Patent Office Delay and Inventors Representing Themselves

By Gene Quinn
December 19, 2009

Earlier today I stumbled across US Patent No. 7,631,368, which is titled Combined concealed carry holster undergarment and outergarment with quick release and quick access mechanisms.  This patent is one that offers a number of lessons, both for inventors and for those who are seeking to reform the US patent process.  The lesson for inventors is a cautionary one; namely be extremely wary about representing yourself.  Inventors who represent themselves always wind up with rights more narrow than they should.  The second lesson relates to needless delay.  This particular patent application was filed on August 11, 2004.  A restriction was made on September 30, 2008, which is over 4 years after the application was filed.  The application wasn’t even assigned to an examiner until June 25, 2009!  So when this patent issued on December 15, 2009, it was entitled to 1218 days of additional patent term as a result of Patent Office delay.  To make matters worse, the inventor opted out of publication so this patent remained a secret throughout the entire process.  We were supposed to end submarine patents, not guarantee them through Patent Office delay.

Several images from US Patent No. 7,631,368

Several images from US Patent No. 7,631,368

 




While I cannot know for 100% certain, after reviewing the patent and publicly available information from the Patent Office PAIR System, it seems relatively clear that the inventor on this patent represented themselves.  There is not patent agent or attorney listed, and the interview with the patent examiner was conducted with the inventor alone.  Yes, inventors can represent themselves, but it is never a wise thing to do.  When inventors represent themselves they invariable achieve rights that are far more narrow than could have and should have been obtained.  You can save money representing yourself, but obtaining a patent that is so narrow that it could never be enforced and would be extremely easy to get around makes the entire process little more than an academic exercise.

The chief lesson to be learned here is simple.  The more you put into a claim the more narrow a claim will be and the less likely it is that you can prove infringement.  Patent infringement is what is referred to as an “all elements” test.  In order for their to be infringement the accused infringing device must have each and every element of a patent claim.  If one element of a patent claim is missing there is no infringement.  For that reason, long and detailed claims provide little if any meaningful exclusive rights.

So frequently when I see a patent obtained by an independent inventor who proceeded without the assistance of a patent attorney or agent I see extremely detailed claims that will be rather easy for a copy-cat to get around without actually infringing.  While this is unfortunately common, I don’t know if I have ever seen a claim as detailed, limited and well as useless as the sole claim in the ‘368 patent.  Here is claim 1, the only claim in the issued patent:

The invention claimed is:

1. A universal compression undergarment concealment holster apparatus worn under a users clothing, for the concealment and simultaneous carry of more than two weapons and other items, and the process that permits for said weapons and other items located in said apparatus to be safely carried and quickly drawn from the users outer clothing from over 12 conventional modes on the human body (under the arm on either side thereof, on the chest thereof, on either leg thereof, on the back thereof, on either waist thereof), without the need of special or additional fixtures, said concealment apparatus having safety straps integrated with a quick release mechanism to keep said items in place and resist inadvertent removal or slipping out of said holster apparatus, until removed by the user, said apparatus comprising: a holster body connected to a concealable undergarment having elongated fastenable receiving pockets extended along its length and releasably opened at least at one end or both for inserting and securing a weapon or other items placed in said releasable holster pockets; an elongated material stronger or equal to that used in manufacturing of the undergarment body, forming that of the holster body, having two or more spaced detachable and convertible pockets for allowing a variety of items varying in sizes within the holster body to be carried; a compression undergarment concealment shirt holster with a quick release and detachable gun retention device; said holster shirt apparatus made of a soft material with a snap fastener retention device for applying pressure to a handgun in the holster to resist inadvertent removal of a handgun or other items located in said holster; a handgun retention strap is releasably secured to the undergarment and the holster; wherein said fastener comprises a releasable fastener mechanism for releasably securing and removing said weapon or other items into the holster body; said holster shirt apparatus covering a majority of the upper body; said holster shirt apparatus providing multiple modes to carry a weapon and other items in a concealed manner, removably securing a weapon to the upper body having an opening and removably retaining fully loaded hand guns under either arm, chest, lower back, and waist of a user; said apparatus includes integral holsters stitched and fastened using alternative fasteners to secure said holsters to the compression undergarment having receiving pockets; said holsters combined to the compression undergarment having receiving pockets, said pockets capable of being used to carry a weapon (handguns of various brands, styles, sizes, and shapes) and other items, not limited to handcuffs, extra ammunition and the like; said garment also having interior and exterior pouches for the insert of ballistic panel batons, flashlights, knives, gloves, cellular telephones, radios, pens, and other similar items simultaneously under each arm or on other various locations undetected on the upper torso of the body; a compression concealment undergarment shirt which includes integral holsters stitched and fastened using alternative fasteners to secure said holsters to the compression undergarment having multiple receiving pockets per side, said pockets having a detachable and releasable center core locking mechanism to support the weapon, alternatively said mechanism can be stitched horizontally, in circular, or Z shape, or releasably snap fastened; said holsters having receiving pockets having a releasable fastening mode comprising hook and loop fastener, snap fasteners, or other alternative detachable fastening modes, to allow for the detachable closures of the top and bottom opening of the holster pockets; said pockets partially stitched and detachable with a snap closure to allow for a side release or draw of a weapon from said holster; one location allowing for a frontal upward draw or release of a weapon; one said location allowing for frontal downward draw or release of a weapon; one said location allowing for a rear upward draw or release of a weapon; one said location allowing for a rear downward draw or release of a weapon; said pockets capable of being transformed to carry other items such as handcuffs, gloves, extra ammunition, without sagging from the weight of a fully loaded weapon and the weight of other items in said holster; said undergarment manufactured with a stretchable aramid or para-aramid fibers, fiber reinforced polymers and the like which protect the wearer against sudden unexpected attacks by a blunt trauma object or projectile, and capable of protecting its user from cuts and slashes; wherein said material is fire retardant; a combined concealment undergarment shirt holster system and outer garment shirt with quick access detachable fasteners featuring a resilient material manufactured to form a wearable outer garment worn over the undergarment compression shirt holster system; said outer garment having an opening at a central point within its length to allow quick unobtrusive access to a weapon or items located inside the undergarment holster; said outer garment comprising releasable fasteners in the form of hook and loop fasteners, snap fasteners, or other alternative detachable fastening modes that are comfortable and convenient for the wearer; the outer garment conceals the weapon(s) from view in a secure manner, while the weapon(s) are in an accessible location on the body unknown to a careful observer.

There are many old sayings that explain that you simply cannot help someone who doesn’t want to be helped, and all of those are true.  Frequently it seems that those inventors who proceed alone think that they know better, patent attorneys are over priced and unnecessary and they can do a better job than any patent attorney.  The reality is that writing patent applications and particularly drafting patent claims is an art that requires many years of training, a great amount of skill and knowledge about the law and how it is being applied by the Patent Office, in the district courts and at the Federal Circuit level.  While inventors may be tempted to think they can do a better job, the reality is that this is just a fantasy.

Inventors know the invention best and can play an important role in the drafting of a patent application.  But like any functioning business, the patent process works best when people focus on what they do best.  Inventors who work on patent claims and draft patent applications on their own are not doing what they do best.  While it may be difficult to let go and trust, finding a patent attorney or agent that you can work well with is the best approach to obtaining a patent that has meaningful exclusive rights attached thereto.

In terms of the delay here, there is no great secret that for the years 2004 through 2009 the US Patent Office was enormously dysfunctional.  This issued patent and the inexcusable delay is merely an example of what went on during this time frame.  The patentee accumulated 1091 days of additional patent term just because of the ridiculous and inexcusably long wait for a restriction to be given.  Luckily this patent is not one that could be used to hold up an entire industry.  My guess is that in the coming year or two we will see important innovations where publication was opted out, and with extraordinary additional patent term added as a result of Patent Office delay.  We will see a new era of submarine patents, and that will cause a lot of problems.

Patent Office delay and mistakes of the past are exactly why Congress needs to give more money to the Patent Office, increase its 2010 budget and not impose a National Innovation Tax!

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 5 Comments comments.

  1. New Hire December 19, 2009 5:46 pm

    It’s office policy for examiners to recommend that pro se apps get representation; there is a standard form paragraph for situations like this. Unfortunately, there’s not much incentive for us to do so. I wonder if it might help if the office gave out an extra examining hour or two for an examiner to call up the applicant, explain the situation, and advise these pro se guys to get help.

  2. Rob Cashman December 20, 2009 9:30 am

    I’m so sorry. I saw the claim and after reading the first few lines I already felt bad for the inventor. Clarity is certainly a virtue, but not here. Sorry for the plug, but my firm, Cashman IP Law, will be opening its doors at the end of April 2010; I’d be willing to help people like this fix these kinds of mistakes, pro se or not. -RZC

  3. Just visiting December 20, 2009 11:28 pm

    Assigned June 25, 2009 and issued December 15, 2009. To me, that is an Examiner that got an incredibly easy two counts.

    Actually, besides the “pro se” angle, this is a great example of the USPTO just not caring about doing a god job. A good examiner should have strong implored the inventor to get professional assistance. That aside, the claim should have been rejected under the 2nd paragraph of 35 USC 112 based upon some awful claim language.

    Also, it would have been a bear to write, there is probably a 103 rejection to make.

    What is scary is that this examiner has over 50 issued patents to her name. She should have know better.

  4. steven December 25, 2009 6:25 pm

    I think in many cases inventors need IP lawyers but all IP representation is not all that it is cracked up to be, see our experiences below. I also do not agree that it is the USPTO examiner’s role to tell an inventor that they should have representation. We had one examiner include similiar language in his first office action mainly just to beg us off pushing ahead – this patent was issued with minor changes after we argued and won most of his prior art citings.
    My partner and I have been granted two patents and have another 14 patent families in the application pipeline. We spent over $30,000 on a nationally known IP firm back in 2003 to get our first patent application filed. We did a majority of the leg work and much of the repackaging and did not feel like we received much value for the money spent. We decided to go through the office action/amendment process ourselves – turns our the claim set our lawyer wrote was very flawed — lucky for us, the specification and drawings we generated allowed us to work with our examiner to amend our claim set and ultimately be granted a patent. The patent we were awared was strong enough to be purchased by a major software company.
    We then used another IP attorney for our next few patents – we wrote the patents, he would review, edit, and then draft the claim sets. It turns out, he did such a bad job on our claim sets, we have had to work very closely with our examiners to get an issued patent. By the time we found our current IP attorney, who is less of our lawyer but more of an advisor, we have evolved into very competent patent team. Our current lawyer has over 20 years experience, is a named partner in a Bay Area firm and he has said on numerous occasions that he would put our work up against any of his 3rd year patent lawyers.
    Every inventor is different and every situation is different. If we were forced to use a lawyer on all of our appications, instead of 14 families of patent applications still in the pipeline, we will have four. The best move we made was to shift the role that our IP lawyer played – it forced us to learn and improve, and in doing so, we gained a better understanding of our applications, that is serving us well during the office action process.

    BTW – I very much like your blog site and appreicate it greatly.