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Patent Pending Made Simple is a podcast for inventors who are looking to learn more about the patent process
Hello and welcome to the Patent Pending Made Simple podcast. I'm your host Samar Shah, and with me is Jamie Brophy. Jamie, how are you? Hey, Samar. I am good. Happy Halloween. Happy Halloween to you as well. Do you have any plans? Are you dressing up as anything? I'm not dressing up and, you know, my kids are older than your kids, so my kids all have plans with their friends, so they're gonna be gone.
So my husband and I are just gonna go out for a nice dinner, so. Yeah. What about you? Well, we'll see how this one goes, but every Halloween I've had has been trick or treating with my kids, but one of my kids is finally old enough, so we've invited a few of her friends over and I don't know if they're gonna ditch me, and go trick, trick-or-treating by themselves.
So I don't know how it's gonna go, but, I'm. Cautiously optimistic. I'm still part of the crew. Yeah. Yeah. Well, good luck with that. Yeah. , My youngest, my 12-year-old is getting together with a bunch of friends and he asked me if they could all spend the night after they trick or treat and I said, absolutely not that I do.
I don't need seven, 12 year olds hopped up on sugar at my house all night long. No thank you. No, no. Not the day for that. Nope. You guys can all come over on Saturday night. That's cool. Right, right. Yeah, this is funny because I don't ever remember trick-or-treating with my parents. It's always been with my friends, but with my kids, them being so young, it's opposite.
So we'll see how it all goes. Yeah. Well I hope you guys have fun. It's a fun night. Yeah. Yeah. I think I'd be happy with either option, right? If I'm a part of this, it's great 'cause I like hanging out with my kids and if they're old enough and I can just go out to dinner with my wife, that's great too.
The in-between, you know, we'll see how it goes. Yeah. You're in the unsure territory. Right. Well, we have a special Halloween episode. I hope we will be able to publish this in time, because today we're recording this on Halloween day, and I think we're gonna talk about some spooky patents.
Is that right, Jamie? Yeah. This is gonna be a fun episode. So I found this. Article. Article that was on the, let's see, the National Inventors Hall of Fame website. That was about some spooky patents, and they specifically talk about three different ones. So I think we're gonna go through them one at a time and kind of talk about some interesting things with these three different patents.
So yeah, that's our plan. What do you think Samar? Should we get going? Yeah. For our listeners, I hope you guys are. Sitting in a dark room with a flashlight and, you know, a Ouija board and let's get this rolling. Yeah. So speaking of the Ouija board, the Ouija board is the first patent that they discuss in this article.
So interestingly, I mean this OUI board patent. Came out in, 1891. That's when it was patented. They applied for it in May of 1890, and it came out in February of 1891. So that's how quick the turnaround time was back then. But it's just interesting to look at this patent and see how different patent practice was back then.
Like there's a bunch of wording in this patent that would not fly these days. It's first of all. If you're familiar with a Ouija board, the little pointer or the planche is supposed to move around the board, through spiritual means. So they don't really talk about in the patent how the pointer moves.
They just say that the pointer moves. So first of all, that's not really enabled how it operates. And then the claims have some kind of indefinite language in them that would not fly these days. So. The claims say that the apparatus includes a board having the alphabet and numerals and certain signs and figures, so that language of certain signs and figures that would be considered indefinite patent language these days.
And it also says a pointer operated by hand. In the manner and for the purpose set forth, and that would also be considered indefinite patent language these days. So just kind of some interesting things. When you look at some of these old patents, did anything jump out at you about this one Samar? Well, I think there's a colorful backstory, which I'd love for you to share.
Yeah, I mean, all those things stood out to me. Mostly I've been watching this TV show called The House of Guinness. I dunno if you've seen this, Jamie, but that's the backdrop that I imagine a patent attorney writing this, right? He's like a in the candlelight, next to a horse stable somewhere, and he is just like, yeah, I'm gonna get this.
That's what I think about for better or for worse. Yeah. I have not seen that, but that sounds interesting. I'll have to check that out. Yeah, it does have an interesting backstory. So this article on the National Inventors Hall of Fame website actually links to an article on the Smithsonian Magazine website that talks about, it goes through kind of the whole history of the OUI board and it talks about how they, how they were worried about getting the patent on the Ouija board. And so they decided they needed to go to the patent office to do a demonstration. In this Smithsonian Magazine article, it talks about how the men knew they wouldn't get their patent if they couldn't prove that the board worked.
So they brought the, OUI board to the patent office in Washington, DC when they filed the patent application and the chief patent officer demanded a demonstration and he said if the board could accurately spell out his name, which was supposed to be unknown to the inventors, he'd allow the patent application to proceed.
So it says they all communed with the spirits and the planchette faithfully spelled out the patent officer's name, whether it was mystical spirits. The fact that bond as a patent attorney may have simply known the man's name is unclear, but the whiteface and visibly shaken official awarded bond a patent for his new toy or game.
I thought that was so funny. So they took their invention to the patent office. They did a demonstration and they freaked out the patent officer so bad that he said, okay, fine. You can have a patent on this. Now that's a patent attorney that we can all look up to. That's a heroic effort right there, right way to be prepared.
So, yeah, I guess that's how they did things at the patent office back in 1891. That's right. it was at different times back then. Yep. I, I can certainly imagine that they had some guinnesses afterwards. You know, that's where it's celebrating. Yeah. Speaking of House of Guinness, yeah, that's amazing.
I mean, my old firm, there were certainly some senior partners who would have stories about going to the patent office and making a demonstration to the patent examiner or talking to the examiner in person. I personally have never done that. I used to joke with them that like I was so good that I didn't have to go fly out to DC to, to convince somebody, but.
It is a different time. Right. And it's a really fun story about, cool move by. I've patent an attorney. Yeah. Yeah, definitely. Well, I worked at the patent office a really long time ago, and I don't think I ever had any in-person interviews either. I always, we always did them over the phone, but I definitely saw people come in for interviews.
You know, back then we were all working, like in the office. There was no remote work. Yeah. so yeah, I saw every once in a while one of my colleagues would be dressed up in like a tie or, you know, for the girls, like a nice pants suit or something. And I would say, oh, you have a, somebody coming in today, huh?
So, it's definitely a's. Old practice doesn't really happen anymore. That's right. Yeah. Certainly like I practiced in California and Silicon Valley, so flying out to DC was a big deal and an expense for the client, but it was worth it sometimes. But yeah, even when I started practicing video calls weren't a thing like you to set up like a Skype, you know, like something like that.
And it was a thing like, I remember some of my colleagues tried to set that up and you had to like. Get special forms filled and like get a bunch of people to sign off on it and get a computer like set up for it. And the patent office would have to have a computer set up for it. And it was just the thing.
Yeah. People would like wear suits, you know, the attorneys would wear suits for a video call. It was a different time.
All right. So yeah, that's a great story. So we have one, yeah. A Ouija board that. A patent that without this attorney's ingenuity almost certainly would not have been allowed on. I can feel confident about that. Yeah, definitely. And it was kind of shocking to me that the Ouija board patent was so old.
I mean, 1891 Ouija boards are still around, you know? So yeah, it's kind of. Kinda interesting that they've been around for that long, so That's true. Yeah. Yeah, that was, an interesting one. Yeah. When you think of a timeless game, Ouija board is not the first thing that comes to mind, but it's a great one.
Yeah. so then the next patent that they talk about in this article is a pumpkin carving kit, which, I think you kind of took a look at that one what jumped out at you about that one? Yeah, you know, I have. Never been a big fan of Kit Patents, you know, patenting a kit just because I have always felt like they were kind of narrow patents and easy to design around.
So I was particularly interested on what they did here and I was like, whoa, this is a perfect opportunity for us to talk about kits. 'cause this comes up, you know, sometimes people call our office and they're like, Hey, I have a medical kit, for example, right? I had another client who had a.
Forensics kid. Right. I had a client who, was a, well, this is not disclosing any confidential, but he's a. Works for a federal agency, let's say like the FBI or the CIA, you can imagine what this is. His job was to investigate financial crimes, particularly relating to blockchain. And he had developed a kit, blockchain, forensics kit.
So there's all sorts of kits out there that you can. Potentially patent and protect. And I always try to encourage my clients to find another way because I think they're kind of narrow, but I was like, yep, this is a perfect place for us to talk about when and why you would want to patent a kit and the limitations of the kit.
So in this case, somebody patented a pumpkin carving kit. You know, you see these at grocery stores all over. They have like knives and spoons and a template, right? For cutting out. Jacko lantern in a pumpkin. So that's what he did. And they protected the kit. The claim is having an instruction book, having a plurality of leaves bound together, an envelope that is bound into the instruction book.
So this kit protects a first set of cutting tools, right, suitable for carving features of a first nature. A second set of cutting tools suitable for carving features of a second nature and a pattern sheet with a design and an instruction book that performs three specific functions.
Instructions for transferring the design, instructions for correlating the first design feature, and instructions for correlating the second design feature. So small holes. Think about that with the first set of tools like drills and then long cuts, right? Like that you'd make like the triangle shapes with the saws.
So that's. What the kit is all about, J If a client came to you and said, Hey, I have a kit for carving pumpkins or for something else, what would your first reaction be? Yeah, I mean, I would try to take a look at all the pieces in their kit and see if any of those are patentable on their own. But yeah, I mean, I think the only reason to get, you know, to try to get a kit claim is if none of those pieces is patentable on their own.
If the actual invention is like. Putting everything together in a kit, which, doesn't seem super patentable. But kit claims are tricky. And like you said, you know, they're usually easy to design around. Yeah, that would be my first instinct too. And I've done this with other clients in the past where it's like, let's open up your kit, like let's examine each piece of the kit individually and if there's something patentable about these things individually, I'd prefer to.
Put a patent together on that individual thing, right? Because that's a broader patent. And this goes back to patent claims being counterintuitive again, right? We've talked about this in the past, but the more ground, the more stuff your claim covers, the narrower your patent is, or your claim is in the fewer things that your patent claim covers, the broader
it is harder for somebody to design around it typically, but if you have a claim like this where you have. Claim cutting tools, a pattern sheet and an instruction book. Somebody would have to do all of these things to infringe the patent. So I can totally imagine an enterprising competitor being like, oh, we're just gonna, have a kit with a tool.
These tools, right? And a pattern sheet. But maybe the instructions are online and bam, you've gotten around this patent potentially so. It gives somebody too much freedom to get around your patent and that's not a great patent generally to have in this case. I don't even know if that's patentable.
Right? Like if somebody came up with an improved a pumpkin carving kit, would that be patentable? Right. So let's say they have. A first set of cutting tools, a second set of cutting tools, a new pattern sheet, right, that didn't exist before, and no instruction book, right? So you just have to figure it out on your own.
Would that be patentable, Jamie, in your opinion? It doesn't seem like it would be, I mean, just changing the pattern sheet to a different pattern sheet would be just, an obvious modification of this patent that already exists. Yeah, the patent sheet might be a good candidate for a design patent.
But as far as a utility patent, I don't think I would probably encourage that client to not pursue a utility patent application in that case. Yeah. I mean, like when I looked into the prosecution history here, it was interesting because I think even the examiner said that this kid is not patentable, and I think what got them over the edge was the instruction book, actually, because the examiner in the notice of plan said that it's a system that tells you which specific tool to use with which specific pattern, which was this allows an ordinary person to achieve an intricate and exotic result that wasn't possible before.
So you have to. Generally, this is an additional kind of unspoken requirement of kit patents is that you have to enable a utility which wasn't previously possible. So like, uh, maybe in a broader context, like let's say you have a first aid kit. You just found a different set of things to put in a first aid kit, right?
They exist already, but if they allow you to do basically all the same stuff that existing First aid kits do, then it's not patentable. Even if you have new stuff in there. But if you enable a new functionality, right? If you enable, a diagnosis that was previously not possible, or if you can enable something that wasn't possible before a new utility, then you are patentable or patent eligible potentially.
So it's a tricky thing to do a kit patent, but possible. Yeah. That is tricky. I mean, the interesting thing here is like, it seems like the instruction book was the kind of the point of novelty here, but the instruction book by itself probably wouldn't be patentable. So then we're back to a kit claim.
Yeah, exactly. it's bit of a catch 22. It's a narrow patent. But maybe it's worth it for that particular reason. Yeah, I don't know how I would advise a client about this. So if you're a listener and you have a kit and you want literal protection on that kit, I think that's very much possible, assuming you enable some new utility or functionality that was impossible previously.
But if you are trying to decide whether it's worth spending your money on this, that's a tough one, right? 'cause uh, normally we want broad patent protection for our clients as much as possible. This gives too many. Opportunities for somebody to knock you off potentially. Yeah. I mean, the other option with something like this would be like a method claim, kind of basically following the steps in the instruction book.
Yeah. But, again, a method claim is difficult to enforce. So that is a tricky one. Yeah. It's. Also tricky because just a combination of stuff is not patentable by itself. This comes up in recipe patents as well, right? Where like, uh, if you just have like a new recipe for a hot sauce, right?
But like instead of cayenne peppers, you use serrano peppers or something like that, right? That's substitution is not. Gonna meet the obviousness standard, right? So in order to get a patent, you have to show that the invention is novel and non-obvious novel just means that nobody should have done it before.
And maybe you could argue that, hey, nobody's used Serrano peppers, so I should get a, I should meet the novelty requirement, which would be true, but it would be hard to meet the obviousness requirement because the patent office would say, well. these two peppers are known substitutes of each other.
Therefore, you can't meet the obviousness requirement. So if you just swap out tools in this kit, that probably would not be enough, right? You really have to think about a new functionality that you're enabling. In this case, it was intricate patterns that were. not your typical jacko lantern pattern.
Yeah. Interesting. Yeah. All right, so should we move on to the next one, or do you have any more to say about your pumpkin carving kit? Summer? Yeah. No, I think this is good. Yeah. so the last, patent that they mentioned in this article is fangs. So a patented version of artificial fangs. And what caught my attention about this one is that the patent was awarded in 1996.
so I thought that was weird because, these artificial things have been around forever, way before 1996. this comes up occasionally with clients where they're like, well, you know, cars have been around forever. How are people still getting patents on cars?
So, and it's a good question. so, and the answer there is that, you're not getting a patent on a car. it's not like you get a patent. Your patent is for a car. Anybody that sells a car is infringing on your patent because you have a patent on a car. What your patent covers is what is in the claims.
And you know, we've talked about this several times on here before, but the claims are the numbered statements that are at the end of the patent document. And the claims kind of set forth the boundaries of the scope of your protection. So in order for somebody to be infringing on your patent, they have to be practicing everything that's in your claims or in one of your claims.
So I took a look at this. Patent on artificial fangs and sure enough, it's the claims are kind of complicated. So the first claim is pretty long. So the claim is directed to a tooth extension apparatus for extending a person's real tooth in length to have the appearance of an animal fang. And the apparatus includes a tooth cap body, an initially malleable but harden able material.
Of a quantity that is more than enough to fill a cavity in the tooth cap body. So the claim has a lot of details in it. So it's not that this person in 1996 got a patent to artificial fangs. They got a patent to a tooth extension apparatus that has to have all of these features that are set forth in the claims.
So, so yeah, I thought that was interesting. And that was, a good opportunity for us to talk about, Why are people still able to get patents on these things that have been around forever? And the answer is they're not getting a patent on the whole thing. They're usually getting a patent on like a small improvement or a specific, new feature of that thing that's been around forever.
So yeah, I thought it was interesting. Did you look at this fang patent Samar? Did you have any thoughts on it? Yeah, no, I think those were my observations as well. I mean, this is intuitive to me. But maybe it's not intuitive to the listeners. 'cause we live and breathe this every day, but the more crowded the IP space or the product space is the narrower your patent has to be.
Right? Because it's so crowded, right? It like, you have to kind of carve out a very small niche for yourself and the more wide open a space is, the broader your patent can be, right? So this is where that prior art search is often helpful. This is why we recommend people do them before, at least before the non-provisional application is because it helps guide you what level of detail do I need on my patent application.
Because sometimes you may not need a whole lot if you're operating in a white space or a green space, whatever you wanna call it, but you may need a lot of detail like this FANG patent if you're operating in a very crowded IP space. To me that's intuitive, but maybe it's not. Right if you're not and not thinking about this all day, every day.
Yeah. that's right. And if you, are operating in kind of a crowded space and you draft your claims fairly broadly. Then the examiner has a wide range of prior art that they can pick from to reject your claims. They can use it a wide range of prior art references to reject your claims.
Whereas if you're kind of more focused on a specific aspect of your invention, then that narrows the range of prior art that the examiner can cite against you. So., There's an art to it and, it's intuitive to you. It's intuitive to us because we've been doing this for a long time.
But yeah, for somebody that's, you know, not as well versed in patents and how they work and the patent prosecution journey, then that might be kind of complicated. Yeah, that's right. Yeah. And this is why I really like. How we approach drafting patents as well. We don't lock ourselves into any one breadth, right?
We usually try to describe the invention narrowly broadly and somewhere in the middle, because no prior art search is gonna give you a perfect picture of whether you're in a crowded IP space or a broad IP space. But you can be flexible in your document, and if you have written it with a view towards multiple different layers of abstraction or breadth.
Then you can change the scope of the claims down the road. We talked that about that in the claims episode, but that's something that you could do as well to, expand or collapse the scope of your claims depending on the art that's cited against you. Yeah, that's right. And that's, kind of a another factor that goes into.
When we draft the claims is how much prosecution we wanna engage in. You know, if we wanna get mm-hmm. A patent issued fairly quickly, you know, if the client has a limited budget or they just, they need to get a patent as soon as possible, then that is a factor we take into account when we draft the claims as well.
You know, in that case you might wanna draft claims that are a little more narrow and then, maybe broaden them out in a continuation or something like that. So, Those are all things we think about when we are drafting the claims. Yeah. Well, yes, I think we were hoping to keep this pretty light and fun, but we ended up talking about some heavy topics, as we always do, Jamie, but this was fun.
I'm glad we got to, look at some Halloween patents. I don't think I've done a Halloween specific patent, so it's fun for me to look at and explore as a space as well. Yeah, yeah. It was, it was really fun. So, yeah, thanks Samar. We'll have to do some more, holiday themed episodes.
This was a fun one. Yeah. You know, I can think of one client in particular who has a Christmas theme patent that we worked on, but maybe we'll bring her on and interview her. Maybe that might be fun for a feature episode. Yeah, definitely. All right, well have fun and stay safe tonight. Summer.
Happy Halloween. I'm hopeful my kids don't ditch me, but we'll see how it goes. Yeah. Good luck. Thanks. Alright, thanks everyone for listening. Thank you.