THE PROBLEMS of introducing a new design and checking out whether any earlier patents were being infringed was brought home to me as I read a series of papers prepared by a Chicago law firm for the Free Sewing Machine Company some 40 years ago.
Free wanted to introduce a new machine but was worried that its design might create problems with a Norman Wannacott who had patented a similar design a few years earlier.
The Free Company engaged the firm of Schroeder, Merriam, Hofgren & Brady, considered at the time to be in the forefront of patent litigation. The law firm's brief was to examine Wonnacott's patent, decide whether it could be discredited by earlier inventions and whether the Free company would be infringing it if the new product was made.
The result was a 30-page report in which the lawyers discussed patents going back to 1854 before giving their opinions.
Opinion may be too strong a word for what they said was they might, if pressed, be able to try to invalidate the Wonnacott patent but Free might like to play it safe and try to get a manufacturing licence. If this was not possible, going ahead without it might be considered a reasonable business risk.
Sounds very sit-on-the-fence lawyer speak to me. The law firm did have one concrete proposal, however. The partners admitted that they had only scratched the surface with their patent search and recommended that they should be given the go-ahead to make a more exhaustive examination. This, of course, would "incur an expense of a further $400 to $500 ....."
And closer perusal of the paperwork reveals that Wonnacott didn't have an easy ride with his patent application. He first tried for his patent in 1945 but was rejected a year later on the grounds that much of it was unclear, informal or already covered by earlier patents.
In August '46 Wonnacott tried again, clarifying his original idea which all revolved around the position of the supporting post behind the sewing head. The examiners thought it a lot more readable this time but rejected it as the positioning of the post .... was immaterial from a patentable viewpoint.
Wonnacott was back in July of the next year still trying to prove his point and emphasising the amount of work that had gone into experimenting before making the patent applications.
Ten months later the long-suffering patent examiners had had enough. They rejected the application for all the previous reasons and pointed out strongly that the rejection was FINAL.
It took Wonnacott just two months to respond to the "final rejection" with a new set of "amendments" and reference to a personal meeting with the patent examiner. The "final rejection" was withdrawn and the patent allowed
Thanks to Marvin Tabic who provided the report.