Here’s a quiz. Raise your hand if you think an object held to a wall of a bottle with a clip is permanently secured to the wall. Nobody? Suppose I make this more clear, don’t you agree that a “member … is considered permanently secured as claimed [since] it can be left permanently in the bottle by the user.” What, still nobody raising a hand in agreement?
This nonsense argument about what “permanently secured” means was, of course, put forth by a patent examiner, not by me. And not only did the examiner take this position in an office action, but also the examiner maintained this position when the applicant appealed the to Board of Patent Appeals. Said the examiner: “the term ‘permanent’ is broad and does not impart any structure over the attachment taught by Goff, i.e, one can choose to keep the attachment between the bottle and the vent permanently.”
At least the BPAI gave the examiner a dope slap in this case, but the real issue is that there is something wrong with a patent system where the examiner can push an applicant into the additional expense of an appeal or RCE (Request for Continued Examination) on such irrational grounds. And this is not an isolated case. I had one client receive an office action equating a terminal attached to a computer to a client computer in a client-server relationship. And another client receive an office action equating the key functional element of his invention to an element that was not even part of the cited prior art (think of having a camera with a flash unit rejected because some other camera patent described the sun as the source of light)
Examiners get away with this terrible behavior, and other behaviors that cost the applicant time and money to get good patents allowed, because there is little or no quality control system at the patent office. Oddly enough, just a few short years ago, the lack of quality examination was the root cause of too many bad patents being allowed. One really felt that, with just a modest effort, you could get any application through the system.
At that time (2004) Adam Jaffe and Josh Lerner wrote INNOVATION AND ITS DISCONTENTS: HOW OUR BROKEN
PATENT SYSTEM IS ENDANGERING INNOVATION AND PROGRESS, AND WHAT TO DO ABOUT IT. When the book was published, I didn’t much like their suggested “what to do about it”; now I’m beginning to think it wouldn’t be all so bad.
The heart of their proposal is to remove the presumption of validity that issued patents currently enjoy and instead make the patenting process more of a registration process, with validity to be determined later for those patents that someone cares about. That type of a change would be true patent reform.
Although the odds of such reform ever happening are nil, I’ll discuss what such a system could look like in a future post.