Patent Law

Avoiding Consistency Traps

By Gary Odom and Jordan Kuhn

"A foolish consistency is the hobgoblin of little minds." -Ralph Waldo Emerson

At Patent Prospector, we're not shy about speaking out when we see academics, business people, or government officials doing silly things. Because of that, it's really a pleasure to be able to give kudos to the same people when praise is deserved. I believe that the new pilot program designed to promote Examiner interviews before first Office Actions is an excellent idea, which PTO Director Dudas and his team deserve praise for trying out.

The reason that this program makes so much sense is because all of us who have prosecuted have seen how Examiners can fall into a "consistency trap" by taking a position on how an invention relates to the prior art before fully understanding the invention claimed. To be fair to both sides, the lawyers and agents prosecuting the applications sometimes fall in the same trap. Psychologists, professional negotiators, and sales people have documented the consistency trap in many studies over the years. It is a very real psychological phenomenon, one recognized by our Founding Fathers when they closed the Constitutional Convention to the public, thereby giving the delegates more freedom to explore ideas and change their opinions without feeling held to them by published accounts of their speeches.

If Examiners have a chance to ask questions and listen to inventors and their representatives prior to committing opinions to writing, valid claims are going to issue quicker, and with less risk of prosecution history estoppel. Correspondingly, invalid claims are going to be trimmed back or dropped sooner.

Kudos to Director Dudas and his team for coming up with this program. We look forward to hearing more about this pilot program, and seeing how much it improves efficiency by compensating for this quirk of human psychology.

Full post as published by The Patent Prospector on April 20, 2008 (boomark / email).