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Monthly Archives: May 2014

Adam Corolla Fights Patent Trolls But Anti-Troll Legislation is Back Under the Bridge

By Stephen B. Schott

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Comedian and podcast host Adam Corolla recently visited Capitol Hill to complain about patent trolls. Discussing a patent infringement lawsuit targeting his podcast’s technology, Corolla stated “I’m just a small business … I understand wanting to protect your innovation, but this is run amok.” He also complained that in spending money to fight the litigation, he was losing out on an opportunity to buy a new Lamborghini.

There’s worse news for the former Man Show host, however. Yesterday, Senate Judiciary Chairman Patrick Leahy shelved patent reform legislation, including the anti-troll reforms that had been brewing for months. Despite pressure from the public, companies like Google, andThe White House, Leahy noted that there was “not sufficient support behind any comprehensive deal.”

The groups opposing the legislative reform had been arguing that the reforms would hurt small inventors, stifle innovation, and come just a few years after the most comprehensive patent reform in 40 years. Further, they argued, curbing patent trolls should be the job of the US Patent and Trademark Office and courts.

I will keep you updated on the reforms if they resurface in 2015.

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Show ‘Em What You Got: Patents and the Duty of Disclosure

An Article in Schott, P.C.’s IP Law For Start-ups Series
By Stephen B. Schott

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Have you ever found out about something that you wish you could forget? The forgetting presents a particular conundrum for inventors with applications at the US Patent and Trademark Office. Inventors are often the most knowledgeable people about their inventions and what others are doing in the competing industry. And sometimes an inventor stumbles across a material reference that could decrease his chance of securing a patent. In such a case, what must the inventor do?

The Statute: 37 CFR 1.56 Duty to Disclose

The US Code of Federal Regulations creates a duty to disclose that is defined in part as “a duty to disclose to the Office all information known to that individual to be material to patentability….  [I]nformation is material to patentability when it is not cumulative to information already of record or being made of record in the application, and (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or (2) It refutes, or is inconsistent with, a position the applicant takes in (i) Opposing an argument of unpatentability relied on by the Office, or (ii) Asserting an argument of patentability.”

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The inventor thus has a duty to disclose that he cannot ignore. The rational for this is also given in the regulation, which reminds us that patents are affected with the public interest and “the public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability.”

Consequences of Failing to Meet The Duty of Disclosure 

To inventors, the duty of disclosure often seems counterintuitive. Why should an inventor “help” the patent office do its job? If an inventor finds the public interest rationale to be wanting, he should understand the consequence of failing to meet his obligations.

Failure to comply with the duty of disclosure may result in a party asserting that a patent was secured through inequitable conduct. Inequitable conduct requires proof of:

  1. an affirmative misrepresentation of material fact, failure to disclose material information, or submission of false material information, and
  2. intent to deceive the patent office by the act under (1).

The consequence of having been found to engage in inequitable conduct is that the patent may be unenforceable, and it may allow an accused defendant to argue that it deserves its attorney fees.

Who Has the Duty to Disclose?

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Every person associated with the filing and prosecution of a patent application—while it is pending—has a duty of candor and good faith in dealing with the patent office and, therefore, a duty to disclose material information. These people include inventors, attorneys/agents, and any other persons substantially involved with the application. 

What is Material Information?

Material information includes references (publications, patents, websites, etc.) thata reasonable examiner would be likely to consider important in deciding whether to allow an application to issue as a patent. These include office actions in related and unrelatedapplications.

Material information extends to representations about entity status (for paying lesser fees) and  statements to speed patent prosecution.

The Manual of Patent Examining Procedure sets forth several categories of references to consider citing to meet the duty of disclosure:

  1. References cited in related foreign applications
  2. Information relating to or from co-pending US applications
  3. Information from related litigation

What is Not Material Information?

It is safest to assume that everything is material, but information that is not as pertinent as that before the examiner or merely cumulative of information already submitted need not be cited.

If you are in doubt about whether to disclose something, contact your patent attorney who will help you decide.

If you have questions, contact me.

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Patent Haiku

By Stephen B. Schott

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sea of ideas
many watch from the shoreline
inventors fishing

invent software program
sweat build stress hire build business
Court in Alice says ____

A invents before
B files application first
A’s AIA pain

subject matter test
machine or transformation
incomplete says Court

file wrapper tells tale
estoppel treasure’s the goal
interview hides all

20120403-072403Obama hunts trolls
Congress smells blood in the air
small inventor hurt

Special bonus: Haiku is an invariant noun, that is, a noun that is the same in its singular and plural form. I did not just post several haikus, but instead I posted several haiku.

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