Florida Intellectual Property Law Blog

    A great majority of the news on patents deals with patent infringement, patent law, and, not coincidentally, it brings to mind the overriding importance of ethics in protecting intellectual property--and profits. As a Florida patent attorney, the long term growth of my business depends on the integrity of the patent applications I file, and recent news underlines its significance.
    In a recent online edition of the International Herald-Tribune, Robert Pear wrote an article on just this issue. Currently, patent law dictates that patents held by companies or individuals who have engaged in "inequitable conduct" are subject to having those patents revoked. A pretty severe penalty--maybe, and the subject of hot debate in today's courtrooms.

    Patent laws, which affect Florida patent attorneys and patent seekers (and interested parties everywhere), are at the crossroads, with some lobbying for "the biggest changes in U.S. patent law in more than 50 years." Very nearly every industry is represented.

    On the one hand, opponents of current patent law wonder if the law is too severe for what senior VP and general counsel for Eli Lilly calls "relatively minor acts of misconduct." According to the article, the U.S. Court of Appeals for the Federal Circuit has found inequitable conduct in "at least 40 cases, including 14 that involved pharmaceutical or health care products." Types of misconduct have included submitting false statements to the patent office, a lack of accuracy in describing experiments, and concealing information contradicting their claims. Brand name drug companies and the companies who support them report that accusations are frequent and, often simply "honest mistakes."

    On the other hand, I wonder: In patenting, particularly medical patenting, is there really any room for mistakes--honest or otherwise? Florida patent attorneys and patent attorneys everywhere who are registered with the U.S. Patent and Trademark Office know that protecting their clients requires the utmost in meticulous attention to detail (after detail after detail). The better the application, the more quickly it passes, the more secure the received patent is from attack, and the more the client is free to profit from it. With patent infringement and other litigation costing us into the billions of dollars, can we really afford misinformation and mistakes?

    Consumer groups think not, though recent patent legislation threatens to make it a little easier to make "mistakes." The House of Representatives approved a bill making it more difficult to prove inequitable conduct, and the Senate Judiciary Committee are "haggling over a companion bill." That bill may reach the floor this summer.

    The need to stop unfounded accusations notwithstanding, this Florida patent attorney is hopeful that the backbone of integrity that supports the patent system will win out and grow in strength in years to come.

Recently, I posted about current changes to patent rules, most notably restrictions on the number of extensions that can be used and limitations on the number of claims that can be made. The debate continues with a preliminary injunction imposed by a U.S. District Court judge in VA, according to an article in today's Crain's Detroit Business. Some lawyers feel the rule changes put unnecessary restrictions on the patenting process, while others believe it streamlines the patenting process by reducing the workload of an overburdened USPTO.

More important, perhaps, than the particulars of this scuffle, is the need to choose a patent attorney who works diligently and expertly to craft a patent application that is exceedingly thorough and comprehensive, while still being broad enough to provide the inventor maximum leverage--without undue inefficiency. If you are a Florida inventor, or an inventor anywhere, and you are considering hiring a patent attorney, check their credentials. As I always say, the only stupid question is the question not asked. Feel free to ask me about my track record. I am a Florida patent attorney; however, being registered with the USPTO, I can practice anywhere.

In his Intellectual Property Counsel Blog post entitled " A Litmus Test to Identify Exceptional Patent Attorneys ", in-house Florida intellectual property attorney Todd Mayover provides a good overview of things that distinguish a " good patent attorney "from an "exceptional patent attorney ". 

In particular, he writes:

Adding value to patents requires a complete understanding of an invention, knowledge of the current state of the field of art, the ability to identify how an invention fits in to the industry or market, and the ability to identify and distinguish the closest competitors.

I could not agree more with this statement but feel the need to question sometimes the way that in-house attorneys make their hiring decisions for patent prosecution work.  Many times, outside counsel are chosen on the basis of firm and name partner reputations without any inquiry at all on who will actually be doing the work. 

There is nothing wrong with this, of course, as long as the attorney and partners that were responsible for building a law firms reputation are the same ones that will work on your matter.  If they are not the ones actually doing the work on a company's application, however, in-house intellectual property lawyers should question why they are paying for a senior partner's billing rates when a "wet behind the ears" new associate is actually the one doing the "heavy lifting" on the patent application draft.

In a column in the The Herald in Bradenton, Florida, entitled "Invent Something? Plan Marketing Carefully", business columnist Jerry Osteryoung offers good advice to inventors looking to hire a patent attorney to assist them in securing legal rights to their ideas.

In my post entitled "Risks of Disclosing Your Invention Prior to a Patent Filing", I discuss a number of risks associated with the pre-filing disclosure of an invention.

I did not address, however, pre-filing discussions with a patent attorney and would like to discuss that now. This is often an area of concern among inventors.

Reason No. 1: Because I Teach Patent Law to Other Lawyers and Law Students

For the past nine (9) years, I have been an Adjunct Professor at Nova Southeastern University Law School teaching patent, trademark, and copyright law to graduating law students. 

In addition to being an Adjunct Professor at Nova Law School, I lecture and teach patent and trademark law to other attorneys and members of the South Florida Inventor's Society and other business groups. Some of my past lecturing experience has been:

 “Preservation of Legal Rights in Medical Innovations” before the Florida International Medical Exposition (August 2007).

2000 - Present: Adjunct Professor, Nova University, Shepard Broad Law Center, teaching annual International Practice Clinic on Intellectual Property Law including patent, trademark, and copyright law to third year graduating law students.

"Licensing Your Intellectual Property" before the Inventor's Society of South Florida (June 2002).

“Patent Protection for New Ideas” before the Inventor's Society of South Florida (July 2003)

Florida Bar Approved CLE Seminar for attorneys entitled "Mining Patents for Competitive Intelligence” for the Society of Competitive Intelligence Professionals (SCIP), based in Alexandria, Virginia. (February 2003)

Tradewinds 2004 International Business Conference. Taught Seminar entitled "International Trade Secret Protection in Central America & the Caribbean". (October, 2004)

Florida Bar Approved CLE Seminar for attorneys entitled "Patent Essentials for the Nonspecialist" for the Broward County Bar Association Section on Intellectual Property (April 2005).

I believe my teaching patent law to other attorneys, law students, and business people makes me a better patent lawyer myself. You really do not know a subject unless you are able to teach it to someone else.