In 2017, Womble Bond Dickinson started working with California Lawyers for the Arts (CLA), a California nonprofit that serves as the statewide administrator for the California Inventors Assistance Program (the “CIAP”). The CIAP seemed like a great way for the firm to get more involved with pro bono projects in California and also leverage off of the firm’s expertise in intellectual property law. Dan Ovanezian, a partner in Womble’s Palo Alto office, and Scott Breining, a patent agent in Womble’s Winston-Salem office, recently teamed up and volunteered to assist an inventor in need – Mr. Bill Carpenter. Mr. Carpenter had applied to the CIAP for assistance with a patent application that had already been filed with the United States (US) Patent Office but had received a final rejection.
Mr. Carpenter had invented a system and method for treating wastewater comprising a multi-chambered tank with concentric baffles to more efficiently and consistently provide breakdown of waste.
See U.S. Patent No. 9834461. Such systems and methods may be utilized as decentralized, on-site systems at comparatively low cost.
In 2014, Mr. Carpenter drafted and filed a patent application pro se due to limited funding for his endeavor, which meant hiring a patent attorney at that time was not a possibility. Fortunately, the application was well drafted, the specification fully describing the invention he wished to claim.
Mr. Carpenter’s application was initially rejected by the US Patent Office and Mr. Carpenter engaged the assistance of a patent attorney, who responded to the rejection of the patent application. Unfortunately, a final rejection of the patent application was issued by the US Patent Office. As is often the case, what is easily envisioned in drawings is sometimes difficult to describe in words. The lengthy claims of the patent application were subject to rejection for multiple instances of alleged indefiniteness, in addition to alleged lack of patentability due to prior art patents in the field.
Paying a patent attorney to continue fighting to get a patent granted on his invention was not financially feasible for Mr. Carpenter. Yet, Mr. Carpenter was not yet ready to give up on his invention, and wished to either commercialize the invention himself or license or sell the rights to others. Such licensing or sale could be greatly facilitated with an issued patent. Mr. Carpenter then sought pro bono assistance through the CIAP.
After thorough review of the application and prosecution history, Dan Ovanezian and Scott Breining had a better idea of what precisely Mr. Carpenter had invented and developed thoughts on how to describe the invention in a definite way that would clearly differentiate it from the prior art patents.
Dan and Scott reached out to the patent examiner handling Mr. Carpenter’s application to request an interview in order to discuss the case in detail. Although interviews are within the discretion of the patent examiner following a final office action, the patent examiner granted the request. During the interview, proposed amendments to the claims where discussed with the patent examiner in order to more clearly describe Mr. Carpenter’s invention and distinguish the invention from the prior art patents. By the end of the interview, the patent examiner agreed that the claims as proposed to be amended did not appear to be disclosed by the asserted prior art patents, and that a patent would likely be granted to Mr. Carpenter. After a final Office action rejection is issued, however, an applicant is usually required to file and pay an additional fee for a request for continued examination of the patent application. Dan and Scott inquired whether Mr. Carpenter could avoid the additional fee for filing such a request for continued examination through the use of a pilot program at the Patent Office known as the After Final Consideration Pilot program. The patent examiner graciously agreed to reconsider the patent application under that pilot program. About two weeks later, Mr. Carpenter received great news from the US Patent Office. The patent examiner had mailed a notice of allowance, indicating that Mr. Carpenter’s application would be granted as a patent. Mr. Carpenter’s patent was officially granted on December 5, 2017.
Assisting Mr. Carpenter, as well as other pro bono clients, is a very rewarding experience. Mr. Carpenter recently commented that “[i]f it were not for them [Dan Ovanezian and Scott Breining], and California Lawyers for the Arts, I would have lost three years of long hard work and any possibility of continuing with the prosecution of the patent. Not only did Dan and Scott produce excellent work on a very timely basis, my patent was issued amazingly fast. I definitely could never have done this without California Lawyers for the Arts and Womble Bond Dickinson.”
The CIAP presents a valuable opportunity for patent practitioners to make a big difference in an inventor’s life. It allows patent practitioners to utilize the skill sets in their practice area and provides a feeling of reward upon obtaining a positive outcome for low income and under resourced individuals. We highly encourage practitioners to consider volunteering through their regional patent pro bono programs.