One of my children recently “let slip” a strategy for sport sports, which is basically to not lose. This may seem obvious, but it’s actually quite astute: if you can be the last non-loser, then you are, by default, the winner!
The game in question was similar to “tag”, where everyone had to run around the room in a big circle. If you overtook someone, you got a point; whereas if you were overtaken, you were out of the game. As you can imagine, 30+ kids started running around like crazy trying to overtake and score points to win…except my child!
The point here is that my child had picked-up on a flaw in the rules: everyone else assumed that the object of the game was to win the most points, and ergo, by having overtaken more people than anyone else, you would win. However, my child spotted that the real objective was to be last person “in” at the end of the game and that the number of overtakes in the meantime was irrelevant. In other words, the points system was entirely a red-herring, and all you needed to do to win was to not be overtaken.
As such, my child just kept a steady pace, only speeding-up when an overtake was imminent, and conserved energy to stay in the game. Meanwhile, everyone else was tiring themselves out, trying to overtake and win points, and subsequently getting slower and slower (and hence easier to pick-off). My child could have taken advantage of everyone else’s tiring, but just stuck to the plan and kept a steady pace.
When the number of participants was down to just 3, my child still just kept up, waiting for one remaining participant to overtake the other, leaving just 2 in the game. When that happened, my child simply stepped on the gas, scored a single overtake point, and won the game! (The 2nd place player, incidentally, had about 12 points!)
So what’s the moral here?
- Take the time to know and properly understand the rules;
- Trust your understanding of the rules and devise a plan; and
- Stick to your plan, even if everyone else is doing something else.
The moral of the game described above can be applied to many walks of life, including the law, and especially patent prosecution and litigation.
The point is to make sure that you know the Act, Rules, Guidelines and Case Law inside out, and to apply that knowledge to the case at-hand. This could be a wrinkle in the rules (e.g. may vs shall in the legislation; or slightly divergent case law Decisions). Armed with that knowledge, you must then apply it in a logical manner, so that the other side (e.g. the Examiner) can follow it, and so the conclusion you are trying to draw the other side into feels logical, internally-consistent and entirely reasonable (or at least not obtuse or far-fetched).
In a similar vein to the game outlined above, much of the law is based on a presumption of innocence, or other similar concepts, i.e. it is not up to the defence (viz. patent attorney) to prove innocence (viz. patentability), but rather that the burden of proof lies with the prosecution (viz. the Examiner) to prove guilt (viz. obviousness).
Applied to patent law, Examination Reports (Office Actions) simply contain objections and so if you can reasonably overcome all of the objections, none will remain, which will be tantamount to a positive result (e.g. the grant of a patent) for your client.
Effort spent trying to prove that a device is new and inventive can often be counterproductive, especially where the advance over the prior art is relatively small: the more you protest, the less clever the whole thing seems.
It is easy to get focused on trying to prove inventive step in patent prosecution, whereas one might be better off concentrating on the job at hand, which is actually just rebutting or overcoming all of the objections, so that none remain.