Chapter 152: How climbing a mountain is like examining a patent

The following was used as my law school personal statement, and is based on my post about climbing Gokyo-Ri

We had hiked for a week through the Nepalese Himalayas to climb a mountain named Gokyo Ri. Less than two hours from the summit and the possibility of watching the sun rise behind Mt. Everest, I was freezing, dizzy and severely deprived of oxygen. I had paused to catch my breath amid the rocky landscape when I was struck with a realization: occasionally, climbing a mountain is a lot like examining a patent.

The cold and altitude were forcing me make a difficult decision. Despite wearing every item of clothing I had packed, I could feel my body temperature falling. Any attempt to quicken my pace and burn more calories was met with severe dizziness and nausea. The only cure for severe altitude sickness is to turn around and head down the mountain. Turning around meant I would not make it to the peak, but continuing meant the symptoms of altitude sickness would only get worse. A mountaineer is often forced to judge rationally and calmly how far he can safely climb and to turn around before he puts himself in danger. I was at that point. It hurt my pride to retreat, but it was too dangerous to continue.

Patent examiners face similar decisions. Examination requires fierce negotiation between an examiner and an inventor’s patent attorney. The examiner rejects the patent using prior art, and the attorney argues or amends the claims to narrow the scope of the protected invention. The attorney’s job is often to get the patent their inventor wants but not necessarily the patent their inventor deserves. The overwhelming majority of the responses I receive from attorneys will delineate, for dozens of pages, the various ways in which the attorney thinks that I am wrong. Sometimes the attorney is correct; I withdraw my rejection and give them a patent. More frequently, the law and prior art support my position. The examiner’s dilemma is the same as the mountaineer’s: “Can I keep going? Should I keep going?”

One particular attorney was so vigorous in the defense of his application that he appealed me to our internal Board of Appeals. The patent office takes appeals very seriously because they can take years and cost both sides large amounts of money. This specific attorney argued with thunder and lightning that my rejection of his patent in light of a research paper was both wrong and nonsensical. I have dealt with aggressive attorneys before, and in this case he was attempting to hide the fact that his position was based on simple semantics. His invention was quite similar to the one presented in the research paper, just with different names for the various components. I wrote up a defense describing the equivalence and stood firm against his appeal. The patent has yet to issue.

I did not turn around that morning on Gokyo Ri because it was hard. I turned around because I saw no possible way of continuing safely. I approach examining patents the same way. Stubbornly holding a good patent hostage may cause financial ruin to fledgling inventors, but allowing a bad patent to issue may stifle innovation and tax entire industries. Knowing where to draw the line requires careful attention to the changing nature of both technology and patent law, and this constant flux is the primary reason I am interested in law as a profession. Mountains I know how to climb do not intrigue me; mountains I do not know how to climb are the ones that cling to my imagination.

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