrounding it.

One commenter mentioned an Apple publication (20080122796) which, according to PAIR, includes: a 193 page spec; 302 pages of drawings; and 44 claims, 9 of which are independent. I wonder if the drafter got a big budget for this application, or whether it was subject to standard pricing, or even a flat-fee arrangement.  

This Apple application hasn't yet started examination, but a continuation has already issued (7,479,949). That seems strange until you hear that the continuation went through Accelerated Examination. The Applicants filed a 132-page Examination Support document. No Office Actions were issued. An in-person Examiner Interview was conducted, a Terminal Disclaimer was filed (over the not-yet-examined parent), and the patent issued.  

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