For faster, clearer patent applications: Defy the USPTO’s Single-Sentence Rule

[EDITED 2016-11-13]

Executive summary

The U.S. Patent and Trademark Office’s so-called Single-Sentence Rule [1] requires each claim of a patent to consist of, you guessed it, a single, run-on sentence. That rule has long resulted in claims that are virtually unreadable, as illustrated by the example below.

It turns out, though, that by skirting that rule — while still technically obeying it — a patent drafter and inventor, working together, can very quickly record the information necessary for a patent application by doing the following:

• Draft each claim as a series of short subparagraphs, each consisting of a complete sentence;
• Annotate each subparagraph with explanatory information; and
• Use all-capital letters to identify specific claim terms that are explained in the written description.

The Single-Sentence Rule often leads to unreadable claims

It might seem as though some patent attorneys go out of their way to make their single-sentence claims as hard as possible to read. As an illustration, consider the patent claim below; it’s from U.S. Patent No. 8,281,245, “System and method of preparing pres­ent­a­tions,” issued October 2, 2012, and assigned to Google:

1. A method of displaying presentation slides, the method comprising: receiving a request for information, the request being associated with a first set of identifiers; selecting, with a processor, a group of pres­ent­a­tion slides from among a plurality of presentation slides based on a comparison of the identifiers associated with the request and identifiers associated with the plurality of presentation slides, where a presentation slide is a slide containing information to be rendered to a human readable display, and wherein: the slides are selected such that each selected slide has at least one overlapping identifier, where the overlapping identifier is a member of both the first set of identifiers and the slide’s set of identifiers, and the slides are selected such that, within the group, the overlapping identifiers identified with one slide are not a proper subset of the overlapping identifiers in another slide, wherein a set of one or more overlapping identifiers associated with a first slide are a proper subset of a set of overlapping identifiers associated with a second slide if all of the overlapping identifiers of the set of one or more overlapping identifiers associated with the first slide are also included in the set of overlapping identifiers associated with the second slide and the set of one or more overlapping identifiers associated with the first slide is different from the set of overlapping identifiers associated with the second slide; and displaying the group of presentation slides.

It’s hard to imagine that the inventors found it easy to review this claim to make sure it accurately stated what they regarded as their invention.

And put yourself in the shoes of a patent examiner: How would you like to have to assess whether this claim defines an invention that’s entitled to a patent?

Or imagine that you’re on a jury in a patent-infringement case: Would it be easy for you to tell whether or not this claim was infringed?

All of these things are legally important. (See generally this posting on how patent claims work.)

A better way: Short, complete sentences in separate paragraphs

The Single-Sentence Rule isn’t entirely to blame for unreadable claims like the one quoted above. Google’s patent attorneys disregarded the very next sentence of the rule, which says that multi-element claims should be separated into multiple sub­para­graphs for easier reading.

If a patent drafter follows that guideline, she can make the claims even easier to read by writing each subparagraph as a “com­plete sentence” in its own right. Nothing in the Single-Sentence Rule precludes doing so.

To illustrate the point, we can rewrite claim 1 of the above Google patent along these lines. UPDATE 2016-11-13:  See also, e.g., this published patent application.   I don’t believe I’ve ever had a claim rejected for following this style.  (My practice has evolved away from patent-application work, so I don’t have more non-private data on that score.)

Note that each subparagraph below of the rewritten Google claim amounts to a complete sentence, except with a semicolon at the end instead of a period:

1. A method of displaying presentation slides;

Each presentation slide contains information to be rendered to a human readable display;

The method comprises the following:

(a) A processor receives a request for information;

(b) The request is associated with a first set of identifiers;

(c) The processor selects a group of presentation slides from among a plurality of presentation slides;

(d) The selection is based on a comparison of (i) the identifiers associated with the request, and (ii) identifiers associated with the plurality of presentation slides;

(e) The slides are selected such that each selected slide has at least one identifier — referred to here as an “overlapping identifier” — that is a member of both the first set of identifiers and the slide’s set of identifiers;

(f) The slides are selected such that, within the group, the overlapping identifiers identified with one slide are not a “proper subset,” as defined below, of the overlapping identifiers in another slide;

(g) A set of one or more overlapping identifiers associated with a first slide is a “proper subset” of a set of overlapping identifiers associated with a second slide if both of the following are true:

(g)(1) All of the overlapping identifiers of the set of one or more overlapping identifiers associated with the first slide are also included in the set of overlapping identifiers associated with the second slide, and

(g)(2) The set of one or more overlapping identifiers associated with the first slide is different from the set of overlapping identifiers associated with the second slide; and

(h) The processor displays the group of presentation slides.

The rewritten version above is much easier to read than the original, no? Imagine that you were an inventor, or a patent examiner, or a judge, or a juror — which version would you rather read?

An easier way to capture invention-disclosure information

When an inventor and patent attorney collaborate in drafting claims in this style, it’s easy for them to capture invention-disclosure information by simply annotating the claims as they go, using the claim paragraphs as subheadings for detailed information. This should save both time and money for the client — not to mention reducing the level of inventor frustration with sending drafts back and forth.

As an illustration,the Google inventors and patent attorney might have collaboratively drafted and annotated a set of claim paragraphs in something like the following form; the annotation text is adapted from the actual detailed description of the patent:

1. A method of displaying presentation slides;

A presentation slide may include, for example, text, images, backgrounds, and titles.

Each presentation slide contains information to be rendered to a human readable display;

The human readable display may be, for example, a computer monitor having a screen, a projector, a touch-screen, a small LCD screen, a television, or another device such as an electrical device that is operable to display information.

The method comprises the following:

(a) A processor receives a request for information;

The processor may be a part of a computer 110 that also contains memory 130 and other components typically present in general purpose computers.

The processor 120 may be any processor, such as processors from Intel Corporation or AMD. Alternatively, the processor may be a dedicated controller such as an ASIC.

The user may input information such as a company description 310, company name 320, company address 330, and proposal information 340.

Proposal information 340 may include start and end dates or goals.

The user may enter this information or the program may respond when the user begins to enter information by filling in certain fields. For example, the user may enter the company name, and the program may fill in the address 330 field automatically.

(b) The request is associated with a first set of identifiers;

These identifiers or tags may be names chosen from a structured vocabulary which is used to identify, for example, the content or uses for the slides.

[etc., etc.]

In the past few months I’ve used this format to draft several patent-application claims and descriptions in real time with inventors. Doing so allowed us to record the necessary disclosure information very quickly.

Use all-caps to point to explanations of key terms

You can also use all-capital letters to signal a word or phrase in a claim that is defined or explained in the detailed description. Here’s another illustration, again adapted from the Google patent:

1. A method of displaying PRESENTATION SLIDES;

PRESENTATION SLIDE: A presentation slide may include, for example, text, images, backgrounds, and titles.

Each presentation slide contains information to be rendered to a human readable DISPLAY;

DISPLAY: The human readable display may be, for example, a computer monitor having a screen, a projector, a touch-screen, a small LCD screen, a television, or another device such as an electrical device that is operable to display information.

The method comprises the following:

(a) A PROCESSOR receives a request for INFORMATION;

PROCESSOR: The processor may be a part of a computer 110 that also contains memory 130 and other components typically present in general purpose computers. The processor 120 may be any processor, such as processors from Intel Corporation or AMD. Alternatively, the processor may be a dedicated controller such as an ASIC.

INFORMATION: The user may input information such as a company description 310, company name 320, company address 330, and proposal information 340. Proposal information 340 may include start and end dates or goals. The user may enter this information or the program may respond when the user begins to enter information by filling in certain fields. For example, the user may enter the company name, and the program may fill in the address 330 field automatically.

(b) The request is associated with a first set of IDENTIFIERS;

IDENTIFIERS or tags may be names chosen from a structured vocabulary which is used to identify, for example, the content or uses for the slides.

[etc., etc.]

A significant advantage of this all-caps approach is that it helps remind inventors and patent attorneys to be thorough in describing possible alternatives. For example, consider the INFORMATION definition paragraph above: It’s clear that the content of this definition could be expanded if the inventors felt it appropriate.

Some patent attorneys might be concerned that an aggressive trial counsel could try to argue that an all-caps term had a different meaning than the same term in lower-case letters. That concern could be addressed with language along the following lines just before claim 1:

CLAIMS

For convenient reference, some instances of particular terms in the claims below are presented in all-capital letters as a reminder that those specific terms are explained in more detail in the Detailed Description. For the avoidance of doubt, the fact that other instances of such terms are not presented in all-capital letters should not be interpreted as indicating that those other instances are intended to have a different meaning.

What is claimed is:

1. A method ….

Save time and money: Edit your text into a written description

It should be apparent that the claims and annotations produced by the inventor(s) and patent attorney contain essentially all the content needed for a detailed description of the invention. Re-editing that content into a conventional form is quick and easy.

Another benefit of clearer claims: Lower future legal costs

I suspect that some patent attorneys prefer that their claims be hard to read, so that others will have a hard time assessing just what the claims do or don’t cover. These patent at­tor­neys might rationalize such hide-the-ball drafting by asserting that it’s zealous advocacy for the clients’ best interests [2] (It strikes me as being tanta­mount to obstruction of justice.)

When a patent claim is easy to read, however, it can desirably lead to faster decisions by various “players,” such as:

• a patent examiner determining whether the claimed invention is entitled to a patent;
• a competitor of the patent owner deciding whether it needs to explore licensing the patent — or to get out of the business;
• the patent owner itself, assessing the strengths and weaknesses of an infringement claim against a competitor, before the patent owner spends a fortune on litigation;
• a jury weighing whether the patent has been infringed.

In each of these situations, an easier-to-read patent claim could save the client significant time and money, not to mention reducing the inconvenience and aggravation of legal proceedings.

Notes

[1] The U.S Patent and Trademark Office requires that each claim in a patent must be written as a single sentence, although subparagraphing is encouraged:

While there is no set statutory form for claims, the present Office practice is to insist that each claim must be the object of a sentence starting with “I (or we) claim,” “The invention claimed is” (or the equivalent). … Each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations. Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation.

U.S. Patent & Trademark Office, Manual of Patent Examining Procedure § 608.01(m) (citations omitted). The Office’s stated rationale for the single-sentence re­quire­ment seems to boil down to, “we’ve always done it that way, ergo that’s the only proper way to do it.” See In re Fressola (Comm’r Pats. & Trademarks Feb. 19, 1992) (rejecting petition to allow multi-sentence claims), aff’d, 36 USPQ2d (BNA) 1211 (D.D.C. 1995). See generally, e.g.:

• Stephen Schott, An Appeal to the New Patent Office Director: Repeal the Single Sentence Rule, a guest post at Professor Dennis Crouch’s PatentlyO blog, Sept. 18, 2009
• Repealing the Single-Sentence Rule is Not the Way to Achieve Clarity in Patent Claims, in The IP Language Curmudgeon, Sept. 25, 2009
• James F. McKeown, Claim Drafting Strategies Revisited — Is The “Single Sentence Rule” Too Inflexible?, Intellectual Property Today, August 2003

[2] Legal-ethics rules in most states encourage and even mandate zealous advocacy in pursuit of clients’ interests, within the limits of the law. See, e.g., Comment 1 to Model Rule 1.3 of the ABA Model Rules of Professional Conduct.