Posts Tagged “Patent Examination”

I know we are just past the holiday period – you know, peace on earth and good will toward men – but a couple of recent office actions have me convinced that patent examiners are anything but men of good will. How do they annoy me… let me count the ways I’ve seen in blogs etc.:

1) rejecting a claim with a “bouyant” flap because a similar flap in the prior art was a hydrofoil and therefor rose toward the surface [uh…only when moved through the water!]

2) rejecting a claim with a “translationally stationary” scanning element because a prior art scanner, which moved across the surface of an object, disclosed “a translational stationary scan mechanism with respect to said surface” – wait for it now – “in the vertical direction”. [Emphasis added]

3) rejecting a claim with a remote [microwave] imaging element because “as a radar guy” he thought the system doing the imaging OF the remote element.

4) rejecting an invention with removable legs because, the examiner stated,“the legs of [the prior art reference] are capable of being removed, even if it requires a blow torch.” [Emphasis added.]

5) Rejection of an invention that involved flexible padding because, again, with enough force even a steel plate is flexible. [Emphasis added.]

6) Rejection of a processing system that used a browser applet because the examiner equated the client-server relationship to a terminal on a mainframe.

The good news is that these dumb rejections are (generally) overcome

The bad news is that overcoming them costs you, the inventor, money. Either in extended examination costs (i.e., having to have your attorney file an “RCE”, a request for continued examination) or by going before the patent office’s board of appeals.

In any case, these stupid examiner tricks are the result of bad management at the PTO, where examiners are not judged by the quality of their examinations (as measured at least in part by the validity of their office actions).

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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.

 

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In my previous post http://techroadmap.com/ipdirections/2011/07/11/the-patent-reform-we-really-need/ I indicated that Jaffe and Lerner’s suggestion of doing away with patent examination and the presumption of validity for an issued patent that goes with it – essentially changing patents into registration-only documents, as is the case for copyrights – might not be a bad idea after all.

But of course times have changed since they made that suggestion (2004) and the problems we have today are different from what they addressed then. Then, the problem was that anything could be patented; now the problem is that even good inventions have to fight inane, illogical, and unfair office actions at significant extra expense to the applicant.

Also, Jaffe and Lerner’s suggestion did not fix the problem they identified (poor examination); all it did was push “examination” down the road to a more expensive venue where, it was assumed, only “valuable” inventions would end up. The rest of the inventions, presumed not valuable because no one needs to enforce them, would be registered and make nice wallpaper. This latter presumption is flawed, particularly for the small entity.

The final flaw in their suggestion is that it is inconceivable that it would ever be implemented. The idea that Congress would ever change the fundamental definition of a patent is inconceivable.

Rather than try to change what a patent is, let’s make the process of getting a patent conform to the stated goals of the patent system. It is the patent examination process that is flawed, not the definition of a patent. Let’s fix the problem by changing the problem’s source. Incidentally, fixing the examination process can, for the most part, be achieved without legislative action.

There are two goals for the patent system: on the one hand, the system is intended to reward inventors who advance the state of “science and useful arts”, on the other hand the patent system is intended to provide the benefits of such an advance to society by adequately disclosing the advance in the patent specification. The primary function of the examination process, then, is to determine, by a reading the specification, whether the inventor has indeed made a significant enough advance to science and the useful arts to merit awarding a limited time monopoly on the invention, and whether the advance is disclosed clearly enough in the specification that other workers can make use of the advance.

I believe that the only way to achieve the goals of the patent system is to have an examination process that seeks the truth about the invention’s quality and that ensures that the specification explains the details of the invention. A model for such a process exists today, not in the patent world, but in the publication of academic research. In theory, if not in practice, the editor and reviewers for an academic journal are supposed to read a manuscript to determine both the value and originality of the underlying research AND whether the presentation in the manuscript is clear and complete enough that other researchers can try to replicate the results.

Without pretending to understand the “back story” of how we got here, it is clear to me that the current examination process, far from being an evaluation of the value and clarity of the invention and specification respectively, is instead an exercise in intentional obfuscation on the part of many applicants and an exercise in semantic gamesmanship on the part of many examiners. Patent examination is not supposed to be an adversarial process, but it is clear that, at almost every turn, applicants are wary of admitting or explaining anything, for fear it will be used against them and examiners seem intent on finding a word or phrase in the independent claims that they can use to cite obviousness or anticipation, even where there is none.

This process must change.

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A case decided by the Board of Patent Appeals and Interferences, discussed in the All Things Pros blog,  is a poster child for what’s wrong with how the patent prosecution system has evolved. Patents were supposed to reward inventors for sharing their innovations with society so that the state of the art was advanced. Instead, too many patents are merely new, with no innovation of value to speak of.

The patent examination process, leaving aside the poor embodiment we have, is inherently limited by “fairness” to avoid, as far as possible, subjective judgments – the very judgments required to determine if the invention described in an application has value to society. The closest the examination process comes to making the “value” judgment is the determination of obviousness. Non-obviousness is a necessary but not sufficient condition for value.

If an invention is obvious, then the inventor has not brought any unique value to us. And we all know how impossibly difficult it is to make an objective determination of the inherently subjective “obviousness” standard! Imagine if the examiners were charged with determining if an invention had “enough” value to society, if it advanced the state of the art “enough”, if it was innovative “enough”, to allow the inventor to control its use for nearly two decades.

In response to this inherent limitation in the examination process, “clever” patent attorneys now write claims for not-valuable-to-society inventions to exploit this flaw and collect fees from their clients fighting office actions that use obviousness rejections as the only tool to reject the new but non-innovative inventions.

In the case at hand, does anyone really think that specifying that it is a sales rep from the company who physically accesses a memory interface to update a point-of-sale display device brings value to society? Surely, if these two coupled limitations are the only things that makes this device patentable, then it does not deserve a patent.

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