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Vol 2 Issue 1 

Jan 2002

In this Issue

Welcome

Patent Strike ForceSM

Hear no evil, speak no evil, get no patent!

Interesting Patent Case

The "Gee I didn't know" defense

IP Links

IP Glossary


Welcome

This is the 10th issue of Directions, a newsletter from TechRoadmap Inc. discussing intellectual property issues and ideas. We hope to stimulate you to examine and improve your own IP practices. This month's issue returns to that old problem, the on-sale bar, compounded by less than forthright behavior. Please share this newsletter (see copyright notice below) and to provide feedback by e-mail to: bruceahz@techroadmap.com

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Patent Strike ForceSM

Hear no evil, speak no evil, get no patent!        

While most of my clients know that lying outright in their patent application materials can get them into trouble later, some people seem to think that ignorance of the law or keeping certain information hidden is okay. Time for a reality check: as an inventor (or management in the inventor's company) you have a duty to be candid with the patent examiner right up to the day your patent issues. Let your attorney instruct you on the specifics, but in layman's terms, when you are asking the patent examiner to give you a 20 year monopoly you are expected to provide any and all relevant information that will help him or her come to a decision...at least the information that you have uncovered or already know. The patent law is not trying to be unreasonable; if you developed your invention in a vacuum, fine, but if you searched through other patents, read journal articles, or examined a competitor's product you are expected to tell the examiner what you found out in that process. Withholding anything reasonably relevant fails the test of candor.

If "speaking no evil" can get you into trouble, perhaps it's not a surprise that "hearing no evil" doesn't wash either. An individual inventor can perhaps be excused for ignorance of the law, but a patent attorney has no such excuse. As this month's patent case shows, An attorney who works on a "don't ask, don't tell" basis with a client is not serving his or her client well. As the Appeals Court makes abundantly clear in this month's patent case, attorneys who plug their ears when they hear potentially damaging things coming from their clients or who fail to appraise their clients of the duty of candor will find the Court an unsympathetic listener. More damaging, the Court clearly believes that an attorney who claims "I wasn't told" is either being less than candid or less than competent.

When it comes to being candid with the patent office the best advice is, err on the side of disclosure:

  • If you've seen any form of prior art, provide the details - your attorney should be more than happy to explain your duties to you. Pay attention.

  • If you have already sold your invention, keep careful records - your attorney should probe you about the details of any prior sales and the more facts you have, the better advice you will get..

  • Keep your eye on the prize - remember that your goal is not to get a patent issued by hook or by crook. It is to own an enforceable patent that has commercial value. A patent invalidated is money down the drain.

Nothing in the preceding article should be construed as legal advice. TechRoadmap Inc serves as an interface between companies and their legal counsel.

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Interesting Patent Case
The "Gee I didn't know" defense.

This month's case involves a company, Brasseler, whose patent was found invalid when it tried to sue Stryker Corp. for infringement. Stryker successfully argued that Brasseler's filing date was more than a year after the first sale of invention. Having lost both the original case and an appeal, Brasseler was now trying to avoid the district court's award of attorney's fees to Stryker. Normally, Stryker would not be entitled to such reimbursement, but it argued for it saying "Brasseler had breached its duty of candor and disclosure to the PTO by: (1) unreasonably failing to investigate the sale of the invention;(2) applying for a patent without disclosing the "on-sale" facts; and (3) unjustifiably suing Stryker despite knowledge of the patent’s invalidity." The District Court agreed and Brasseler was now asking the Appeals Court to overturn that decision.

The basic facts of the case are, to say the least, interesting. Brasseler asked a company, DSM, to help develop a special saw blade. Then, on April 13, 1992, DSM sold over 3,250 of the blades to Brasseler. Twelve months later Brasseler instructed its attorney to prepare and file a patent application. On April 27, 1993, Christopher W. Brody, an associate with the law firm representing Brasseler, apparently was instructed by Robert L. Price, his supervising attorney, to prepare a patent application covering the blade. Brody was instructed to file the application by April 30, 1993, to avoid "a potential on-sale bar of May, 1992." During the two days Brody spent preparing the application he made no inquiry about the details of the sale. The application was filed on April 30, 1993, and issued on April 26, 1994, as U.S. Patent No. 5,306,285 ("the ’285 patent"). Neither Price nor Brody ever conducted an investigation into the facts surrounding the potential May on-sale bar, and Brody claimed not to have learned of the April 13, 1992 sale, or any event which might have given rise to the rushed filing, until the sale became an issue in the initial proceeding before the District Court.

Both the District and Appeals Courts viewed Price's and Brody's stories disingenuous at best. While not directly accusing them of lying, the district court found that the alleged May 1992 on-sale bar date had no basis in fact and instead had been concocted by Price simply to set a deadline for Brody’s preparation of the application. The district court also found that the April 13 sale was the event that prompted "someone" to contact Price, who "decided to get the patent application quickly filed and hope for the best. So, he simply gave Brody a deadline, and Brody evidently picked up on the problem, as evidenced by his studied refusal to make even the most basic inquiries…."

The District Court thought Price and Brody’s failure to take "ten minutes to verify basic filing deadline information." was incredible and noted with great skepticism that Brasseler even failed to provide evidence explaining who at Brasseler contacted Price and what event prompted the rushed filing of the application. The Court further noted that Brody was in direct contact with the inventors in the course of preparing the application, particularly while preparing the post-filing inventor’s declaration, yet he could not recall having discussed any potential bar events.

The District Court found Brody’s responses lacking in candor, stating "[h]e tiptoes around" the truth. The court concluded that Brody did not conduct a post-filing investigation because he was reluctant to learn the specific facts pertaining to earlier sales that he would have been obliged to disclose to the PTO.

The Appeals Court didn't like the fable either. It points out that on one hand, Brasseler argued that Price and Brody could not have known that the sale was material and could not have possessed the requisite intent to deceive because the inventors had failed to apprise them of the specific sale, while on the other hand, without the attorneys informing them  the inventors could not have appreciated that the sale might give rise to a statutory bar and, therefore, failed to understand that they were under a duty to disclose this information. The Appeals Court roundly rejected the circular reasoning of "it's okay not to ask, if you haven't been told and it's okay not to tell if you haven't been asked".

The Court pointed out that "In Hennessy, we warned that 'one should not be able to cultivate ignorance, or disregard numerous warnings that material information or prior art may exist, merely to avoid actual knowledge of that information or prior art.' ... Where one does, deceptive intent may be inferred."

Needless to say, Stryker had its attorney's fees paid.

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IP Links
US Patent office Searchable database of all US Patents and, now, published patent applications.
The Patent Cafe - an on-line source of interesting insights into current IP issues.
EKMS Inc. - a company with whom we've worked that provides a range of IP management services including portfolio analysis, deal-making, and process improvement.

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IP Glossary

Industry's Best Glossary

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