Rosenberg - Patent Application Drafting

Patent Application Drafting

2016 Edition

Morgan D. Rosenberg

Legal Editor

ISBN: 978-1-5221-0071-3 (eBook)

ISSN: 2329-1419 (Print)

ISSN: 2329-1427 (Online)

Cite this publication as:

Patent Application Drafting [sec. no.] (Matthew Bender, Rev. Ed.)

Example:

Patent Application Drafting 1.01 (Matthew Bender, Rev. Ed.)

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Editorial Offices

Note that the information provided herein is general information, which is provided as reference and educational material and does not constitute legal advice or legal opinion.

Dedicated to Paul McKenna, who unknowingly got me writing again, and to Molly, my intellectual and academic muse.

Richard J. Apley

Former Director of the Office of Independent Inventor Programs United States Patent and Trademark Office

I served as a Patent Examiner at the U.S. Patent and Trademark Office (USPTO), in various art units (i.e., the USPTOs subdivisions for different technology areas) and in various positions, for over thirty years. As a Patent Examiner in the field of exercise devices and machines, I had the pleasure of conducting many interviews with Morgan Rosenbergs father, Mort Rosenberg. Mort Rosenberg and I were both of the old school, he from the patent attorney standpoint and me from the Patent Examiner standpoint, but we both appreciated the elegance and subtlety that went into patent practice.

Back in those days, shortly after the invention of the wheel, smoking was still allowed in public buildings. Not in the Patent Office, because of all of the literal stacks of patents (the vast rooms where patent searching took place were called the stacks), but it was certainly not uncommon to see smoking taking place indoors (and even on airplanes, if you newly minted patent practitioners can believe it). Even if Morts reputation as a patent attorney extraordinaire wasnt known, everyone at the USPTO always knew him on sight. Why? Because he always had an unlit cigar in his mouth. Always unlit, from start to finish, first he would suck on a plastic wrapped cigar, then he would take off the wrapper and suck on the cigar itself, and finally it would become a soggy, disgusting mess and he would chew on the thing. I never saw him spit out a piece of soggy tobacco, thus making me always wonder if he actually ate the damn things. Ill have to ask Morgan about that.

Regardless of this unusual habit, Mort was a top-notch patent attorney and I enjoyed our interviews very much. Both before and after the business at hand, we often chatted about various things, particularly matters at the USPTO. One thing we almost always discussed was how quality seemed to be slipping. Every generation has a back in my day, things were much better general opinion, but the quality of actions being issued by the USPTO (not in my art units, of course) was starting to slide, and the quality of responses I began to see from attorneys was also starting to degrade. We used to sit and hypothesize about why the quality on both ends was decreasing: was it the exponential increase in new patent applications every year, was it fallout from the antiestablishment movement of the previous decade, was it something in the water that was dumbing us all down? We eventually arrived at a satisfactory answer: we had mentors. Mentorship is, unfortunately, an educational technique that now belongs to a bygone era.

Now, two decades later, the mentors have all retired, work from home, or are otherwise inaccessible. We live in a world of high efficiency and multitasking and slow, methodical teaching methods are now viewed as somehow a bad thing. Im now on the side of private patent practice, and this is readily apparent, with the quality of office actions being at an all-time low. Its a rare week when I dont see an office action come from the USPTO that doesnt have glaring mistakes all through it. The logic behind the rejections is sometimes impossible to decipher, the misapplication of well-established law is common, and the technical know-how of the Examiners is often questionable. Truly, this never would have happened in my day.