Are you tired of waiting for the U.S. Patent and Trademark Office (USPTO) to examine your patent application? You might consider using one of the USPTO’s Patent Prosecution Highway (PPH) programs. In theory, the goal is to use the examination by one country to expedite the examination and allowance of the same claims in another participant country. The USPTO started a pilot PPH program last year with the Korean Intellectual Property Office and reportedly announced yesterday that it intends to introduce two new pilot PPH programs with the Nordic Patent Institute and Israel Patent Office. It’s important to remember that there can still be speed bumps even if you decide to go down these roads. There is no guarantee that an examiner won’t conduct a further search and uncover new prior art despite the initial examination of the other patent office. Nonetheless, if you are permitted to participate in a PPH program, you should get your application reviewed in a timely manner.
As expected, it has been reported that Apple has sought to intervene in the Lodsys patent infringement lawsuit brought against the Apple software developers in Texas.
This is a common question. Just because your company owns a patent doesn’t necessarily mean that you can practice what is covered by the patent. Sound crazy? It’s true. A patent is a negative right. Generally speaking, a patent gives the owner the right to preclude others from making, using, selling, offering for sale and/or importing what is protected by the patent during the term of the patent. However, a patent does not guarantee that the patent owner can make what is covered by the patent without infringing someone else’s rights. A simple example illustrates this point. Company A invents the first inflatable bicycle tire. Company B comes up with the idea of adding a valve stem to the tire so that the tire is more easily inflated and Company B is awarded a patent on a bicycle tire with a valve stem as it is a new, useful and non-obvious improvement to Company A’s patented tire. Then, Company B makes its first tire with a valve stem and receives a cease and desist letter from Company A alleging infringement of Company A’s broader (or more dominant) patent for just the tire. Company B has a problem as it has manufactured Company A’s patented tire. It doesn’t matter that it added anything to it (i.e., the valve stem) as Company A’s patent broadly covers any inflatable bicycle tire. Company B is not left without some leverage however. Should Company A desire to make a tire with a valve stem (because it is a much more compelling product for consumers), it could not do so without Company B’s permission. In the end, the companies would probably cross-license the use of their respective patents. How could this scenario possibly have been avoided? While many of the more dominant patents would have been uncovered during the patent application process for Company B’s patent, it is advisable to have a “prior art” search of existing patents conducted, especially if your company is thinking about actually manufacturing the product. The breadth of any existing patents can be assessed so that you can ensure that your company is not walking into a landmine. Another option is to commission a “freedom to operate” opinion by a patent attorney. In this context, the patent attorney will scour a sea of patents that are possibly relevant to your idea and will give you an assessment of how crowded the space is before you move forward with manufacturing your invention. This type of a search differs from a “prior art” search in that it is much broader in scope and will entail looking for any patents that might address any aspect of your invention vs. just looking for patents that are essentially for the same invention (e.g., looking for any patents that are for just a valve stem used in any context vs. conducting a prior art search to find patents on a tire with a valve stem). In the end, you just need to remember that a patent does not grant you the right to practice the patented invention. It allows you to prevent others from doing so. If you plan on practicing your invention, you should strongly consider hiring someone to conduct a review of the existing prior art (e.g., patents) so that you don’t run into later problems.
As previously discussed, Apple developers allegedly received cease and desist letters from Lodsys based on the use of in-app applications. Now, Lodsys appears to have taken it to the next level by allegedly suing several developers for patent infringement in the ever popular Eastern District of Texas. Read what appears to be a copy of the Complaint. It will be interesting to see Apple’s reaction and/or next steps.
Yesterday, the Federal Circuit clarified the standard for proving inequitable conduct in patent infringement cases in its Therasense, Inc. decision. Similar to how it addressed the burden of proof for fraud on the USPTO in the trademark context, the Court adopted a heightened standard for proving inequitable conduct. Here are several points to consider:
- it was a split decision so the Supreme Court may ultimately decide the issue;
- the Court noted that inequitable conduct allegations are a “common litigation tactic” and as such, adopted a more stringent approach in an apparent attempt to discourage this practice;
- the Court clarified the two requisite elements for proving inequitable conduct: materiality and intent;
- with regard to materiality, the Court rejected the USPTO’s broader view of materiality under its Rules as well as the previously used sliding scale approach in favor of a “but for” test– the USPTO would not have allowed a claim of the patent-at-issue had it been aware of the undisclosed prior art;
- the Court provided a carve out to the “but for” rule for “affirmative egregious misconduct” (which should be a ripe area for future litigation);
- with regard to intent, it must be shown that “the applicant knew of the reference, knew that it was material, and made a deliberate decision to withhold it[;]”
- it is not enough to show that the applicant “should have known” about the materiality of the reference;
- inferring intent will become difficult as “the evidence ‘must be sufficient to require a finding of deceitful intent in light of all the circumstances'” and when there are multiple reasonable inferences, intent cannot be found; and
- absence of a good faith explanation for withholding a material reference will not, in and of itself, be sufficient to prove an intent to deceive.
In furtherance of my earlier post, Apple has reportedly stepped up to defend its developers. Read a recent update on the state of events as well as the letter allegedly sent by Apple to Lodsys.
It has been interesting to follow Lodsys’ (a patent holding company) pursuit of Apple app developers for patent infringement. It has been reported that Apple took a license to the patent-at-issue from Lodsys and now, Lodsys is sending cease and desist letters to various Apple app developers. According to various sources, Apple allegedly required use of the allegedly infringing technology by the developers so certain groups are calling on Apple to indemnify the developers. Read the Electronic Frontier Foundation’s take on the issue. What is the take away from this scenario? If you are developer and are required to incorporate some sort of technology into your software app, it would be smart to try to negotiate some sort of indemnity provisions to avoid the situation described above. While this may be difficult as the developers are not often in a position of power to negotiate such terms, they need to be aware of what may transpire without such protections in place.
An issue that we have dealt with over the years is whether information disclosed in a published patent application can be claimed as a trade secret. The argument is that although the information is in the public domain, the receiving party would never have found it. The Fifth Circuit recently addressed this issue. Read a good discussion of the case. It is not surprising that the Court concluded that information contained in a published patent application was not protectable as a trade secret under Texas law. However, there is a lesson here. Companies should make sure that their NDAs contain carve outs for any information that is ultimately disclosed to the public by the disclosing party. This way, it will make it harder for the disclosing party to claim that something that it disclosed to the world in its patent application is somehow a trade secret. Further, they should conduct their own investigation by searching the USPTO’s website for any relevant, published patent applications/patents owned by the disclosing party and should get representations from the disclosing party that the information, which is being disclosed, has not already been publicly disseminated and is not the subject of a patent application.
In my practice over the last decade, I have seen companies fall victim time and time again to the same IP pitfalls. Here are a five things to keep in mind when trying to build and protect your brand or technology: 1) Just because a domain name is available with a registrar does not mean that you can use it without consequence. 2) Owning a patent does not guarantee that you can practice the invention covered by the patent. 3) Just because you paid an independent artist to create your logo doesn’t mean you necessarily own it. 4) Sending a simple cease and desist letter is not without risk. 5) Patents may not always cover what they appear to state as they sometimes contain significant printing errors. I will explore each of these topics in more detail in upcoming posts. Stay tuned.