Should I present a preliminary amendment?

[jgmiko]

Hello everybody and thank you for your help,

I am the inventor of a new very simple mechanical device.

I drafted the PPA myself and got a patent agent friend to review it and draft the claims.

A year later I applied for the NPPA. For this I hired a free lance patent attorney since our agent friend was unavailable at the time. We had a terrible experience with this lawyer, he was absolutely useless, he ripped me off. So I ended drafting the NPPA myself and I think I did a pretty decent job.

Now my agent friend looked at the application I presented and suggested a few "corrections". He advised me to present a preliminary amendment to address those corrections.

He also advised me to do that before 3 months passed since the NPPA so the examiner is forced to accept the preliminary amendment.

Most of the corrections he pointed out are not things that are really wrong but things that can be improved.

There are some things that are the more important though:

- He believes that one of my claims is redundant and already covered in the previous claim, I can combine these claims into one

- my last claim is a method claim that is dependent on an apparatus claim, he suggested to redraft that claim

- I presented a formula in a claim he believes is better to write it in proper English grammar

- He suggest using the term "spring" instead of "spring means"


The question is if it is worth to make a preliminary amendment or if it is better to wait for the first office action. I read in some forum that examiners don't like preliminary amendments  and also read somewhere that is always good to  leave something for the examiner to correct/object, I don't know how much truth is in that.

Thanks for your advise

[mersenne]

- He believes that one of my claims is redundant and already covered in the previous claim, I can combine these claims into one

If this is true, then you're paying claim fees for something that doesn't get you much benefit.  It doesn't hurt, but it's a waste of money.  You want to present claims that

• you think will be allowed; and
• will be useful to you in a specific situation which you should understand now

- my last claim is a method claim that is dependent on an apparatus claim, he suggested to redraft that claim

That's a relatively common non-patent-attorney error, I think.  Your friend is right: you'll probably have an easier prosecution if you rewrite it.

- I presented a formula in a claim he believes is better to write it in proper English grammar

I can see this going either way.  If you need the formula to establish novelty, then an English paraphrase might not do it.  If you have extra dependent claims free, then I'd probably move the formula to a dependent claim, and use an English description of what information the formula takes and what indication it yields in the independent claim.

- He suggest using the term "spring" instead of "spring means"

The word "means" is magic in patent-speak.  If you don't know the magic and didn't intend to invoke it, then it will merely cause you confusion and grief.

[bluerogue]

Make the preliminary amendment assuming it's supported by the spec.  You have 3 months from filing to get it entered as a matter of right.  After that, if the examiner has picked up the case, you may be out of luck. 

There is no truth to examiner's not liking a preliminary amendment.  We don't care either way, generally.  We do like them if it's to clear up stuff that was poorly written in the first place.  And please don't leave something for me to correct/reject.  If it's allowable, great. If not, here's art.  But don't make me fix bad drafting.  That is annoying.

[jgmiko]

Thank you both mersenne and bluerogue for your prompt answers!

Great to hear that there is no "damage" in filing a preliminary amendment. So that I will do.

Regarding the term "spring means", I assumed that by using "means" we cover all the possibilities of springs (like a folded metal piece for example) as opposed to the more common understanding for "spring", that being of an spiral spring. Am I wrong?

I understand how to amend the Specs (with double brackets and underscore) but I have difficulty understanding how to amend the claims. Can I just present a new set of amended claims or I have to modify them in the same way as the specs? If I combine claims 4 and 5 into one then I will have to renumber all the following claims, what is the proper way to do that?

Thank you so much for helping.

[mersenne]

Regarding the term "spring means", I assumed that by using "means" we cover all the possibilities of springs (like a folded metal piece for example) as opposed to the more common understanding for "spring", that being of an spiral spring. Am I wrong?

No, that's the purpose and effect of using "means."  It's just that if you didn't intend to invoke the magic, there'll be a disconnect between what the Examiner thinks and what you think, and you'll waste time trying to get sync'd back up.  You'll probably want your claim to say what the spring is supposed to do (e.g., "spring means for pushing the whatzit against the strike plate").

You probably also want to be sure that the spring is an important part of your invention, because you'll pay for using "means" in the complexity of your prosecution.  If the spring is really something that the closest prior art also has, then you'll probably be better off looking for a vague, non-means word that you won't have to fight over so much.

I understand how to amend the Specs (with double brackets and underscore) but I have difficulty understanding how to amend the claims. Can I just present a new set of amended claims or I have to modify them in the same way as the specs? If I combine claims 4 and 5 into one then I will have to renumber all the following claims, what is the proper way to do that?

Never re-number claims.  You make amendments using the same strikethrough and underline notation, but if you're doing major surgery so that the claim is mostly either struck out or underlined, it may be clearer to just cancel the original claim and add a new claim (which would be numbered after the end of the current claims).  You might have to amend earlier dependent claims to refer to the new, higher-numbered dependent.  Or you could cancel all the claims and add a whole new set, starting from one past the current highest number.

[bluerogue]

Regarding the term "spring means", I assumed that by using "means" we cover all the possibilities of springs (like a folded metal piece for example) as opposed to the more common understanding for "spring", that being of an spiral spring. Am I wrong?

No, that's the purpose and effect of using "means."  It's just that if you didn't intend to invoke the magic, there'll be a disconnect between what the Examiner thinks and what you think, and you'll waste time trying to get sync'd back up.  You'll probably want your claim to say what the spring is supposed to do (e.g., "spring means for pushing the whatzit against the strike plate").

Mersenne, I'm going to disagree with you.  Spring means would likely invoke 112f and limit the springs to those disclosed in the specification.  If Jgmiko wants to cover all springs, a means-plus claim is not the way to go.  As long as the spec covers his folded piece of metal and describes it as a spring, I'd say that s/he's better off with spring rather than spring means.

[jgmiko]

Regarding the term "spring means", I assumed that by using "means" we cover all the possibilities of springs (like a folded metal piece for example) as opposed to the more common understanding for "spring", that being of an spiral spring. Am I wrong?

No, that's the purpose and effect of using "means."  It's just that if you didn't intend to invoke the magic, there'll be a disconnect between what the Examiner thinks and what you think, and you'll waste time trying to get sync'd back up.  You'll probably want your claim to say what the spring is supposed to do (e.g., "spring means for pushing the whatzit against the strike plate").

Mersenne, I'm going to disagree with you.  Spring means would likely invoke 112f and limit the springs to those disclosed in the specification.  If Jgmiko wants to cover all springs, a means-plus claim is not the way to go.  As long as the spec covers his folded piece of metal and describes it as a spring, I'd say that s/he's better off with spring rather than spring means.

Ok, now I am confused.

This is what the specs says:

"Spring means 47, seen in Figs. 1 and 2, urge the body members 11 and 13 to pivot relative to each other towards the apparatus' closed resting position as shown in Figs. 1, 3 and 7.

In one embodiment, the spring means 47 is provided by a conventional torsional spring would in a helix about the hinge pin 45, whereby one of the ends of the spring bears on the lever 29 of the body member 11 and the other end bears on lever 31 of body member 13.

In yet a further embodiment, the spring means can take on other characteristics, for example being made of round wire, square wire, rectangular wire, being closed coiled, being made of ferrous metal, being made of non-ferrous metal, being made of austenitic stainless, having a configuration selected from the group consisting of helical compression, helical extension, torsion bars, helical torsion, spiral springs, flat springs, etc."

[smgsmc]

Regarding the term "spring means", I assumed that by using "means" we cover all the possibilities of springs (like a folded metal piece for example) as opposed to the more common understanding for "spring", that being of an spiral spring. Am I wrong?

No, that's the purpose and effect of using "means."  It's just that if you didn't intend to invoke the magic, there'll be a disconnect between what the Examiner thinks and what you think, and you'll waste time trying to get sync'd back up.  You'll probably want your claim to say what the spring is supposed to do (e.g., "spring means for pushing the whatzit against the strike plate").

Mersenne, I'm going to disagree with you.  Spring means would likely invoke 112f and limit the springs to those disclosed in the specification.  If Jgmiko wants to cover all springs, a means-plus claim is not the way to go.  As long as the spec covers his folded piece of metal and describes it as a spring, I'd say that s/he's better off with spring rather than spring means.

Ok, now I am confused.

This is what the specs says:

"Spring means 47, seen in Figs. 1 and 2, urge the body members 11 and 13 to pivot relative to each other towards the apparatus' closed resting position as shown in Figs. 1, 3 and 7.

In one embodiment, the spring means 47 is provided by a conventional torsional spring would in a helix about the hinge pin 45, whereby one of the ends of the spring bears on the lever 29 of the body member 11 and the other end bears on lever 31 of body member 13.

In yet a further embodiment, the spring means can take on other characteristics, for example being made of round wire, square wire, rectangular wire, being closed coiled, being made of ferrous metal, being made of non-ferrous metal, being made of austenitic stainless, having a configuration selected from the group consisting of helical compression, helical extension, torsion bars, helical torsion, spiral springs, flat springs, etc."

I agree with bluerogue.  You've created a future mess for yourself by using "spring means" in the spec instead of simply "spring".  It's too involved here to instruct you on the subtleties of claim language, but "spring means" would likely invoke "means plus function" claiming, which restricts the scope of your claim with regard to infringement (rather than broadening it as you intended).  You really want to amend the claim to read "spring" instead of "spring means".  But given the language of the spec (which explicitly uses "spring means"), it's not clear you can get away with such an amendment (probably depends on the specific Examiner).  The spec language is quite a mish-mosh, even trying to toss in an attempted Markush group for good measure, but then a wholly defective one at that with the inclusion of "etc".  You have language that is internally inconsistent.  You'll probably need to argue that the spec defines "spring means" such that it does not invoke means plus function claiming, but it'll be messy (i.e., even though you wrote "means", you really don't mean "means"; see how messy that is?).  Unfortunately, you probably can't get away with amending the spec.

[mersenne]

Spring means would likely invoke 112f and limit the springs to those disclosed in the specification.

I believe that was his goal (although he may not know all the upsides and downsides of pursuing it).  In my understanding, 112f can cover things beyond the specification, provided that the specification gives several different ways of accomplishing the "for" part of the "means for."  (If you only describe one way, then that's all you get.)

Still, it seems unlikely that "means" will buy much in this situation -- all his examples are of different materials from which a spring could be made, rather than different things that perform some sort of spring-like function.  If his examples were "a metal spring, a resilient foam cylinder, a gas-filled cylinder, or an electromagnetic arrangement exerting a force," then I think "spring means" might be worth fooling with.  As it is, not so much.

[jgmiko]

Ok, I think I am kind of understanding what you all are saying.

It is funny, in a weird way, that the paragraph:

"In yet a further embodiment, the spring means can take on other characteristics, for example being made of round wire, square wire, rectangular wire, being closed coiled, being made of ferrous metal, being made of non-ferrous metal, being made of austenitic stainless, having a configuration selected from the group consisting of helical compression, helical extension, torsion bars, helical torsion, spiral springs, flat springs, etc."

is one of the only things I used from the draft that was prepared by the patent lawyer, he did a terrible job in general and had I presented the application as he drafted it I am sure I will end up with nothing.

Can I sue a patent lawyer for malpractice? I guess that is a topic for another discussion, but he sure deserves it.

Anyhow, given the situation I find myself at the moment, what would be your advice? The spring is not really necessary for my invention to work and is only present in some of the embodiments. Should I amend everything to "spring" instead of "spring means"?

[Robbie]

Hi, Jgmiko, I don't know how impotrant the patent is for you or your company. In most patent application situation I sugguest that leave it to the professionals.  Maybe the more money you save now, the more you'll spend in future...I have a terrible experence about this

There are many pitfalls in PPA, such as failure to claim subject matter supported entirely by the provisional filing. It's a good way to have a prelimilary amendment for obvious error. Don't afraid of what examier think. It's a happy thing for them to review a smooth text.

Sometimes the "means" will invoke 112f, first of all it depends on if you want to use MPF on purpose. But you should notice a significant departure from the normal rules of patent claim construction. MPF limits the scope of these claims by reading in the particular technologies described in the patent specification and equivalents thereof.

[smgsmc]

Anyhow, given the situation I find myself at the moment, what would be your advice? The spring is not really necessary for my invention to work and is only present in some of the embodiments. Should I amend everything to "spring" instead of "spring means"?

OK, if the spring is not necessary, then is it safe to assume that your independent claim does not recite "spring means" at all, and that "spring means" appears only in dependent claims?  If so, I would leave the "spring means" in the dependent claims to maintain consistency with the spec. 


The lesson to learn from all this is that certain words when used in a claim have very specific legal consequences.  A simple example is "comprising" vs "consisting of".  In everyday language, often used interchangeably without much consequence; in a claim, strong distinction with potentially damaging consequence.  Unfortunately "means" is also such a word with special baggage attached.  But again, if the independent claim doesn't use it, not too severe an issue.

[snapshot]

Spring means would likely invoke 112f and limit the springs to those disclosed in the specification.

I believe that was his goal (although he may not know all the upsides and downsides of pursuing it).  In my understanding, 112f can cover things beyond the specification, provided that the specification gives several different ways of accomplishing the "for" part of the "means for."  (If you only describe one way, then that's all you get.)

Still, it seems unlikely that "means" will buy much in this situation -- all his examples are of different materials from which a spring could be made, rather than different things that perform some sort of spring-like function.  If his examples were "a metal spring, a resilient foam cylinder, a gas-filled cylinder, or an electromagnetic arrangement exerting a force," then I think "spring means" might be worth fooling with.  As it is, not so much.

Two points here:

1) He'd still get the equivalents of whatever is disclosed in the spec if "spring means" were interpreted under 112f.

Along those lines...

2) Why would "spring means" be interpreted under 112f?  A spring, to me, is structure, and that causes "spring means for x" to fail the means-plus-function test, same as "display means for y" would fail (in the classic PTO example).

[jgmiko]

Hi, Jgmiko, I don't know how impotrant the patent is for you or your company. In most patent application situation I sugguest that leave it to the professionals.  Maybe the more money you save now, the more you'll spend in future...I have a terrible experence about this

There are many pitfalls in PPA, such as failure to claim subject matter supported entirely by the provisional filing. It's a good way to have a prelimilary amendment for obvious error. Don't afraid of what examier think. It's a happy thing for them to review a smooth text.

Sometimes the "means" will invoke 112f, first of all it depends on if you want to use MPF on purpose. But you should notice a significant departure from the normal rules of patent claim construction. MPF limits the scope of these claims by reading in the particular technologies described in the patent specification and equivalents thereof.

Robbie, it is not a company (yet), it's just me and my brother. We tried to hire an attorney and he screwed us big time. I guess unless you spend big bucks you get mediocre attorneys with half ass efforts.

[jgmiko]

Anyhow, given the situation I find myself at the moment, what would be your advice? The spring is not really necessary for my invention to work and is only present in some of the embodiments. Should I amend everything to "spring" instead of "spring means"?

OK, if the spring is not necessary, then is it safe to assume that your independent claim does not recite "spring means" at all, and that "spring means" appears only in dependent claims?  If so, I would leave the "spring means" in the dependent claims to maintain consistency with the spec. 


The lesson to learn from all this is that certain words when used in a claim have very specific legal consequences.  A simple example is "comprising" vs "consisting of".  In everyday language, often used interchangeably without much consequence; in a claim, strong distinction with potentially damaging consequence.  Unfortunately "means" is also such a word with special baggage attached.  But again, if the independent claim doesn't use it, not too severe an issue.

You are correct, the spring means is mentioned in a dependent claim.

BUT since we are already talking about "means", the only independent claim mentions a "hinge means": "a hinge means pivotally coupling said first body member and said second body member."

In a dependent claim says: "The device from claim 1, wherein said hinge means is selected from the group consisting of one-piece polymer, one piece metal, multi piece polymer, multi piece metal, cloth, a flexible membrane and perforated lugs used in conjunction with hinge pins and spring means."

Is that the proper use of means?