Happy New Year!
The Satisfaction in a Well-Reasoned Argument
Jeremy Ben-David, Founder, Managing Partner
At the time of writing, we have just emerged from our New Year (Rosh Hashana) celebration, here in Israel and in all of the Jewish communities overseas. I realize that to many, the mentioning of âNew Yearâ and âcelebrationâ will conjure up pictures of parties, mistletoe and the like, while also raising the question of âwhy now? New year isnât until the end of December!â.
The Jewish calendar dates back 5,786 years. It is a lunar calendar, having twelve lunar months, and it includes a corrective thirteenth month every 2 or 3 years so as to ensure that the Jewish spring and autumn holidays always occur at the right time of year; keeping up with the solar calendar. And the date of the Jewish New Year is the 1st day of the month âTishreiâ, which is almost always sometime during September.
As to how we celebrate our New Year, one could compare it to the experience of a person watching the beauty of nature, possibly with a glass of wine in hand, contemplating the problems of the World while enjoying the peaceful perfection that nature brings, all the while enjoying the taste and aroma of that very earthy liquid that mankind, despite its flaws, has produced from said nature.
Our celebration is essentially one of introspection, and is spent both with family and friends at shared festive meals, as well as time in the broader community, in the synagogue. The introspection is universal in nature, and the New Year per se, is considered to be a sort of reset for the universe. Shakespeare wrote âAll the worldâs a stage, and all the men and women merely playersâ and, while I would not include the word âmerelyâ, this is essentially a good reflection as to how the world may be portrayed. The universality that we think about on Rosh Hashana is essentially that of mankind, where different cultures, nationalities and countries, each unique and separate, are woven together like a patchwork quilt.
But there is one element that is essential to all of this; the element of truth. Itâs the acknowledgment of things as they are; rather than the way that I would like them to be or would like to portray them. Or, at the very least, as I believe them to be, using one of the abilities that makes humankind so unique, namely, my ability to think and reason, and to distill such thoughts into words; words which reflect objective truth.
When thinking about such things as introspection and truth, I realized that a recent experience that we had, in obtaining allowance for a patent to which I am particularly close (to be explained) was, in fact, a microcosm of these very things!
(And hereâs where I answer that additional unasked question, and connect these ramblings to the IP profession.)
Said patent allowance was particularly satisfying for me, as this is one of our longest-standing clients, whom I first assisted when both they and I were starting out. I founded our firm back in 1995, and I started assisting this client, as an early startup company, in 1996. The scope of the claim coverage that I wanted for this client when we first filed this latest application was clear. To me, at least. I also felt that it should not be too difficult to get it.
The question that faces all patent attorneys, however, is how much detail to include in a claim: where is the sweet spot between a claim that is so broad that it constitutes mere âhand wavingâ, and a claim that is so narrow that it is a âpicture claimâ?
I should add that the case in point relates to a mechanical invention, a device. As is the case with so may inventions, it relies on certain prior art constructions, and adds a new âdeltaâ of its own. In this case, when drafting the claim, I gave the prior art â which was the clientâs, not that of a third party - short shrift, and the level of detail was, in retrospect, closer to hand waving than to anything else. The additional structure which made this device a patentable invention, was closer to the sweet spot, and, in the end, did not require much substantive tweaking.
But the Examiner pushed back. He did not like the claim. My feeling that he should like the claim as written was clearly irrelevant. I had to deal with his view, not what I thought his view should be. Both we and he were overly focused on the additional structure, what we were asserting should be patentable. His problem is that he wasnât framing his approach in the way that I thought he should. And then I realized that the problem was not with the additional structure, but with the context. Namely, the prior art, to which I had given such short shrift in both the claim as drafted and in the initial discussion.
I was so familiar with the prior art, that I had not bothered to properly define it within the structure of the claim, and that essentially led the Examiner to focus on the additional structure, to the exclusion of the context. I then amended the claim by providing enough of the prior art structure so that the Examiner was able to understand the invention, namely, the new structure, but within its proper context.
So I realized that the process of reaching a common understanding with the Examiner was a microcosm of the type of introspection and the pursuit of truth which characterize Rosh Hashana.
We are exposed to hundreds of pieces of new information every day. Few of them influence my view of the World. But some do. And at this point in history, the new year 5786 seems to have more than its fair share of issues that will affect most people in the World going forward (take your pick!).
As with finding the sweet spot in my clientâs patent claim, any serious consideration of any matter in my life, requires me to look at context. Honestly. And looking at context requires that I look at all relevant history and acquire additional information as may be required.
So this is one aspect of Rosh Hashana. This is what we need to do throughout the year, but failing that, even if we do it seriously at the beginning of each year, thereâs something to be said for that.
Happy New Year!
