The Lowly Comma, Revisited

In the Writing Guidelines I distribute to students, I use the following example to illustrate the principle that “everything you put on the page matters”:

Everything – every word, every bit of punctuation, every decision to begin a paragraph with one sentence rather than another, every decision whether to use “shall” or “should” or “may” or “might,” or whether to use “since” or “because” or “thus” or “moreover” – matters. That may or not be true in other fields, but it is true in ours. This is less an objective fact than an attitude, an attitude that may or may not come naturally to you but which I urge you to start cultivating. Care about the words you put down on the page. Give a damn about them. They reflect who you are as a lawyer, and they are often the only reflection of who you are as a lawyer that your professional colleagues will get to see.

When Robert Frost’s Collected Poems was originally published, it contained these familiar lines (in “Stopping by Woods on a Snowy Evening”):

“The woods are lovely, dark, and deep
But I have promises to keep
And miles to go before I sleep
And miles to go before I sleep.”

In fact, what Frost had written was:

“The woods are lovely, dark and deep
But I have promises to keep
And miles to go before I sleep
And miles to go before I sleep.”

In a recent conversation with some colleagues about this point, Mark Lemley pointed me to a wonderful legal example of this principle. In Stark v. Advanced Magnetics, 119 F.3d 1551 (CAFC 1997) the court had to construe section 256 of the Patent Act, which reads:

§256 Correction of named inventor
“Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent and such error arose without any deceptive intention on his part, the Commissioner [of patents] may . . . issue[] a certificate correcting such error.”

The court – correctly, in my view – reads this to mean that there are two kinds of inventorship “errors” that the Commissioner may correct: misjoinder, i.e., naming a person incorrectly as the inventor, and (b) nonjoinder i.e., failing to name a person as an inventor. Misjoinder can be corrected whether the error arose through deception or not; nonjoinder, though, can only be corrected where the error arose “without any deceptive intention” on the inventor’s part.

So far, so good. But what elevates the case into true sublimity is this: there is another section of the same statute, sec. 116, that is identical to sec. 256 except it adds a single comma, and the court construes it to mean something entirely different. Sec. 116 deals with correction of inventorship during the process of patent prosecution (as opposed to after the patent has issued), and it reads:

“Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent, and such error arose without any deceptive intention on his part, the Commissioner [of patents] may permit the application to be amended . . .

Note the comma after the words “issued patent.” The court – again, correctly in my view – reads this as forbidding correction whenever an error of either kind (misjoinder or nonjoinder) arose with deceptive intention. So the two provisions taken together: after a patent issues, a misjoinder error that arose through “deceptive intention” can be corrected (256); before the patent issues, it cannot (116).

It makes no policy sense whatsoever, and was probably inadvertent on Congress’ part. But the court’s gotta do what the court’s gotta do, and the comma really does change the meaning of that sentence, and they have to give effect to it.