In law school, they had to write far more than they ever did before. So how to do it? Simple. They would write like the stuff they had to read. In casebooks. In legal encyclopedias and annotations. In law review articles. They would write like lawyers.

So patent lawyers face two strikes against them when they put fingers to keyboard and start drafting that response to office action rejecting claims 1–13.

Strike one: they write like scientists.

Strike two: they write like lawyers.

Just what is it that makes traditional legal and scientific writing so bad? A grammatical analysis provides the answer: Legal writers fashion their writing around noun forms, the verb to be, and passive-voice constructions. They also rely too heavily on clauses, refusing to put information in leaner phrases.

This article will explore the first malady: overusing nouns (and adjectives) as a means of expressing verb-like ideas. It will draw examples directly from the practice of intellectual property (IP) law and will suggest precise steps IP lawyers can take to develop a writing style that judges—and, yes, United States Patent and Trademark Office (USPTO) examiners—will appreciate and, indeed, enjoy.

First, some grammatical basics.

English Sentences

A grammatical sentence satisfies all the rules we learned in grade school (which used to be called grammar school):

• each sentence must have a subject and a predicate that contains a conjugated verb;
• if the verb is a transitive verb, the predicate can include a noun or pronoun acting as a direct object; and
• if the verb is the verb to be, the predicate can include a noun (predicate nominative) or an adjective (predicate adjective).

In grade school, if our sentence failed to meet any of these rules, our teachers would scrawl in the margin a huge, red condemnation: FRAGMENT!!!

The Indispensable Verb

To write a complete grammatical sentence, you need only one word—a verb. Stop. Look. Listen. Three words. Three verbs. Three complete grammatical sentences. These one-word sentences satisfy the above rules because the subject (you) is implied: You stop. You look. You listen.

For some strange reason, however, legal writers and especially scientific writers have abandoned the verb, even ostracized it. They instead turn to other structures to convey verb-like ideas: derivative nouns, derivative adjectives, piles of prepositional phrases, and other gooey, sticky structures. As a result, surviving verbs end up sounding like little puffs of fluff.

Exhibiting a “Preference” for Nouns

In Modern American Usage, Wilson Follett quotes a science reporter’s 30-word sentence:

The prediction of the existence of antiparticles was made by Dirac in 1927 and its confirmation was an important reason for the construction of the Bevatron at Berkeley in 1954.¹

See the problem? Scientists favor noun forms. They seem to have forgotten verbs. They certainly don’t use verbs to convey important information. In the above passage, we find two verbs: was made and was. Not much there. Instead, all verb-like meaning resides in nouns: prediction, existence, confirmation, and construction. Hmmm: predict, exist, confirm, and construct.

Scientists aren’t the only ones in love with nouns. We often find the nouny style in legal writing too. Wade through this passage from In re Koffler:

The regulation of solicitation involves the consideration of . . . whether there are “ample alternative channels for communication of the information” . . . .²

Ouch. Is it fun trudging through those “clusters of – ion words”?

Writing experts teach that power comes from the verb, not from nouns hooked onto sentences by prepositions and flimsy verbs. Indeed, our greatest novelists knew the trick of writing with verbs. In 1938, F. Scott Fitzgerald in a letter to his daughter gave some advice on effective writing:

[A]ll fine prose is based on the verbs carrying the sentences. They make sentences move. Probably the finest technical poem in English is Keats’ “Eve of Saint Agnes.” A line like “The hare limped trembling through the frozen grass,” is so alive that you race through it, scarcely noticing it, yet it has colored the whole poem with its movement—the limping, trembling and freezing is going on before your own eyes.³

Or consider the views of Henry Fowler, the great English grammarian. In Modern English Usage he minced no words:

[F]labby English is full of abstract nouns; the commonest ending of abstract nouns is – ion, and to count the – ion words in what one has written, or, better, to cultivate an ear that without special orders challenges them as they come, is one of the simplest means of making oneself less unreadable. It is as an unfailing sign of a nouny abstract style that a cluster of – ion words is chiefly to be dreaded. But some nouny writers are so far from being awake to that aspect of it that they fall into a still more obvious danger, and so stud their sentences with – ions that the mere sound becomes an offence. . . . Writers given to overworking these words would be wise to try doing without them altogether; they would seldom find any great difficulty in it, and they would have a salutary exercise in clear thinking.⁴

What Is Nouniness?

Here’s the definition: expressing a verb idea in a nonverb way. That is, the writer has something verby to say. But instead of using a verb, the nouny writer turns to other words. According to Bryan Garner, the nouny writer “buries” the verb in other structures. He notes, “By uncovering buried verbs, you make your writing much less abstract—it becomes much easier for readers to visualize what you’re talking about.”⁵

You can spot nouny writing by looking for these six symptoms:

1. derivative nouns;
2. derivative adjectives;
3. switcheroo nouns;
4. weak verbs;
5. auxiliary verb goo; and
6. the preposition parade.

The structures that bury verbs are usually nouns and sometimes adjectives. We have three major types: (1) derivative nouns, (2) derivative adjectives, and (3) switcheroo nouns (yes, I made it up). These structures force you to write with (4) oodles of weak verbs, (5) auxiliary verb goo, and (6) the preposition parade. These six features of nouniness, which cause wordiness, prompted Garner to say, “[B]uried verbs ought to be the sworn enemy of every serious writer.”⁶

Let’s look at the six features of nouniness one by one.

Derivative Nouns

As the name implies, derivative nouns are derived from something: verbs. You can spot derivative nouns by the suffixes added to the verb to yield the noun. Watch for these suffixes:

Suffix / Verb / Derivative Noun

-tion / circumvent / circumvention

-sion / conclude / conclusion

-ment / state / statement

-ence / pertain / pertinence

-ance / comply / compliance

-ency / tend / tendency

-ancy / hesitate / hesitancy

-ity / identify / identity

The nouny writer never states something; the nouny writer makes a statement. The nouny writer never concludes anything; the nouny writer reaches a conclusion. The nouny writer never hesitates; the nouny writer exhibits a hesitancy. The nouny writer has a preference for nouns.

But the good writer prefers verbs.

Derivative Adjectives

We can also convert verbs into derivative adjectives. Though using these adjectives does not fit within the moniker of “nouniness,” it does represent the same sin of avoiding verb forms by burying their meanings in other structures. Again, adding suffixes enables us to bury verbs in derivative adjectives:

Suffix / Verb / Derivative Adjective

-ent / depend / dependent

-ant / hesitate / hesitant

-ful / hope / hopeful

-able / prevent / preventable

-ive / operate / operative

The nouny writer never prevents anything; the nouny writer makes certain that it is preventable. The nouny writer never hopes; the nouny writer is hopeful. The nouny writer never hesitates; the nouny writer is hesitant.

Switcheroo Nouns

In English, we have pairs of words that are spelled the same but may or may not be pronounced the same. Technically, they’re not “homographs,” so I call them “switcheroo nouns.” In these pairs, one word is a noun, the other a verb. An example of a noun-verb pair pronounced the same is change (noun) and change (verb). An example not pronounced the same is use (noun) and use (verb). Naturally, the nouny writer always chooses the noun form and shies away from the verb form. Watch for these pairs (there are others):

Noun Form / Verb Form

change / change

love / love

use / use

abuse / abuse

request / request

The nouny writer never requests anything; the nouny writer submits a request. The nouny writer will not change the policy; the nouny writer makes a change in the policy. The nouny writer never talks about using a computer; the nouny writer engages in the use of a computer.

Weak Verbs

The nouny style forces writers to use weak verbs. Ironically, they’ve got a perfectly good verb saying exactly what they want to say. But instead of using it, they bury the verb-like meaning in a noun (or adjective) and then attach it to the sentence with some mushy verb like be, have, involve, reach, and a host of others.

If writers want to say the verb state, they shouldn’t reach for some other weak verb and say make a statement. If they want to say compel, they needn’t say there is a compulsion. If they want to say he predicted, why say he made a prediction? Or worse, there was a prediction made by him.

Focus on the verb within, and other needless words will fall from the sentence.

Auxiliary Verb Goo

In the English language, you can conjugate in the present and past tenses and use only one verb word. Today, I write. Yesterday, I wrote. But then use any other tense, and you’ll need the help of auxiliary verbs. Tomorrow, I will write. As of right now, I have written. And so on. If I want to impose a duty, I need the auxiliary verb must. If I want to show ability, I need can; permission, may; potential, might.

What happens to poor nouny writers who want to say, “We must stop contradicting our boss”? They would never utter the verb stop. First, it’s short. Second, it’s a verb. Instead, they turn to long-winded nouns like termination or cessation. Suppose they use termination. They still have to get in the meaning of the auxiliary verb must. Trouble is, they have no verb that the auxiliary can attach to. Thus, nouny writers build a pile of “auxiliary verb goo”: “There is a requirement of our termination of contradictions with our superior.” See? The words there is a requirement of mean nothing more than must. The word termination means nothing more than stop.

In the nouny style, watch for these expressions:

Auxiliary Verb Goo / Auxiliary Verb

requirement / must

obligation / must

possible / can (could), may, might

possibility / can (could), may, might

The Preposition Parade

Most noun functions require other words for a noun to exist in a sentence. For a noun to act as a subject, it needs a verb. For it to act as a direct object or an indirect object, it also needs a verb. So if writers don’t use many verbs, they can’t stick many nouns onto the sentence.

To get nouns to stick to a sentence, nouny writers use lots of prepositions—those little words that attach nouns to sentences.

Take a look at our science reporter’s 30-word sentence quoted at the beginning of this article. Recall that of those 30 words, three (was made, was) are verb forms. Eight are prepositions:

The prediction of the existence of antiparticles was made by Dirac in 1927 and its confirmation was an important reason for the construction of the Bevatron at Berkeley in 1954.

Now look at Follett’s verb-based rewrite, which contains 18 words, four verbs, and only two prepositions:

Dirac predicted in 1927 that antiparticles exist. Once this statement was confirmed, the Bevatron was built in 1954.⁷

The Softness of Nouns

Reading nouny writing is like watching paint dry. Nothing much happens. The writing just sort of sits there, like a couch potato (to mix my metaphors), totally passive and docile. It always takes matters under consideration. It never considers a thing. It always places great emphasis on the fact that X. It never stresses anything. It always has pertinence to many other things, never once pertaining to anything at all. It always finds things hesitant. Never hesitates.

Of course, many times you’ll have to soften your messages. You’ll have to avoid issues or tone them down. How to pull it off? With nouns. When you want to push your opponents gently to the ground, put on your soft noun gloves. But when you want to hit them with an uppercut, bare your knuckles with verbs.

The Cure: Engage in a Conversion of Nouns to Verbs

Instead of engaging in a conversion of nouns to verbs, let’s learn to convert nouns to verbs. The trick is really quite easy. First, identify derivative nouns, primarily those ending in – tion, – sion, – ence, – ance, – ency, – ancy, and – ment. Second, watch for noun words that can operate as verbs, e.g., change. Third, look for nouns you can convert to verbs. Emphasis, for example, can convert to emphasize or stress. (Please, under no circumstances should you change perfectly good nouns like priority to perfectly terrible verbs like prioritize.)

Once you’ve identified these mushy noun forms, try converting them to verbs or verbals. Let’s engage in a conversion, using this nouny example:

The starting point in assessing the validity of any patent lies in the recognition that there is a presumption of validity. As a result of that presumption, the decision maker must start with acceptance of the patent claims as valid and must look to the challenger for proof to the contrary. This presumption is not irrebuttable even where all prior art before the court was clearly before the USPTO.

Now let’s rewrite the passage in a verb-based style:

When assessing the validity of a patent, one must start with a basic rule of patent law: A court must presume that the claims are valid and then look to the challenger to prove invalidity. Even if the USPTO has before it all prior art and even if a reviewing court views the same prior art, a challenger can still prove invalidity. The presumption of validity, in a word, is rebuttable.

Write like Willie Nelson

Though I don’t endorse his grammar, I do endorse his style. Willie Nelson and the great legal writers of our day all share a secret: They prefer verb forms over noun forms. By using verbs, they evoke a sense of motion and activity in their writing. With the verb form, they certainly compact information into fewer words—favoring as they do quick, hard-hitting verbs. Need proof? Here’s Willie singing 39 words. Eighteen of those words are verb words:

Them that don’t know him won’t like him, and them that do

Sometimes won’t know how to take him.

He ain’t wrong, he’s just different, and his pride won’t let him

Do things to make you think he’s right.⁸

Write like Judge Frank Easterbrook

Want to produce an aura of vigor and force? Use verbs. Circuit Judge Frank H. Easterbrook of the Seventh Circuit knows how. Read his put-down of an attorney who appealed a nonappealable order in Cleaver v. Elias:

A premature notice of appeal disrupts proceedings in the district court. That court must put the case aside and wait for this one to send the record back. Such a notice also imposes unjustified costs on the adversary, whose lawyers must monitor the case and file papers in two courts at once, and on the judges who must set things straight. [The attorney] has filed such a notice of appeal, after the district judge told [him] that there was no judgment to appeal. Having sanctioned [the attorney] under Fed. R. Civ. P. 11 earlier in the case for filing an obtuse motion, the district judge warned counsel: “I don’t think I entered a final judgment order. Now, if you have appealed that, sir, you’ll probably get sanctioned up there.” [The attorney] replied: “I doubt it very much, your Honor.” Counsel should have accepted this free advice. Our views are neither advisory nor free. We dismiss the appeal for want of jurisdiction and impose a sanction of $1,500 under Fed. R. App. P. 38 to be paid by counsel personally.

. . . .

[The attorney] removed this case to federal court. It was his responsibility to learn the fundamentals of federal practice whether the forum was of his choosing or not. Instead he filed and stubbornly clung to a silly appeal. Lawyers who invoke our jurisdiction without doing the necessary groundwork must expect to pay for the costs they impose on their adversaries and the judicial system. [The attorney’s] appeal caused the district court to abort the hearing on June 13 that had been called to fix the amount due on the loan. He was warned by the district court and by our order to show cause; instead of dismissing the appeal he obstinately pressed forward. He is penalized $1,500 under Rule 38, of which $1,000 is to be paid to the plaintiffs as rough compensation for the costs of the wasted hearing of June 13 and the need to monitor this appeal, and $500 to the Treasury.⁹

Zap! Forty-seven verb constructions. Look at some: put aside, wait, imposes, monitor, set things straight, caused, pressed forward, doing, and, the winner, clung. If you want to write the same way—powerfully—then this single most important trick requires you to use verbs, frequently and effectively.

Check Out These Verbs in a Trademark Case Motion

In response to a motion filed by a Texas baker of YA-HOO! cakes to enjoin Yahoo! from using its name, the Internet search company asserted:

Defendant Yahoo! Inc. presents a classic American success story, updated for the computer age. Founded by two graduate students seeking to help others wade through the chaotic stream of information flooding the Internet, Yahoo! has grown from a shoestring partnership operated from a university trailer into a multimillion dollar business. Today, Yahoo! provides Internet navigation services to millions of computer users, novices and experts alike. From the beginning, however, Yahoo! has offered its services to the public free of charge. Anyone with a computer and a modem can access Yahoo!’s Internet site, type in a topic, and “surf” the Internet. Due in large part to its user-friendly philosophy and whimsical, irreverent image symbolized by the YAHOO! name, Yahoo! has emerged as the most popular navigation service on the Internet, relied upon by many millions worldwide.

Since its inception in March 1994, Yahoo! has weathered many challenges from others seeking to duplicate Yahoo!’s success in an industry that Yahoo!’s founders created virtually from scratch. Today, however, Yahoo!’s most immediate threat comes not from its competitors, but from an opportunistic gourmet bakery known (if at all) for its cowboy and western-theme baked goods and its flagship product, Texas-shaped fruitcakes. Plaintiff Miss King’s Kitchens, Inc. (“MK”) has asked this Court to issue extraordinary injunctive relief, claiming that Yahoo!’s Internet trademark immediately and irreparably threatens MK’s baked goods business and its trademark.

MK’s claims could not be more transparent, or more wrong. The trademark laws do not give trademark owners a right in gross to prevent use of all identical or similar marks for any goods or services. Rather, an infringement claim must be supported by evidence of likely confusion, while dilution laws protect only the most famous of trademarks. On its face, however, MK’s suggestion that savvy Internet users will mistakenly associate the gourmet Texas-theme cakes of “The Original Texas Ya-Hoo! Cake Co.” with the cutting-edge YAHOO! Internet navigation services is as implausible as MK’s contention that its little-known trademark is famous and thus eligible for protection from dilution. Indeed, the obscurity of MK’s brand is demonstrated by two separate surveys, each showing that MK’s mark is unknown to consumers throughout the country. Even in Texas, MK’s mark has little brand recognition.

MK cannot escape the requirement of establishing a likelihood of confusion merely by labeling its claim as involving “reverse” confusion. While several courts have endorsed the concept of reverse confusion, MK cites no case finding reverse confusion where the goods and services are as completely unrelated as the gourmet cakes and Internet navigation services involved here. The vast chasm separating MK’s business from Yahoo!’s Internet navigation services is not bridged merely because the YAHOO! Web site has carried advertising for food products. Consumers would no more believe that MK’s gourmet cakes are made by the Yahoo! Internet company than they would believe that the publishers of Life magazine produce LIFE brand cereal.

Indeed, MK’s and Yahoo!’s coexistence over the last few years has been characterized not by widespread confusion, as MK alleges, but by the complete absence of actual confusion in the marketplace. MK cannot point to a single instance of confusion among those who have purchased MK’s baked goods, received them as gifts, or perused MK’s catalogs. Instead, MK relies solely on a litigation survey. But that survey—designed by litigation counsel, not by a qualified expert; administered at only one location to the wrong group of consumers; lacking proper validation; and replete with biased questions—violates well-established standards governing the admissibility of surveys and deserves no consideration whatsoever. Indeed, Yahoo!’s own survey, designed by a qualified independent expert, using proper questions, and appropriately directed to the relevant group of consumers, showed no likelihood of confusion.

In short, MK’s survey results, like the rest of its motion, fail to establish either MK’s probability of success on the merits or irreparable harm. MK’s long delay in bringing this motion, moreover, undermines its claim of immediate and irreparable harm. MK has known about Yahoo! since at least early January 1996 but did not file its preliminary-injunction motion until August 28, 1996, almost eight months later. While now belatedly protesting that it faces imminent and profound injury, MK offers no excuse for this long delay. Nor does it even attempt to explain why this Court should not simply preserve the peaceful status quo that existed from April, when MK filed its Complaint, until August, when the present motion was filed.

MK tries to brush aside the significant injury Yahoo! would suffer from an injunction by characterizing its request as “narrowly crafted.” In reality, however, MK seeks sweeping relief that would force Yahoo! to abandon its most valuable asset, and lead to worldwide disruption of its business. These far-reaching consequences decidedly outweigh any harm MK could conceivably suffer while awaiting trial on the merits.¹⁰

Wow: wade, flooding, has weathered, and brush aside. Have you ever used similar verbs in a motion? Count ’em: 800 words, 112 verb words. That’s 14 percent. Check your own writing. Count the total number of words. Count the verb words. See if your total reaches 14 percent. (Note: include verbal adjectives like baked and sweeping; count a multiword structure like should not simply preserve as just one verb; be sure to include – ing verbs acting as nouns, such as by characterizing.)

Baring Your Knuckles: Using Verbs

After reviewing hundreds, if not thousands, of samples of legal writing, I believe that powerful prose comes directly from effectively using verb forms. Inevitably, when reviewing a paper and getting a sense of flab, I can circle main verbs and find lots of makes, takes, has, is, and, worse, was the result of. Spotting what pervades the prose prompts me to look for what’s missing. Looking high and low, I come up empty in the tally of action verbs.

As a profession, we have neglected the most powerful structure in the English language—the verb. In the interest of reviving this lost art form, I urge you to search your memory and find and use hard-hitting verb forms. Try to remember words like deem, prompt, stress, pinpoint, single out, Judge Easterbrook’s clung, and the motion’s brush aside, has weathered, and sweeping. Together, we can launch (there’s a good one) a campaign to remove the verb from the list of endangered species.

Willie and Judge Easterbrook would like that.

And so will the judges and patent examiners who read your papers.

Endnotes

1. Wilson Follett, Modern American Usage: A Guide 229 (1966) (emphasis added).

2. 420 N.Y.S.2d 560, 573–74 (App. Div. 1979) (emphasis added).

3. F. Scott Fitzgerald, A Life in Letters 357 (Matthew J. Bruccoli ed., 1994).

4. H.W. Fowler, A Dictionary of Modern English Usage 640–41 (Ernest Gowers ed., 2d ed. 1965) (emphasis added). Please note three things: (1) Fowler wrote in the early 1900s, (2) Fowler was British, and (3) Fowler was a curmudgeon. He detested pedantry and condemned unwarranted grammatical rules such as the ban on split infinitives and the rule against ending sentences with prepositions. If you can, purchase his 1926 edition. It’s a classic.

5. Bryan A. Garner, Garner’s Dictionary of Legal Usage 126 (3d ed. 2011).

6. Bryan A. Garner, A Dictionary of Modern Legal Usage 123 (2d ed. 1995).

7. Follett, supra note 1, at 229.

8. Waylon Jennings & Willie Nelson, Mammas Don’t Let Your Babies Grow Up to Be Cowboys, on Waylon & Willie (RCA 1978).

9. 852 F.2d 266, 266, 267–68 (7th Cir. 1988) (emphasis added) (citations omitted).

10. Miss King’s Kitchens, Inc. v. Yahoo! Inc., written by Rob Litowitz while a partner at Finnegan Henderson. Rob is a founding partner of Kelly IP, LLP, a Washington, D.C., law firm specializing in trademark litigation, prosecution, and counseling.