‘Why Do I Need a Patent Attorney?’

‘I hesitate not to pronounce, that every man who is his own lawyer, has a fool for a client’ – an unknown lawyer, early 19^th century.

While the above is often regarded, cynically, as a self-serving proverb promulgated by the legal profession, for better or worse it is almost always true.  There may be no other profession for which lay people are more inclined to persuade themselves that they do not require the services of an expert with years of training and experience behind them.  After all, virtually nobody would dispute the same sentiment if the word ‘lawyer’ were replaced with ‘surgeon’, ‘engineer’, ‘architect’ or ‘pilot’!

And, although patent attorneys (in Australia, at least) are mostly not also lawyers, we are, quite rightly, generally regarded as providers of specialist legal services.  One consequence of this is that there are people out there who wish to avoid paying our fees, and have a go at representing themselves before the Patent Office, and even in the Federal Court.

One such person is Mr Svetko Lisica, who recently lost his appeal against the rejection of his patent application no. 2012200955, somewhat grandly entitled ‘Universal Intonation System For Music, The Absolute and The Beyond’: Lisica v Commissioner of Patents [2014] FCA 433.

Sadly, Mr Lisica had taken it upon himself to prepare and file his own provisional patent application (no. 2011903465), an international application under the Patent Cooperation Treaty (no. PCT/AU2011/000257), and the Australian patent application which eventually became the subject of the Federal Court appeal. 

I say ‘sadly’ because, although Mr Lisica avoided payment of any patent attorney fees, I estimate that the process he has been through has cost him at least A$8500-A$9000 in Patent Office and Court fees.  This does not take into account any incidental expenses he may have had, or the value of his time, energy and stress in taking on the system.  And he has nothing of any value to show for this exhausting experience.

To make matters worse, it seems possible that Mr Lisica might have had something potentially patentable.  While it is difficult to discern from his various patent specifications, which are largely couched in theoretical terms more arcane than those employed by most lawyers and patent attorneys, there are indications that his musical theories may have practical application in the form of new instruments and computer software for assisting in the creation of musical compositions.  There is, however, no sufficiently clear disclosure of any such practical, and potentially patentable, applications of the theoretical concepts.

What Was the Invention?

As most readers will be aware, the scope of a patent – the boundaries of the invention that must be new and inventive in order for the patent to be valid, and the range of activities that will infringe – is defined by the claims.  On an earlier occasion, I published an analysis of one of the claims in the famous CSIRO ‘Wi-Fi’ patent.  If you are unfamiliar with the typical form and interpretation of patent claims, you may wish to look at that article for an example of how the professionals do it!

Claim 1 of the Lisica patent specification, as considered by the court,  reads as follows:

An auscultative method that expounds upon the Natural Harmonics Series (NHS) and Mr Svetko Lisica’s Scientific Theory for Music’s decipherability and attunement, from the Invention’s Programmatic Specificity in a soniferous or visual realm for a new, useful, innovative and original Composition Engine and via its computations, providing the compositional harmonic materials that are put in the states of being manifested by the Invention’s unprecedented and original Musical Instrument and Sonic Biodynamical Brain Entrainment Bridge for Binaural Beats, into a stable unit of measure in exactitude for a tuning medium, herewith this Invention is the state or fact of existence, a practical Universal Intonation System that belongs with Music, The Absolute and The Beyond.

Now, it may well be that Mr Lisica knows exactly what he means by this, but I cannot say that I can make much sense of it.  The Patent Office hearing officer did his very best, stating that:

After reading the entire specification a few times, it appears to me that the heart of the invention lies in some kind of transformation of the partials, harmonics and frequencies in the natural harmonic series or scale to produce musical notes that when played will sound better.

In court, Mr Lisica had the following to say about this summary:

Theoretically it’s good. I believe that there is a transformation, not of the partial harmonics and frequencies. The Natural Harmonic Series, how I’ve applied my scientific theory and how I’ve applied my scientific theory in a manner that’s in an industrial manner as being part of – the transformation occurs as being part of my auscultative method. ... These pitch partials from the Natural Harmonic Series, they don’t exist in the original harmonic series. There might be a few to begin with but the way I unravel the Natural Harmonic Series – none of them are present. They’re not in the original Natural Harmonic Series. So what I’m saying is I’m using the Natural Harmonic Series to base my scientific theory on and then expand upon its DNA.

I have to say that I do not find this especially enlightening, although I clearly lack Mr Lisica’s deep understanding of the subject matter.  Unfortunately, therein lies the problem.

The Need to Describe and Define the Invention

The patent examiner, and the hearing officer, found that the Lisica application was not directed to patent-eligible subject matter (i.e. to a ‘manner of manufacture’ under Australian law).  However, the judge was not willing to draw a similar conclusion, noting (at paragraphs [8] and [9] of the judgment) that:

What is significant at this stage is that the applicant did not support his case in court by any expert evidence, such as might have, for example, explained the area of the useful arts to which this invention would make a contribution and assisted the court in understanding the language of the specification, and importantly, of the claims.

The claims are, of course, critical to the exercise in which the court is now involved. It is here that the applicant encounters what is, for a court operating without the assistance of expert evidence, a fundamental difficulty. In my view, Claim 1, set out above, is not clear and succinct, as required by s 40(3) of the Patents Act. As a statement marking out the area of the public monopoly which the applicant seeks, the claim falls well short of the standard of clarity required.

The judge went on to say (at [11]):

For my own part, because of the lack of clarity in the claims, I have been unable to understand enough about the invention to sustain the positive conclusion that it is not a manner of manufacture. I would prefer to base my conclusion in the present appeal upon the applicant’s failure to cross the bar set up by s 40(3), rather than upon manner of manufacture or any of the other grounds advanced on behalf of the Commissioner.

A claimed invention need not be comprehensible to an unassisted judge – or, indeed, to a patent attorney with minimal grounding in the relevant technical field.  However, it must be possible for a non-inventive person with a normal level of training and skill in the field to understand the invention and, importantly, to be able to determine the boundary surrounding those things that cannot be done without infringing the claims.

Failure to define this boundary clearly is fatal to the claims.  The absence of any sufficiently clarifying explanation within the body of the specification, which might enable the claims to be amended to meet the required standard, is fatal to the entire application.  Any exclusive right in what has been disclosed to the public through the patent specification, the provisional specification, and the specification of the PCT application (all of which differ in various respects) is now lost to the inventor forever.  This material has, in effect, now been dedicated to the public.

Why Is It All So Hard?

Nobody specifically set out to make the patent laws complex and arcane.  But it was inevitable that this would happen.  A patent grants to its owner an exclusive right, for a period of up to 20 years, to exploit an invention.  Competitors, and others, are barred from infringing upon this right without authorisation, under threat of legal action.

In exchange for this privilege, a few things are required of the patent applicant, including:

1. to describe the invention fully, such that a person of ordinary skill in the relevant field of endeavour is able to understand it and, should they wish to, put it into effect; and
2. to define the scope of the monopoly clearly, and as concisely as possible, such that others are able to identify the acts falling within the zone of exclusivity claimed by the applicant.

The inventor or applicant must also establish that the scope of the monopoly claimed is justified by the contribution made by the invention.  For example, the development of a small and specific improvement to a product or technology will not usually be sufficient to support a broad claim to a more general class of improvements.

Only if these requirements are satisfied, and the true scope of the claimed invention properly understood, is it possible to assess whether or not the subject matter of the invention is new and inventive, and eligible for patent protection.

Because a patent confers a monopoly-type right, none of these matters can be left to chance, or to the whim of a particular individual.  Naturally, therefore, over the centuries that patent systems have been evolving various rules, practices and principles have been developed to assist in the objective assessment of inventions and associated claims.  These are to be found in legislation, in statutory rules and regulations, in the decisions made by patent offices, and in the judgments of courts.  And they continue to evolve.

Conclusion – Do You Need a Patent Attorney to Get a Patent?

While the system is imperfect (as all human constructs inevitably are), it is a vast improvement over the days when heads of state granted monopolies at their pleasure to their most favoured subjects!  Although we may never eliminate subjectivity entirely from such evaluations as whether a claimed advance is ‘inventive’ or ‘obvious’, or exactly how a particular word or phrase should be interpreted, I have no doubt that the process is more objective now than it has ever been in the past.

One consequence of all of this, however, is that trying to prepare a patent application, steer it through examination, and defend it before a Patent Office or a court, is not a task for amateurs.  You would not try to fly a plane solo without many hours of training and practice, and most of us would like to think that the pilots of sophisticated passenger jets have thousands of hours of flight experience.

So, yes – if you want to obtain a patent that is worth more than the paper it is printed on, you probably need a patent attorney!

But there is no need to take my word for it.  Here is what the Honourable Justice Jessup had to say in relation to the predicament in which Mr Lisica found himself:

…the delegate observed that “the lack of professional assistance in drafting the specification and claims and in providing meaningful submissions has not helped the applicant”. I agree, and would reiterate the delegate’s comment in the context of the present appeal. From the submissions which the applicant made in court, the prospect that he has invented something of practical use which would satisfy the requirements of the Patents Act could not be dismissed as far fetched. However, in a complex and unusual area of human endeavour, the applicant has placed himself at a considerable disadvantage by attempting to achieve registration without assistance of the kind referred to by the delegate.

Tags: Appeal, Claim construction, Examination, Inventions, Patent Office, Patentable subject matter