Liane:
In my experience as a patent attorney, there are few tasks more difficult than convincing a U.S. patent examiner to allow an application directed to a structurally simple invention. Such an invention may result in significant time or cost savings for a manufacturing process or greatly improved product or process performance. While these advantageous results can sometimes be helpful to emphasize during prosecution, I have found that examiners tend to dig in their heels on these types of applications, because in their opinion there are too few structural details in the claims.
The most difficulty I experienced in prosecuting a patent application involved such an invention with very little structure, but nonetheless had the potential to produce great benefits for the human who sits in an office chair (as many of us do) for extended periods of time. For me, being stationary in front of a computer screen caused persistent upper body pain which lead me to my first yoga class. There I learned all about various poses, some of them I initially thought of as terrifying, the purpose of which was to open the chest muscles which gradually alleviated my discomfort.
Certain events occur, and/or particular people cross our path, at precisely the right time. I met Joachim Berc, the inventor of U.S. Patent No. 8 298 126, when he visited our office many years ago in order to personally discuss his invention and its advantages. Joachim kindly agreed to join me in this trip down memory lane, and his comments follow mine since I thought it might be interesting for readers to hear this story from both sides.
I spent at least my first meeting with Joachim trying to prepare him for what I believed to be the very real possibility that we would not be able to get his application through to allowance. The invention was directed to a rigid and planar support with two sidewardly-opening recessed areas located near one end of the support. The key to the invention was in the dimensions of the recessed areas in relation to the area of the support located therebetween. With the back body resting horizontally on the support, such dimensioning provides two open areas in vertical alignment with the shoulders and allows the arms to be lowered downwardly under the force of gravity in order to gradually open the chest. This manner of stretching the chest seemed to be much easier than what I was attempting in yoga class, and could be done relatively quickly and at any time of the day provided that the correct support was available for use. At that time, and it remains true to this day, I had not attempted to obtain a patent on any object with fewer structural parts than this invention. Joachim listened patiently to my warnings and explanations of U.S. patent law, but afterwards was in no way discouraged or ready to throw in the towel.
All patent attorneys have a few tricks up their sleeve, and I put to use all of mine. Method claims were tried first to no avail, and we then shifted prosecution to apparatus claims. After several re-filings of the application and a variety of statutory rejections, we decided to visit the U.S. Patent and Trademark Office in order to personally interview the examiner. The only approach left to try was a 37 CFR 1.132 Declaration which explained the advantages of the invention in detail and the differences between it and the prior art. I can be a little cynical at times and thus continued with my “this is going to be an uphill battle” and “please do not get your hopes up” speeches, during which Joachim smiled at me and continued to ignore. Persistence finally paid off. Our discussion with the examiner went extremely well, as the examiner was very open to consideration of a Declaration. Shortly after submission of the Declaration, the application was allowed.
This patent became my personal benchmark and has been a continuing positive force that compels me to pursue patent protection for structurally simple, and often eloquent, inventions. Further, Joachim’s positive mindset and personal involvement in the prosecution of his application was invaluable and played an enormous role in issuing this patent. I take this opportunity to thank him for his patience, persistence and willingness to learn about and actively participate in this very obscure area of law which we patent attorneys have the privilege to practice.
Joachim:
It is interesting to read Liane’s story. All she says is true. However, from her perspective she neglects a few important details. I had filed my patent in Europe, China, Japan, India, Canada and the U.S. In all countries except for the U.S., there was one round of rejections. The U.S had many. After two rounds of rejections, I did not understand or accept that it makes no difference in the U.S. how many other countries granted patents on my invention. For me, this made no sense, and so I directly contacted the law firm handling my application in the U.S. in an effort to try to better understand what the problem was.
I admit that I expected to meet a club of men who were all close to retirement before arriving in Kalamazoo and I did not expect to be received with excitement or understanding. But there was a younger smart lady who joined the meeting, and she obviously caught fire once she saw the prototype. Her precise questions made it clear to me that she grasped the core concept of my invention. This, paired with passion and her love for the job, made my day. From my perspective, it seemed to her that the examiner’s rejections were based on mere misinterpretations. She was the one encouraging me to never give up, because she found solutions. From that meeting on, she was my sparring partner and that completely changed the course. Not that we had the perfect wind in our sails--it was a very slow process. But we encouraged each other and kept on trying different approaches. The process requires willpower and resilience from both the attorney and the inventor so as to not be broken by the examiner.
Today I’d say--the examiner is a human being on the other end of the communication line. Being rejected several times by the examiner in the U.S., but having been granted patents everywhere else I had applied, was telling me that we had sitting on the other side someone whose intention was maybe not to be stern, but to be sure that no mistakes occur in the process. Also, I thought it might be easy for examiners to reject any cases when not sure about an invention.
When we met the examiner in person in Alexandria, it turned out that on some points she may have been right. Also, I learned that many English words have double or triple meanings. Patent attorneys and examiners have to be very sophisticated word acrobats, and the patent attorney has to find the right words to remove the doubt in the examiner’s mind. After this meeting with the examiner it was Liane’s job, not an easy one, to find examiner-pleasing words/terms. In the next round, we won. Hallelujah!
It is important for an inventor to understand that outsourcing his or her problems to their lawyer is not enough. You know more about your invention than anybody else--so when your invention is rejected you have to find new words and approaches from your side too. The biggest mistake is to think everyone else is thinking like you--in reality, nobody does. The communication between inventor and lawyer is a like a path you travel together to find the best ways around obstacles blocking the grant of your patent.
Liane in her story says that I was resilient--she has not mentioned that she nudged and encouraged me to remain on course. I would not have had any chance without her as my sparring partner, who was willing to rephrase my comments and observations about my invention and the prior art used against us again and again.
Examiners are humans. They have fears, blind-spots and their own personal approach and desire for an accurate interpretation of text. With that in mind, it is clear to me that it pays off if you have a lawyer as your sparring partner who understands your invention. So, if you are sure you have a patent-worthy invention do not give up too soon. With resilience and persistence you can overcome all obstacles in your path and finally succeed.