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Duty of Disclosure During Patent Prosecution and Supplementing the Disclosure

Friday, 03 February, 2012 14:01 Written by Mark Malek 0 Comments

By: Mark R. Malek

You may recall that I wrote an article recently which noted that there is a duty of disclosure when filing a patent application in the United States.  For the sake of a quick summary, in return for the exclusive right to exploit an invention, the government requires the Applicant to disclose all prior art known to them in order to ensure a more detailed examination of the patent application.  In other words – no hiding the ball on the Patent Office.

The process in which information is disclosed to the Patent Office is by filing an Information Disclosure Statement (IDS).  The IDS includes a list of all the prior art references that the Applicant believes are relevant to the invention, as defined by the claims in the patent application.  There is a lot of prior art out there, and the best that every Applicant can do is to disclose the prior art that they know about.

The big question is about the prior art that the Applicant discovers after filing the IDS.  Is all lost?  Has the Applicant now committed fraud on the Patent Office?  That depends on how this is handled.  If the Applicant does nothing about the prior art that is discovered, then the likelihood that the patent stands up to a challenge of validity is very, very slim.  In fact, if it can be shown that the Applicant later became aware of relevant prior art, and chose not to inform the Patent Office, it is almost a foregone conclusion that the patent will be found invalid.  Worse yet, the Applicant may be found to have engaged in inequitable conduct, which can lead to liability for attorneys’ fees.

So how does the Applicant avoid this?  By filing a supplemental IDS.  It is exactly what it sounds like.  It is another IDS that supplements the original.  This is simple enough, and a good way to ensure that the Applicant has fulfilled the duty of disclosure to the Patent Office.

I Didn’t Respond To An Office Action and now My Patent Is Abandoned – Now What?

Friday, 27 January, 2012 08:36 Written by Mark Malek 0 Comments

By: Mark R. Malek

If you haven’t noticed, many of my posts lately have revolved around the questions that I get from various clients.  This one was a tough one. Not necessarily from the perspective of not knowing what to do, but having to hear the horror story from this client.  Unfortunately, it is a horror story that I have heard numerous times. I received a call recently from someone that was going the patent process alone.  At least he was until he received a “Notice of Abandonment” from the Patent Office.  How could this happen?  All those years of hard work down the drain?  Is there anything he can do?  Yes.

First and foremost, the patent process is not a simple one.  There are several nuances, and the process itself is very unforgiving.  There really is not much room for error.  For example, the deadlines are real deadlines.  These are not suggestions.  It is not ok to submit something one day late.  That’s not going to cut it in the patent prosecution system.  The one great thing about the patent system, however, is that you always have plenty of time to respond to any issue that may arise during the patent process.

The initial findings as to patentability of your invention are usually contained in an Office Action, which is a decision on patentability as expressed by the patent Examiner.  Many times, Office Actions include rejections of the claims that define the scope of the invention.  There are several ways to respond to an Office Action.  For example, you may chose to amend the claims, add new claims, or simply present arguments to the Examiner as to why the claims as filed define over any prior art that was cited.  No matter what you decide to do, however, you need to respond to the Office Action within three months from the date that the Office Action was mailed.  This is generally the case – sometimes it is two months, sometimes it is one month, and there are always extensions of time that can be filed (for a fee).

As you have probably guessed, if you do not timely respond to an Office Action, the application goes abandoned.  This is outlined in 711.02 of the Manual of Patent Examining Procedures (MPEP).  Is that it?  Is all lost?  Not necessarily.  If your application goes abandoned, there is a mechanism to revive the application.  You can file a petition to revive the application, which is not at all cheap.  The same section of the MPEP mentioned above also outlines the two types of petitions to revive – a petition to revive because the application was unintentionally abandoned (the expensive, and more common one) and a petition to revive because the application was unavoidably abandoned (less expensive, but nearly impossible to prove).

Upon filing the petition to revive, along with the appropriate fee, the application will generally be revived by the PTO.  For a petition to revive an application that was unavoidably abandoned, you will need to provide some kind of story as to why the application was unavoidably abandoned.  For a petition to revive an application that was unintentionally abandoned, all you pretty much need to say is “my bad” and the petition will be granted.  Personally, I have only seen one petition to revive for an unavoidable abandonment that was granted.  In that case, it turns out that the Applicant never received the Office Action because it got stuck somewhere in  patent office mail room limbo.  How could you possibly have avoided that?  I have filed plenty of petitions to revive based on unintentional abandonment (these are for clients that have come to me with an abandoned application and a check), and these are generally very smooth and simple to get granted.

The Duty of Disclosure When Filing A Patent Application

Friday, 20 January, 2012 22:24 Written by Mark Malek 0 Comments

By: Mark R. Malek

When people think of most areas of law, they generally picture an adversarial process.  In other words, most areas of law involve two parties in a dispute of some sort and each party having their side of the story that they want a judge (and sometimes a jury) to proclaim as being the correct side of the story.  That is not the case in the field of patent prosecution.  Although it may sometimes feel as though the patent Applicant is on one side of the fence fighting with the patent Examiner, it truly is not an adversarial process.  Instead, it can be better described as a cooperative process wherein the patent Examiner is working with the patent Applicant in order to determine the correct level of protection to be granted from the federal government.

In order to achieve this goal, patent law requires that a patent Applicant disclose the best mode of carrying out the invention, and disclose any prior art that they know of.  Many people come to me and indicate that they do not want to disclose everything about their invention, at which point I have a very serious conversation with the Applicant wherein I indicate that they must disclose all that they know about their invention.  The issue that many of the clients have, and I understand where they are coming from, is that they want to maintain some of their invention as a trade secret.  In patent law, that just about equates to having your cake and eating it to.

During patent prosecution, there is a trade off.  Essentially, the federal government will agree to grant you a right to exclude others from making, using, selling or offering to sell you invention in exchange for you disclosing everything you know about your invention, and also working with the patent office to ensure that the patent Examiner has all the relevant information in order to make a decision as to whether or not your invention is patentable.  This includes informing the patent Examiner of any prior art that you may know of.  That is regardless of whether or not the patent Examiner would have found the prior art during the search that is conducted during prosecution.

This article very much so simplifies the process, as well as the duty to disclose prior art, but there is one thing that I want to leave you with.  That is – your attorney is your ally in this process.  Your patent attorney should walk you through the process and should instruct you to disclose any information that could be considered prior art.  The risk you run of not disclosing relevant information is, in the worst case, invalidity of your patent and, in extreme circumstances, the possibility that a court finds that you engaged in inequitable conduct before the patent office, exposing you to potential liability.  The moral of the story is that you should never think it is a good idea to keep something from your attorney regarding your invention.  I will post additional articles about the importance of your relationship with your attorney and how the attorney-client privilege should encourage you to let your attorney in on everything that you know about your invention.

The Three Most Common Ways to Make Money From Your Invention

Monday, 02 January, 2012 22:49 Written by Mark Malek 1 Comment

By: Mark R. Malek

One of the things that I have encountered over the years is an inventor that comes up with an incredible invention, but that does not know what to do with the invention in order to make money with it.  During my consultations, I generally break down the very complicated business side of inventing to the three most common ways that I believe the inventor can make profit from an invention.  Of course, this article assumes that the invention is patentable, will eventually be granted a patent, and does not infringe on someone else’s patent (many assumptions, but I will discuss those in a future post.)

The first way that I know how to make money on your invention is to manufacture it and sell it yourself.  Why do you need a patent to do that?  To tell you the truth, you don’t.  There is no requirement for you to patent your invention in order to sell it. If, however, you start selling your invention, or otherwise disclose it, and one year passes, you can kiss any hope of getting a patent goodbye.  Suppose that obtaining a patent is not that important to you.  That’s fine, but I guarantee that it becomes important to you once your invention starts getting knocked off and there is no reasonable remedy to stop the knock offs.  Also, one thing that I have notices about trying to launch your own product, i.e., trying to manufacture the product and get the product into a distribution chain, is that the patent is usually the cheap part.  Depending on the invention, just getting manufacturing set up can be extraordinarily expensive.

The second and third ways that I suggest profiting from an  invention does require a patent, or some other protectable right.  Way number two to make profit from an invention is to license a patent covering the invention.  This is usually the case when an inventor can come to terms with an entity or person that desires to make, use or sell an invention that is covered by the inventor’s patent.  In such a case, the two parties can enter into a licensing agreement.  A licensing agreement is an agreement that allows the inventor to maintain ownership of the patent, and grant rights to another to use the patent for some sort of compensation (or other consideration) and for a fixed amount of time.  Licensing agreements are not something that are scratched on the back of a Denny’s napkin in crayon.  They are very complicated, and require a great amount of detail.  If you find yourself in a position where you are shaking hands in a bar and thinking that you have just saved money on your licensing negotiation by not using an attorney, chances are you will be using an attorney in the not to distant future – in a much more expensive lawsuit.

The third way to profit from an invention is an outright sale of your rights to the invention.  This, almost always, involves the sale of a patent.  I have had many conversations with inventors that want to skip the patent process and just go right to the big company (say Johnson & Johnson, for example) and sell their invention for millions.  Really?  What would Johnson & Johnson be purchasing?  The inventor’s thoughts?  It doesn’t really work that way.  An invention inside of one’s head does not result in a protectable right.  Johnson & Johnson does not have any reason to pay for the invention because there is no protectable right in that invention until a patent is granted on it.  Put another way, there are no lawsuits for idea infringement, but there can be a lawsuits for patent infringement.  The above simplistic outline does not discuss other legal remedies, such as theft of trade secret, for example, but that is not really applicable to this situation.

There are several other ways, some more complicated, to profit from an invention.  I will continue to write on this topic, as well as provide some additional details of the above in future posts.  This is just a short intro to satisfy some of the common questions that inventors sometimes have.

2011 Year in Review for Zies Widerman & Malek

Sunday, 01 January, 2012 09:03 Written by Mark Malek 1 Comment

By: Mark R. Malek

2011 was a great year for us at Zies Widerman & Malek, both from a business perspective and a community/family perspective.  I’ll keep the business side short.  The biggest thing that happened for us is moving into our new space in Melbourne, Florida.  The firm outgrew the old office (four offices) and the new space (seventeen offices) more suits our expansion needs.  The intellectual property team of Mark Malek, Philip Zies, Scott Nyman, Mark Warzecha, Gene Quinn (founder of IPWatchdog) and Danielle Roy filed a record number of patent, trademark and copyright applications on behalf of our clients.  Several articles were posted to TacticalIP.  The assumption must be that the articles are well written and contained great information because traffic to TacticalIP has skyrocketed (12,553 visits from September 1 – December 30).  Aaron Thalwitzer, Daniel Davidson and Rene Dial have been instrumental in the success of TacticalIP, and they are thanked.

From a community perspective, the firm was extremely active in supporting many wonderful causes throughout the year.  Without a doubt, the most fun we had as a firm was when we participated in Brevard County’s Corporate Dodgeball Challenge as the Lethal Litigators.  Unfortunately, we did not bring home the win, but with some additional training, we will take down many of the other teams, including our arch-dodgeball-nemesis, Craig Technologies, in 2012.  The firm also supported many charities.  Please take a look at our community page for more information on some of the groups that the firm continues to support.  We encourage all of you join us in supporting these great causes, either through volunteer efforts or financial donations.  Of note this past year, the firm sponsored and attended events for The Scott Center for Autism Treatment, Junior Achievement of the Space Coast, March of Dimes, Brevard Symphony Orchestra, Epilepsy Association, and the Space Coast Early Intervention Center.

On the personal/family side, the firm, and many individuals within the firm, enjoyed much prosperity.  We all loved attending Rene Dial’s wedding in early October, and Mark Warzecha’s wedding just a couple of weeks after that.  We wish both of you all the best as you endeavor on the great adventure!  We were also glad to hold our first annual Zies Widerman and Malek family picnic.  It was a bit hot, but a great time for all of us to get together with our families.  We also enjoyed a wonderful holiday party at Silvestro’s in Cocoa Beach this year.  The firm welcomed Danielle Roy as a Registered Patent Agent, and congratulate Mark Warzecha (already an attorney registered in New York and Indiana) on passing the Florida Bar.

The above is just a little bit of the success that the firm experienced over the past year, and we look forward to 2012!  Thanks to all that made this happen.

 

 

 

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