Today in New York City the Practising Law Institute begins its third annual Patent Law Institute. I am not in attendance this year at the event at PLI headquarters at 810 Seventh Avenue, which is just two blocks away from the David Letterman Theatre (known to some as the Ed Sullivan Theatre) and right around the corner from the best pizza place in all of New York (Leone’s on Broadway). I am, however, participating in this CLE event via webcast, tucked away at my own undisclosed location in a snowy Northern Virginia. Already getting access to the Internet has been somewhat difficult this morning with my trusty Verizon Wireless USB720, but with the sun finally starting to break through I have high hopes for the rest of the day. At the moment the first session titled Recent Court Decisions and Their Practice Impact has just come to an end and we are on a 15 minute coffee break, set to resume with the next segment on Patent Reform at 10:30am.
For those who are unable to be in New York City today, or who cannot get to the webcast today, you can always purchase the webcast later and listen to or watch (depending on your Internet connection speed) the presentations. For those capable of or otherwise interested in a live presentation, the live component of the 3rd Patent Law Institute will take place in San Francisco on March 23 and 24. Many of the speakers will be different, but the topics covered will be the same. So once again PLI continues its bi-coastal approach to delivering the best darn patent continuing legal education possible.
While I was not able to catch much of the first presentation due to my aforementioned Internet connectivity problems, at the end I did manage to catch a discussion about inequitable conduct, that topic that sends shivers up and down the spine of many a patent attorney these days. As we all know the Patent Office and the Federal Circuit have a very different view of inequitable conduct, making it an ever more growing nightmare for those who practice before the Patent Office. I mean really, who among us really wants a patent litigator cross examining us about what it is that we did and did not do years earlier? Patent litigators can be much like divorce attorneys, and anyone who has ever had marital problems knows that means destruction lies in front of all those who resist, making patent litigators, divorce attorneys and Microsoft the modern equivalent of the Borg!
In any event, one piece of practical advice that was conveyed was that those who prosecute patents need to realize that if a patent is going to be litigated the jury is going to expect to hear from the patent attorney and from the inventors. It will, therefore, be extremely important for patent attorneys to be able to explain why it is that certain things were done and said, particularly with respect to what prior art was not provided and why it was not provided. Thus, it seems that in the world we live where inequitable conduct is alleged in each and every case, and in a world where the Federal Circuit judges do not agree, it is going to be increasingly important for those of us who draft application are going to need to start papering the file with respect to what we do so that it will be difficult for anyone later on to question whether we intentionally withheld material prior art. Of course, this assumes that intent matters any more, and we all know that there are cases where certain panels of the CAFC have really undone the well established law in Kingsdown, which stated that gross negligence cannot be inequitable conduct. So I guess the best we can do is hope that intent will matter during litigation and that we will be able to demonstrate that our decisions were for a reason and not intentionally done to mislead the examiner.
Now on to the next presentation. Rob Clarke of the US Patent Office is talking now, saying that filings have decreased this year, which is problematic for the Office because they budgeted for a 5% increase. In 2008 first office actions also increased 16% over 2007, but there are still over 800,000 applications awaiting a first office action, which is alarming. Clarke said that this is not where the Patent Office wants to be, but there is trending in the right direction.
About the Author
|Eugene R. Quinn, Jr.
President & Founder of IPWatchdog, Inc.
US Patent Attorney (Reg. No. 44,294)
B.S. in Electrical Engineering, Rutgers University
Gene is a US Patent Attorney, Law Professor and the founder of IPWatchdog.com. He teaches patent bar review courses and is a member of the Board of Directors of the United Inventors Association. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, CNN Money and various other newspapers and magazines worldwide