A client, who had been refused a patent for a particular step in a moulding process, asked us to examine his patent application. The patent application had been rejected because the examiner was convinced that the particular step in the moulding process in question was commonplace in this field. As a result there was no way that this application could be granted. However, was this really the case?
On careful examination we discovered that the examiner had not provided any documentation to support the opinion that the process in question was commonplace as he claimed. When challenged, the patent examiner stood his ground. So we took the rare step of insisting on a Hearing at the Intellectual Property Office: a bold move that would allow us to make our case to the examiner’s supervisor.
On the day of the hearing the Hearing Officer introduced himself as an expert in the type of moulding technology that was the subject of our client’s patent application. What’s more, the officer explained that he agreed with the examiner that the moulding step in question was commonplace. Not a good start.
We insisted, however, that all findings by the Intellectual Property Office should have a proper evidential basis. The Hearing Officer agreed. The rest of the Hearing was devoted to what would happen once the examiner had provided us with the ‘proper evidence’ to support the IPOs decision. In truth, the outcome didn’t look to be especially promising. In due course, the examiner sent us some prior publications, and it was clear that the Office had been working on a misunderstanding of what the application meant. A careful change to the wording of the application to rule out this interpretation was all that was then required.
The patent is now granted. Our take on this interesting case is that you should never assume that the IPO have all the answers, or hold all the cards, until you see all the evidence.