Patent Practice Tips

Here are a few Patent Practice Tips, with a little help from the Arab Society for Intellectual Property.

A little background. Last week – in the wake of Hamas's murderous attack on Israel – Talal Abu Ghazaleh, who is the chair of the Arab Society for Intellectual Property, gave an interview on Lebanese TV, where he commented on many things Jewish. (I'm not going to rehash it; a link to selections from the interview with a translation/summary from MEMRI, as well as some of my impression, are in a previous post: https://www.dhirubhai.net/posts/jmrosspatents_while-israel-deals-with-the-aftermath-of-activity-7121773403144896512-OVA6.)

Abu Ghazaleh has since issued a response (the image below is a screenshot of https://www.agip.com/statement; if the website isn't there, see the end of this post), which I'm not going to comment on. But I think the response itself is a good springboard for a discussion about some important points in patent prosecution.

MPEP 2129: Admissions as Prior Art/MPRP 2141.01(a): Analogous Art

Abu Ghazaleh claims that he was just quoting what a German friend told him in confidence about the Holocaust, and feels he is being "punished" (how?) for someone else's position. That's a fair point, but it wouldn't hold up in front of the USPTO. Bringing up prior art in the specification is often an admission that it's relevant. And the applicant's own statements are instructive as to whether or not a piece of prior art is "reasonably pertinent."

The MPEP is clear that hiding behind the "I'm just telling you what someone else" excuse doesn't hold up. When you bring something up without disavowing it, the assumption is that you agree with it. While Abu Ghazaleh didn't take credit for anything he said about the Holocaust, he was more than eager to endorse what his friend said. The USPTO wouldn't let him backtrack from that position.

MPEP 714.02 & 714.03: Replies need to be fully responsive and a bona fide attempt to advance prosecution

While any comments about the Holocaust are of course shocking and generate headlines, Abu Ghazaleh covered a lot of ground in his interview. He only substantively dealt with what he said about the Holocaust, and ignored the other offensive things he said. Whether or not what he did say was a bona fide attempt at anything is debatable, but his reply as a whole was not complete.

MPEP 2111.01: Words are given their "plain meaning"

One of the perks of being a patent attorney is the right to be your own lexicographer – words means whatever we want them to mean. But this Humpty-Dumpty privilege can't be exercised at will. You first have to say what you want the word to mean, and then stick with it. Otherwise, words are given their "plain meaning," i.e., their ordinary and customary meanings. Abu Ghazaleh calls himself a "Semite," and claims he's not an antisemite.

(Actually, he claims he's not an "anti-Semite;" the International Holocaust Remembrance Alliance favors the non-hyphenated form of the word to avoid people trying to sow confusion or obfuscate their hatred of Jews. Nice for him to provide us with a case in point.)

The plain meaning of antisemite refers to hatred of Jews, not of those who speak a Semitic language. Abu Ghazaleh is free to use the word however he pleases, but the MPEP requires that he first "set forth a special definition…that differs from the plain and ordinary meaning it would otherwise possess."

MPEP 2128: The Internet Archive's "Wayback Machine"

Websites are considered printed publications, but how to prove what was they said in the past? The Internet Archive maintains a timestamped, digital archive of websites as they existed at specific points in the past, and the USPTO assumes the timestamps are reliable. When you encounter a prior art website, you can head over to web.archive.org and check out what was disclosed at the relevant date.

If you want the website preserved to be used as future prior art, you can save the page in the archive. For example, Abu Ghazaleh's response was offensively unconvincing, and at some point he might want to delete or change his statement to deny he ever said it. (Far be it from me to arbitrarily accuse someone of being dishonest, but I'll give myself a pass when the person in question advocates for my deportation and agrees that my very existence justifies Hitler's extermination of six million Jews.) Luckily, some forward-thinking person (we'll never know who ??) thought this might be a possibility, and added the response to the archive (https://web.archive.org/web/20231023142521/https://www.agip.com/statement).

I hope you find this little guide helpful. And my thanks to Talal Abu Ghazaleh for his help.