Saturday, February 10, 2018

Perfect Harmony Among Examiners, Inventors, and Patent Attorney

by Steve Reiss (

The early Journal of the Patent Office Society, now the Journal of the Patent and Trademark Office Society was far more focused on the Patent Office than it currently seems.

I love digging through its early editions and re-introducing them (see here, here, etc.) to the current patent community because they often address issues just as important now from when they were originally written; sometimes around 100 years ago.

An early article still relevant today is "The Relation Of The Examiner to the Inventor and his Attorney", the text of a speech given by F. W. H. Clay, Assistant Commissioner [more on Clay in a later post], and delivered to the fourth assistant examiners (the least senior examiners) in 1918 or so. The speech is very long, and those interested in reading it in the entirety can find it in full here.

The title of the blog post is based on Clay's belief that "The examiner, the inventor, and his attorney should all be in perfect harmony and sympathy, because they are all seeking the same object."
I excerpt the speech below, highlighting some of the points the speaker thought extremely important (emphasis mine):

Let me first call your attention, gentlemen, to the fact that in your duties in this office you are in a very peculiar position, a very unusual position, which makes it highly important that you have a correct conception of your proper mental attitude toward your work. In a word, you are in the anomalous position of being both the judge and the attorney for one of the parties in a controversy. 


What I wish most to impress upon you, is that the seeming inconsistent attitude of the examiner is one of seeming only, and that when looked at from the right point of view the interests of the inventor, his attorney, and the examiner are, or should be, substantially one and the same.

Let me try to explain why this is so, and how it results from the nature of the property in inventions. The point will appear from a careful consideration of the reason for the patent law.
To come then, to the nature of the inventor's right. In the first place it is important for you to understand 'clearly that the inventor does not come to the government seeking favors. I do not hesitate to say that the inventors as a class are by all odds the most important class of people, and by all odds the best benefactors of the race.

Inventors being benefactors of the race, and coming, when they seek a patent, with something to offer the public and not something to ask, it is next important for you to keep ever in mind the nature of the thing the inventor seeks.


This brings me to the main point I wish to make, namely, that however it may be with the business man, it is of supreme importance to the inventor and to the public that patents be both applied for and granted promptly. Coming directly home to you, this means that one of your primary duties is to see that when applications are filed in this office they proceed without delay to patent. It is quite possible that promptness in the work of this office is as important as thoroughness. In other words, if you have to choose between making a less thorough examination and a general and material delay in getting the applications through, it is probably more to the public interest that the prosecution be prompt. At least I am justified in saying that if your examination is not sufficiently thorough, this is directly the fault of Congress, and is so provided in spite of the attention of Congress having been repeatedly called to the shortness of force and the necessity of an examination that is not sufficiently thorough. *** I think myself, (and believe it wise to say so) that the inventor at the present moment is not getting the examination he actually pays for. I base this statement on the single fact that the Patent Office is a money-making institution, at the expense of the inventor. The inventor pays a certain number of dollars for an examination of his invention. He does not get that number of dollars' worth of examination. On this point there can be no dispute, nor can there be any dispute that it is-because this office is undermanned.

Accepting this condition, however, as we must, it is our duty to keep the work up to date and to constantly press for prompt prosecution and issue of patents.***

If you have agreed with me about the point of view you should take toward the patent law and the Patent Office, you will see that the general impression that the attorneys are arrayed on one side and examiners on the other of a never-ending series of controversies, is entirely erroneous, and that it is due to a wrong impression of what we are all trying to do. We are in fact all attorneys for a public benefactor.

The examiner, the inventor, and his attorney should all be in perfect harmony and sympathy, because they are all seeking the same object. It is not as if you were the attorney for the public, sitting down to draw up a contract between the public and the inventor by which each party must jealously guard lest his client give more than he receives*** It is to the mutual interest of all three that the measurement [of invention] be correct *** The attorney ought not to resist the criticism of his specification or claims; for a criticism cannot possibly do harm and almost invariably does good. On the other hand, the examiner ought not to resent criticism of his reasoning or his point of view, for the attorney by challenging the examiner's action will probably show in just what respect the examiner's contention is weak and needs to be strengthened in order to properly fix the patent in its proper place in the art.


Now in all this, it happens that the examiner as attorney for the public insisting on the claim exactly measuring the extent of the step up—the improvement—is doing exactly the same thing as the attorney for the inventor is doing, marking out the limits of the forbidden field covered by the patent. In setting the fence around the invention it is as much the interest of one as of the other to put it in the right place. The inventor comes in to the attorney full of enthusiasm and discloses to him an invention which he says is all new and very important. The attorney says, "Let us be sure just how new; let us make a preliminary examination." ***. Being aware that his search was uncertain, and with the object of bringing out a better search from the examiner, having regard to the invention in both its broad and narrow aspects, he writes usually some very broad claims and then some more specific ones. In view of the light he has at the time he writes his specification it is altogether likely that he will have too many claims, and that he will have some claims that are too broad. If he is a good attorney he will have done this deliberately, in order to get the advantage of the examiner's point of view.

The examiner should reply in full consciousness of the mental attitude of the attorney and as near as possible in a sympathetic spirit. If he says claim 1 is too broad, he should show as fully as he can how much of the variety of previous devices his claim would cover; and among these references he should always attempt to have the one he considers his best reliance for rejecting the narrowest claim he will reject. If it occurs to him how it may be done, he should suggest what appear to him the principal novel points of the invention. But in the next action by the attorney he may expect to find a different view as to what is the most important point of the invention and he should not be irritated at being told that his own point of view is wrong. ***  The attorney for the inventor also is liable to have a still third point of view, being more familiar with the business aspect of the invention. The great thing is to get a mutual accommodation of the three points of view, and in order to do this it is necessary to constantly strive to maintain a sympathetic attitude. ***

Most of the controversies arise between the attorney and the examiner over the pertinence of references, and this is due to the variant directions of approach above mentioned. The examiner ought to be willing to listen to every contention the inventor's attorney may make, if for no other reason than to test the correctness of his own judgment. Another thing the examiner should guard against is confusion in the use of the terms in an argument. *** The examiner can be very helpful by explaining the ambiguity and indefiniteness of terms used by the inventor, and it is his duty always to be a helper.

On the other hand, there is one point of continual quarrel between attorneys and examiners, upon which I think the examiner should stand firm and with respect to which I think his standing firm will be of the greatest aid to the inventor. This is the matter of definiteness of claim. It is perfectly natural, and is almost the universal custom, that an attorney will undertake to write a set of claims so as to anticipate now-unthoughtof variations of the applicant's invention. *** He will not be so much concerned with making a clear definition of the invention as in anticipating future infringements. *** Widespread as this custom is I am satisfied that it is both unlawful and unwise from the standpoint of the patentees' interests. If the statute says one thing more emphatically than any other it is that the inventor shall definitely point out what his invention is. ***  If this is kept in view by the examiner and the attorney it will inevitably result that the claims are definite and that they are few in number.  ***
It is the function of the Patent Office to simply measure the degree of novelty the inventor has found. The public will measure the value of that degree of novelty. *** The examiner ought to exert every effort to get through with the matter of prosecuting an application. To this end the most important thing is that the examiner's first action should be thorough, not arguing the case but deciding it, and giving briefly the best reasons. His next best action is to insist that the inventor's attorney shall make a real response to the office action and avoid dilatory tactics. I think you ought to be reminded, and I think you ought to be constantly reminded, that you have the right under the law to express your opinion as a judgment, and often to base it on broad grounds. *** You may easily write your letters so that the attorney will see that the criticisms are for the benefit of the applicant, and having done this once there ought not to be further argument about it, although you should be perfectly willing to withdraw a criticism when shown that it is unjust.

Of course all I have said is based on the supposition that the attorney is honestly striving to protect the interests of the inventor. When it comes to the attorney who is not honest, what I have said about sympathy will plainly suggest to you that there ought not to be any sympathy between you and him ***. You can-do no greater favor to the great mass of inventors and to the majority of the attorneys who are well meaning than to call the Commissioner's attention to every instance you find of a breach of professional ethics. I think the time cannot be long delayed when the ranks of the patent profession will have to be purified in order to prevent serious injury to the public interests as well as to the inventors as a class.

No comments:

Post a Comment