Sunday, September 15, 2013

A Little Bit of Knowledge can be a Dangerous Thing….

If I have been silent for a long time, it is because I have been busy spinning my wheels.  I got nowhere, but it took all this time to get there.  You see, I decided prosecute my patent application before the United States Patent Office on a pro se basis, my less than stellar legal team consisting of me, myself and I.   Why, you may ask, would I do such a thing?  Simple.  Lack of means.  

The whole process started some time ago when I, using my still existing resources, hired a patent attorney (i.e. paid a retainer) and had him file an application for a provisional patent with the USPTO.  The application described a lighting system I put together and built into my handbag, allowing me to easily find what I was looking for, forever ending the blind shuffle I was heretofore forced to make inside the bag’s black, cavernous interior, to retrieve something I wanted.

I was granted a provisional patent.  You may not be impressed but, to me, this was a validation of my work, the (provisional) patent proof of my ideas gravitas, allowing me to legally say that my invention was “patent-pending”!  Wow!

Emboldened by the victory, I instructed my lawyer to file for a non-provisional patent (and paid for the pleasure), convinced that my application would sail through unimpeded.   

The examination process (of my application) began in earnest, the submission landing on the desk of an Examiner whose job it was, first and foremost, to review all existing patents, confirming that no one had had my brilliant idea before me.  The Examiner also had to review the application itself to ensure that it was written in the correct format and in accordance with the multitude of MPEP requirements addressing the issue of how a submission should be made, down to the size of the margins on the documents in question.  Patent applications have been known to be refused, not because the invention was not patentable, but because the submission did not comply with requirements, much as many worthy manuscripts never reached the reading public, turned down by agents and publishers simply because the query letter or synopsis were not written in the right font or with the right spacing.

For those of you unfamiliar with the MPEP, it is the Manual of Patent Examination Procedure, or the Bible of the USPTO.  Thousands of pages long, the number of rules it contains is counted as being “too many to count”.

Events could have gone several ways.  The Examiner could have approved my submission in it’s entirety and granted a patent.  To the astonishment of the naive, ergo delusional me, he didn’t.  Instead, he rejected the whole application for one reason or another, sending something called an Office Action, in which he told the “Applicant”, as I would be known from now on, in effect “In your dreams!”.   Applicant had three months to respond.

Applicant went back to her lawyer and authorized him (and paid some more) to respond to the Office Action. He did.  The Examiner rejected the response.  Applicant’s lawyer rebutted (upon receipt of payment).  Again.  The Examiner rejected.  Again.

At this point Applicant ran out of money.  No cash, no lawyer.   Faced with two choices of either walking away and letting the enormous investment she had already made go down the toilet, or carry on the battle on her own, Applicant chose to do the latter and hunkered down, having less than three months to absorb all the relevant wisdom.  She purchased a book entitled “Patent it Yourself” written by patent attorney David Pressman.  The book shed considerable light on the chaos that is the patent process, leading Applicant to think that she could overcome the considerable odds against succeeding.

Since Applicant was now prosecuting the application pro se,  the Examiner was obliged to lend her some limited assistance.  He could not advise her on  content of her Response to his Office Action, but only on how the content should be presented.  Why?  Because the process is adversarial - Applicant vs. the United States Patent Office.  Her against Them.

The Applicant was told by the Examiner about the MPEP, (something she had no clue even existed) and was directed to study the most relevant of chapters.  The Applicant did as she was told.  She also re-read, this time oh so carefully, the original application her lawyer had made on her behalf.  It had several problems.  Not only was it inaccurate in describing her invention, it also did not mention some key structural features at all.  To the lawyer’s defense, he did, at the time, sent her draft copies of what he proposed to submit to the USPTO and she had duly read what he wrote but, when she tried to correct the fallacies and omissions in the application, her lawyer advised her that should she insist on making the changes she wanted, well, that would be a whole ‘nother kettle of fish, and better not open that Pandora’s box, ‘cause that would trigger a whole new set of rejections from the Examiner.  Better not go there.  She acquiesced.  

What she didn’t know was that, once an application is made, it is carved in stone (by little men who work in the basement of the USPTO, toiling away all day long, tiny hammers and chisels in hand.)  What her lawyer did not warn her about, was that any subsequent responses made in defense of the patent application, cannot go beyond the bounds of what was originally filed, not even by a comma.  Any change could be considered by the USPTO as being what they call “new matter”, in which case a whole different application would have to be made in order for this “new matter” to be admissible.  For a fee, wouldn’t you know. 

Applicant realized that:

a) she had less three months to respond to the Office Action; less than three months to read and understand the MPEP, what with it being written in legalese, precluding average mortals from comprehending it’s contents;
b) review and understand all rejections heretofore made by the USPTO against her application;
c) re-write her application to comply with whatever format problems the application contained;
d) overcome any existing patents the Examiner brought up to argue that her invention was worth squat; 
- and do all of the above while not stepping out of the confines of her originally submitted application, i.e. not using any definitions and arguments or bringing up any features of her invention not originally mentioned.  Apart from that, Mrs. Lincoln, how did you like the play?

Undaunted, Applicant forged on.  She made some preliminary arguments to the Examiner on an “unofficial” basis just to see what the response would be, to test the waters, if you will.  These were immediately disqualified, the Examiner giving her a multitude of counter-arguments, sighting chapter and verse of the MPEP in all it’s might, for added effect.  

Realizing that she was in the maze with no apparent exit, Applicant asked the Examiner if, in his view, there was any avenue open to her at all, careful not to ask what that avenue was, but only if it even existed.  Had the Examiner then told her that she was flogging a dead horse, she would likely have retreated from the battle, licked her already sustained wounds and, curled in a fetal position, cried herself to sleep.

Instead, the Examiner said that there was something “valuable” about Applicant’s invention, which she took to mean that the patent she coveted lay waiting for her somewhere, probably at the end of the rainbow.  All she had to do was find it. 

Over the coming weeks Applicant wrote many, many e-mails to the Examiner, asking about this or that, presenting ideas and concepts and arguments, all in the hopes of identifying the location of the rainbow which she would then trace to it’s end.  Applicant also told the Examiner that, if she was having trouble identifying that something “valuable” about her invention the Examiner alluded to, it was because she was not an electrical engineer by profession and had little knowledge on the subject beyond what it took to come up with her invention.  The Examiner expressed surprise at this revelation and gave the Applicant to understand that, in light of it, he assessed her chances of successfully prosecuting her patent application about as likely as pigs taking flight, in words not nearly as cliché.

He continued to answer every one of her e-mails, using mostly legalese as he had done to date, but now breaking into English long enough to explain that Applicant was nowhere near the rainbow, much less the end of it, employing a tone which implied that Applicant’s temerity to think that she had any business applying for a patent in the first place, was trying his patience.

Applicant stubbornly refused to retreat from battle, instead sending off her “official” Response to Office Action.  She is currently waiting for a reply.

All jest aside, I do not understand why the process of getting a patent must necessarily be adversarial.  Arguably, the Patent Office must do their due diligence in reviewing patent applications to prevent multiple parties receiving a patent for the same idea.   Having said that, I see no reason for rules which say that an Examiner cannot assist an applicant in obtaining a patent in cases where he sees something which is indeed patentable about the invention. By “patentable” I mean something un-obvious, utilitarian and, above all, novel - the three requirements of patentability for any invention.

In a criminal court of law, the relationship between the prosecuting and defending attorneys is adversarial but there is life and liberty at stake - the prosecutor wants to make sure that the guilty party gets punished, while the defense endeavors to ensure that the innocent party does not go to jail for something they did not do.  The adversity stems from the fact that the “party” in question is one and the same. 

In the case of the USPTO there is no adversity per se if there is no duplication of an existing invention.  Why not then assist an applicant in the bid for a patent, instead of doing it’s utmost to prevent that from happening?  New ideas are a huge driving force in any economy and one of the main goals of the United States Patent Office should be their promotion and support, not suppression, in this Applicant’s humble opinion….

A.J. Aston

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