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Downing IP was approached by a US patent attorney who needed some help. The US attorney was working with researchers who were setting up their own business around a product idea they’d had while working at Stanford University. Stanford were pursuing patent applications in the US and Europe before licensing the product rights to the researchers.
The product is a nystagmus detection device. Nystagmus is a disorder affecting the balance organs, which affects the individual’s ability to coordinate their eye position with movement of their head. It causes an involuntary movement of their eyes, which can be very distracting. It is also intermittent, which means that if the person who is experiencing it goes to their doctor, the nystagmus may not be present and affect them at that time. This can make it tricky to diagnose.
The researchers had invented a wearable tracking device that allows an individual to go about their usual daily routine for a few days, including sleeping, with the device fitted. The sensors are located on just one side of the head and are used to detect a tiny electrical signal which is characteristic of the eye position. Their design overcame several of the challenges with existing tracking devices that were on the market.
The EPO (European Patent Office) had issued a summons to attend a hearing, with a view to rejecting the patent application. The view of the patent examiners was that the application’s definition of the invention wasn’t sufficiently distinguished from the known devices. The Summons had also been sent quite early in the process because they didn’t feel that the applicant was engaging with the objections enough.
The US patent attorney got in touch with Downing IP following a recommendation from another European patent attorney that they had worked with. This case was outside that attorney’s technical expertise, so they recommended us for the task.
The first thing that Michael did after getting involved in the case was to arrange several in-depth discussions with the inventors over the course of a few weeks, to immerse himself in understanding the technology and the problems that their design overcame.
These conversations were the most important step in the process, to provide him with detailed knowledge of the device. This is an aspect of the work that Michael thoroughly enjoys, talking to inventors about their inventions and learning about an entirely new field!
The EPO had found what they thought was a similar device in their initial searches. As a result of the information gained from the conversations, we were able to provide an initial response to the EPO to explain the difference between the earlier device they had found and the client’s design, and tighten the definition of the invention so as to reflect that.
The aim of that response was – we hoped – to let the EPO cancel the hearing and allow the application. We didn’t quite manage that, the examiners still had some concerns. So the hearing went ahead, and based on those extensive conversations Michael was able to re-iterate the distinctions and extract a clearer explanation of their concerns from the examiners.
As Michael was fully aware of the nature of the new design, those concerns could be resolved on the spot, and the examiners at the EPO agreed there and then that the application could be allowed. The EPO’s official wheels are now turning and grant is expected soon.
