Intellectual Property Directions

All of us have had the frustrating (and potentially dangerous) experience of trying to get at a purchase encased in those unopenable plastic packages. You know the ones. Heavy plastic bubbles, heat sealed all the way around, that become knife sharp when cut open with heavy shears. I wonder if they are patented… and if they are, do they claim that they are “unopenably sealed”?

If the patents claim “unopenability” then the inventors might have had to fight their patent examiner to get the claim allowed. Patent examiners are supposed to review your claims, taking the broadest reasonable interpretation of what they cover, to see if they are obvious or anticipated. Sometimes, however, examiners substitute “possible” for “reasonable” and lock up your claims with office actions. Karen Hazzah, in a recent blog post, gives a half a dozen examples of where a patent examiner has essentially taken the position that nothing is unopenable or permanently attached, since, with a big enough tool, everything can be opened or detached…even if it means you have to break it.

In Hazzah’s examples the inventors won their claims by appealing to the Board of Patent Appeals – we don’t know how many inventors gave up because they couldn’t afford the on-going expense of an appeal.

For example: in Ex parte Miles (BPAI 2011) the claim terms at issue were “legs adapted to be removably attached” and “legs adapted to be removably secured,” where the removability was needed to differentiate the invention from the prior art. The Examiner took the position that neither phrase was a “positively recited limitation” – that is, the examiner said the phrases were only describing the legs, not limiting what the invention was. The Examiner then stated that “the legs [of the prior art] are capable of being removed, even if it requires a blow torch.” (Emphasis added.) Happily, the Board found for the inventor, pointing out that if you invoke a blow torch, then nothing can be considered permanently attached.

Similarly, in TechPharma Licensing v Novo Nordisk (BPAI 2012) the claim term at issue was “a lock for irreversibly locking the safety shield in its biased position.” The examiner essentially said that any mechanism can be broken, thereby letting the shield move from its biased position.

So what can you do to prevent your removably attached claims from being locked up by the examiner, requiring the expense of an appeal to unlock them? There are two strategies to jailbreak your claims.

First, you can avoid using words that lend themselves to being misconstrued and/or you can include very explicit definitions of how you want those words understood. For example, instead of “lock” you could use “capture mechanism” or you can describe how an “irreversable” lock is one in which the lock cannot be “unlocked” within a typical range of actions or that cannot come apart with damage.

Second, you can write your claims without “non-structural” adverbs, replacing them with clauses that include the structural elements that enable your invention. For example, instead of claiming “legs adapted to be removably attached” you could claim “legs, said legs comprising an attachment interface…” and in the specification you would have described what an attachment interface was and how you use the (exemplary) attachment interface to make your “removable” attachment.

Yes it’s more work for you now; but it is also more likely to avoid dumb office actions.