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    Patents 101 | Benefits, Faults, & Recourse

    With the current PFO v Orbitec Patent hoopla, there has been a lot of misinformation being spread as to what patents actually do and the effect they can have in the industry. To shine light and better educated us on this matter, Mike Clifford will be doing a short series on patents so that we […]

    With the current PFO v Orbitec Patent hoopla, there has been a lot of misinformation being spread as to what patents actually do and the effect they can have in the industry. To shine light and better educated us on this matter, Mike Clifford will be doing a short series on patents so that we all can understand what the real implications are. Mike is a good friend, dedicated reef aquarist and successful Intellectual Property Attorney. If you have any questions or would like to contact Mike directly, shoot us an e-mail and we’ll forward you on his information. 

    Disclaimer: The following is provided for informational purposes and should not be relied on as legal advice. If you have a patent-related question, you should contact an attorney.

    Part 1

    Q: What is the purpose of the patent system?

    A: Since the patent system has come under much attack recently, I think it is important to provide some background on the principles underlying the system.  It’s not perfect (we’ll get to that later) but there are many very good reasons why the patent system exists. I’ll lay out three of the primary purposes here:

    Promoting Innovation: The patent system seeks to reward innovators with a temporary monopoly.  It is an answer to the “free rider” problem – if everyone can just wait until someone else spends the money to develop a product and then copy it, then no one has incentive to develop the product, and it never gets developed in the first place.  A patent, however, allows a company to spend more on R&D because it knows it can market the product free of competition for a number of years. 

    Promoting Disclosure and Sharing of Ideas: The tradeoff for being given a temporary monopoly is that you must publicly disclose your invention in enough detail that “one skilled in the art” could recreate the invention, without undue experimentation.  Without a patent, innovators would be incentivized to hide their ideas (when this is done, they may acquire a trade secret, of which the recipe for Coke is a famous example).  With public disclosure, it makes it easier for others to build upon what has been created in the past, again promoting innovation.

    Protecting the “Basement Inventor”:  There are some people with great ideas, but no resources to make their idea happen.  Picture Jack (or Jill) Inventor who walks into Deltec’s offices with the next great skimmer design, but no patent protecting it.  Deltec says it’s a great idea, then turns around and builds it into their next skimmer line, leaving Joe Inventor with nothing but a story to tell about “that was my idea!”  So if patents weren’t available, he’d probably just keep that idea to himself, and its possible the world would never see it.  The patent system, however, allows Joe Inventor legal recourse and provides him negotiating power to sell a license for his improved skimmer to Deltec, and the world is better off for it.

    Q: So you’re a patent attorney, this sounds like rhetoric to promote your profession – what about all these patents trolls I keep hearing about that don’t even make the product they’ve got a patent on?

    A: I’ll be the first to admit the patent system is not perfect, but when you consider the above principles, I do think its better than any alternative.  First, I’ll say see above about protecting the basement inventor – remember he doesn’t make the product he invented either, and allowing that little guy to make it big with his idea is as American as apple pie.  Its tough to protect him though, without opening the door for patent trolls, who also don’t make anything. 

    There is also a massive backlog at the Patent Office, and Examiner’s are human and can miss references that show an idea existed or that claims of a patent should have been narrowed to cover less.  Imagine you are a Patent Examiner and you’ve never seen an aquarium return pump, and you have 5 hours to figure out what a patent application on an aquarium return pump is claiming, and to figure out if its actually new (which theoretically involves figuring out if the design is out there somewhere in the world since aquarium return pumps were invented 40 years ago).  You do your best, but occasionally things do get through the cracks, and it’s the old story of the bad ones that make the news, while you hear nothing about the good ones.  There is no easy answer to this either.  You could hire more Examiners, hire more specialized Examiners, have them spend more time on each application, etc., but remember this drives the cost of a patent up, which favors big corporations and puts a patent out of reach for many people.

    Q:  So lets say a patent “slips through the cracks” and now I’m being sued.  It covers my product because it is so broad, but I don’t think the patent ever should have been issued in the first place.  Am I just out of luck?

    A: No, there are a number of options to fight a patent that you think shouldn’t have been issued.  One route is at the U.S. Patent & Trademark Office (USPTO), the agency that handles the issuing of patents.  A third party can file what is called a re-examination to challenge the patent.  Without providing too many boring specifics, you generally present the USPTO with evidence showing that at the time of the invention, the invention was not new, or that it was obvious to one skilled in the art.  If the USPTO accepts your petition for re-examination, it is possible that the patent can be invalidated (essentially thrown out), or that the inventor may have to narrow the scope of the patent so it covers less.  It is also possible that a lawsuit may be “stayed” (i.e., paused) during the re-examination.  While more expensive, you can also file counterclaims in the lawsuit that the patent is invalid based on the same evidence.

    9 Comments

    1. Nicholas Sadaka
      February 7, 2009 at 2:14 PM | Permalink

      Thanks so much guys-that is very informative and you know it is written very well if I understand it. I now know about 100x more about patents than I did before reading this. I seems like maybe the “cone issue” could possibly fit into what Mr. Clifford is talking about in the last answer…maybe? Thanks again-that was a great mini-article.

    2. Matthew
      February 7, 2009 at 3:18 PM | Permalink

      Mike:

      Excellent post. May I link this over to Talking Reef?

      Matt

    3. mcliffy2
      February 7, 2009 at 3:58 PM | Permalink

      Glad you guys enjoyed, I’ll try to get Eric the second part soon which will explain some basics of an actual patent document, and how it is interpreted.

      Matt, feel free to post the link.

    4. James
      February 10, 2009 at 12:41 AM | Permalink

      If a product is made abroad & there is a patent for that product here in US(Like the LED Fixtures) would the patent holder in US be able to sue the company abroad?
      Would he be able to sue the Importer?

    5. mcliffy2
      February 10, 2009 at 11:00 AM | Permalink

      James,

      Excellent question. I have seen a lot of incorrect information on this topic. The short answer is that if a product is sold in the U.S., someone can usually be held liable for patent infringement. You can’t get around a patent by just making your product abroad. Suing a company that is only located in China can be difficult – yes you can technically sue them, but good luck getting them to court in the US. Usually the tactic in this scenario is to go after distributers and/or retailers, rather than a manufacturer in China.

    6. mcliffy2
      February 10, 2009 at 11:07 AM | Permalink

      I also note as a follow-up, that there are some quirks when it comes to imports/exports and patents that have their greatest effect in the software world. However, what I stated above is generally the rule. More detailed info on this topic can be found in this blog:
      http://www.patentlyo.com/patent/2009/02/cardiac-pacemaker-v-jude-challenging-271f-liability-for-components-of-a-method.html

    7. Tim
      February 20, 2009 at 9:47 AM | Permalink

      Mike can you please help all of us understand better the various aspects of the “for use” patent? I believe that is at the heart of the the pending Orbitec/PFO trial.
      T

    8. mcliffy2
      February 25, 2009 at 9:24 AM | Permalink

      Tim, sorry I’m late getting to your question. I’m not sure exactly what you are referring to in saying a “for use” patent? Can you be a little more specific and I’ll try to get back to you more quickly this time.

    9. September 30, 2009 at 10:35 PM | Permalink

      my small company is being sued by a patent troll. we are innocent and can prove invalidity. We believe the patent was filed by knowingly withholding information from the PTO. If that is true, can I counter sue the inventor and the troll on a civil charge of fraud, shaking down and distroying my company, and causing my family personal damage? Do we have any recourse outside the patent court, which trnds to support these trolls???

    2 Trackbacks

    1. […] In case you missed Part 1 of this Patents 101 series, you can find it here: Patents 101 | Benefits, Faults, & Recourse. […]

    2. […] you to Mike for this 3 part series. If you missed the previous articles you can find them here: Part 1 & Part […]

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