Selling an invention to a patent examiner

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By David J. French

One of the most critical jobs of a patent attorney is to convince a patent examiner to grant patent rights to your client. This means convincing the examiner that your client is entitled to exclusive rights over a described version of the invention that, while being of the widest scope possible, will meet the novelty requirements of the patent law. The key requirement is that you have to define the invention in language that does not describe anything that was previously available to the public. But you also want to use language that will shut-down competitors without leaving any loopholes. Not an easy job.

In a recent case I had a special situation. I had a client who had actually prepared the bulk of his own patent application over the course of three preliminary filings. I cooperated with him in making the final filing. He was, however, a very experienced inventor. He had done over 30 applications himself – some with attorneys, some without – and he had managed to sell one invention for over $500,000. Naturally, on arriving on my doorstep, he thought that he was now working on the best invention of his life, the GoPad for People in Motion.

Once the application had been filed it reached the stage where it was possible to have an interview with the patent examiner. Because we were in a preliminary stage under the Patent Cooperation Treaty (PCT), it was possible hold an interview with the examiner on a non-binding basis. This would be an opportunity to get a favorable ruling that could be very influential in negotiations with potential distributors and computer manufacturers whom the client hoped to interest in the invention.

Under examination

On the appointed day we met with the examiner at the Patent Office. He was very gracious and led us to a quiet board room where the client proceeded almost immediately to do his pitch for the examiner. That pitch generally followed the link, above.

Now the role of an examiner, from the examiner’s point of view, is to approve – to accept or refuse – the language of patent claims, ensuring that they do not describe anything that was previously available to the public, or anything that would be “obvious” in view was previously available. His role is to protect the public interest in ensuring that these standards are met.

An examiner in the PCT Chapter II stage has to write a report, the “Preliminary Examination Report under Chapter 2 of the PCT.” This report will then become part of the record for all of the countries in which the PCT application will eventually be processed. Potentially, that could total 135+ countries. That is one of the advantages of using the PCT: central processing for a period of up to 30 months with the prospect of getting a preliminary examination ruling. It would look very favorable to potential distributors and computer companies if we could get claims allowed that were as broad in scope as possible.

Once the client had finished his presentation, I asked the examiner not what he thought of the invention, but how he wanted to proceed in the meeting. He replied, a little vaguely, that he was pleased to have had the presentation and did want to compare what we had already submitted in terms of draft claim language with a key piece of prior art. I then volunteered as follows:

“Let’s not make a decision right now. Let’s talk about it and we will send you a further written submission which will reflect the distinctions between what we are trying to claim now and this relevant piece of prior art that we all know we must examine together. Hopefully, our written comments can be used by you as part of your PCT Preliminary Examination Report in support the claims that we have proposed.”

The examiner nodded his approval with a big smile and we then went forward and reviewed the distinctions between what we were trying to claim and this important prior art reference. The examiner was noncommittal as I had suggested he could be. This meant that we were not putting him under the pressure of making a decision right then. We were freeing him of having to go into argumentative mode. This made all the difference. Nobody was under any pressure and therefore the conversation could proceed on the most genial basis.

The meeting ended with thanks going back and forth. There had been no tension because there had been no agenda for a decision to be made. We left confirming that we would be sending in written submissions.

The next exercise was to draft the document that we hoped would justify the examiner’s approval of our claims. This essentially meant reducing to writing the remarks that we had made during the meeting in favour of our claim language. We needed to show that the exclusive rights we were seeking were sufficiently different to allow the examiner to honestly endorse what we were claiming as being an “invention” over the prior art.

A paper was then sent into the examiner containing a series of paragraphs that the examiner could use in preparing his PCT Preliminary Examination Report. We were trying to help by providing him with the language needed in order to make a favorable ruling. And we also voluntarily narrowed our claims slightly in making those submissions based on what we had come to better appreciate because of the open and friendly discussion during the interview.

In due course, and with great pleasure, I was able to phone my client and tell him that we had received a phone call from the examiner confirming that he would be able to give us a green flag for what we had requested in terms of patent coverage. There were some tidying up corrections to be made in other portions of the patent application document, but on the principle of the scope of the basic rights, the examiner was on our side.

What is the lesson to be learned about the process?

In the interview I had suggested to the examiner that he only make his final decision on the basis of the written papers once they were all sent in, and not necessarily at the interview. This set the tone for a very open discussion. It also prevented the interview from descending into arguments over differences of interpretation and points of disagreement. Not only was the examiner relieved from the pressure declaring his final position at the interview but we as well were able to leave the interview with a better understanding of what we should put in our written submissions.

The message to be learned is that when there is a decision to be made, it is helpful to have an exchange of views based on the premise that no decision will be made at an initial exploratory meeting. This completely changes the atmosphere and facilitates open exchanges even on points where the parties do not necessarily agree. Understanding the other side’s point of view is crucial in order to achieve an agreement which is acceptable to everyone involved in a decision making process.

Image: Tiny House Ontario

David French is the principal and CEO of Second Counsel Services, which provides guidance for companies that wish to improve their management of Intellectual Property. For more information visit www.SecondCounsel. com.

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