Last week, the Federal Circuit, sitting en banc, gave a shot in the arm to patentees with regard to the “intervening rights” doctrine in its Marine Polymer Technologies, Inc. decision. The Court confirmed that “intervening rights” (which limits a patentee’s ability to recover for past damages) only apply when there are new or amended patent claims as a result of reexamination. Prior thereto, a three judge panel of the Fed Circuit held that the doctrine had been triggered by the patentee’s arguments made during reexamination even though no amendments had been made. In light of this decision, patentees will sleep easier, knowing that they can make arguments during reexamination without losing their claims for past damages.
Yesterday, it was reported that Congress passed free trade agreements with South Korea, Panama and Columbia. The agreements are suppose to, among other things, significantly remove duties and phase out tariffs on various U.S. exports. However, it has also been reported that there are provisions affecting intellectual property law, which must be ratified by the Korean National Assembly. I agree with Professor’s Crouch’s assessment that this appears to be another step toward harmonizing worldwide patent practice. As there will be more incentives for U.S. companies to send products to South Korea, it will be interesting to see if there will be an increase in South Korean patent filings.
We’ve all heard the phrase, “You can’t judge a book by its cover.” Well, this adage is especially true when looking at an issued patent as there may be valuable information that is not reflected on its face. First, printing errors can occur. Late amendments to the claims of the patent (which define the scope of the protected invention) may not make it into the final version of the patent. Thus, the claims that you are looking at may appear broader than they actually are. This is especially important to know when evaluating potential non-infringement positions. Second, the applicant may have given up significant ground to get its patent granted, which is not necessarily reflected in the patent. For example, the applicant may have distinguished its invention over a prior art system. This could have been done by making claim amendments and arguing their narrow meaning, or by otherwise convincing the U.S. Patent and Trademark Office Examiner that no amendments were necessary because the claims (as written) were sufficiently narrow to get around the prior art. Why is this relevant you ask? Because your company may be practicing a technology that is similar to what the applicant distinguished. In the end, while you should start with the patent, you should read the back and forth correspondence with the U.S. Patent and Trademark Office (known as the “patent prosecution history”) as mistakes can happen and the scope of the patent may not always be as it appears on its face.
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.
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.