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Hi Pascale!
Unfortunately, the Patent Office hires new college graduates as Patent
Examiners and makes them work under extreme time pressure and with
inadequate resources for searching for prior art which are not themselves
patents. Therefore, it is not surprising that some patents will be allowed
which should not have been.
If the patentholder ever sues someone for infringing such a cheesy patent,
and actual litigation ensues, the judge or judge-plus-jury can, and should,
declare the patent to be invalid. However, lawsuits are very expensive,
and many judges and juries are stupid (see O.J. trial). Therefore, many
accused infringers would rather pay an extortion fee than go to trial, even
if they are confident they should win at trial.
There are a number of ways for people to protect themselves, depending on
the situation.
If you receive a "cease and desist" letter from a patentholder or her/his
lawyer, and you don't want to cave in immediately, the first thing you
should do is to hire your own lawyer to first make an initial assessment
and to relay it to you orally. Based on that oral discussion, you should
have the lawyer write (1) an "infringement" opinion showing that, by God,
your product actually does not infringe any of the patent's claims and
maybe also (2) a "validity" study showing that, by God, the patent should
never have been granted because the claimed invention had already been
invented even before the patent was applied for. Your lawyer should be
able to write an opinion stating the conclusion you want (but to varying
degrees of confidence), because, let's face it, there are two sides to
every debate. If no lawyer will write the conclusion you want, then you
probably ARE infringing!
These opinion letters from patent lawyers are a potent insurance if you
plan to keep on continuing your allegedly infringing activities. The
reason you need this insurance is that these opinions give you a reasonable
basis to believe you are not infringing, and therefore, even if later
during litigation a brain-damaged judge/jury finds that you did infringe,
at least you did not "intentionally" infringe. "Intentional" infringement
can cost you a LOT more in damages (including the other side's lawyer's
fees, I believe) than "unintentional" infringement, under the statutes. If
you suspect the bad-guy might have mailed the "cease and desist" letter to
lots of parties, you might try to find these other parties and share the
cost of the lawyer who writes your own "opinion" letters. Once you are
shielded by your own lawyer's opinion letter, then you presumably proceed
with your activities and see if the evil accuser actually sues.
Before or after you receive a "cease and desist" letter, you can seek to
have the patent Office "reexamine" a patent so as to invalidate some or all
of its claims. There may be certain strategic advantages to waiting until
more than two years AFTER the lousy patent has issued to do this. For this
task, you provide additional pieces of prior art references and explain in
writing why the newly submitted references make some or all claims of the
lousy patent invalid. This Request for Reexamination requires also a
(roughly) $2500 fee to the patent office. Because once the patent office
begins reexamination, you essentially cannot participate anymore--i.e.,
once again, the examination is between the bad-guy patentholder and the
patent office--you have to spend a great amount of care in writing your
explanation so as to give the patent examiner plenty of ammunition and
education to innoculate her/him (mixed metaphor) against the brain-numbing
spells and creative arguments of the evil-doer's patent agent or attorney
during the reexamination process. In general, you might want a patent
lawyer to help with writing your explanation.
If you don't have the time and effort to make a nice, $2500 Request for
Examination, there is also a procedure (free!!) by which you can submit a
prior-art reference to the Patent Office and seek to have it included in
the file for that patent at the patent office. Once the art is in the
file, any person who asks the patent office for a copy of that patent's
file, also called "file wrapper" or "file history," will also thereby
receive a copy of your reference. In this way, you are giving that person
ammunition to use in whatever way that person can. Note that any accused
infringer should, and is likely to, request a copy of the file history, and
therefore you are helping such a person.
Note that in seeking to invalidate a claim in a patent, the best thing to
find is a reference older than the patent that ALL BY ITSELF infringes the
claim.
In general, you should patent your own inventions so that you have a
portfolio of valuable patents. This portfolio can be very helpful in
protecting you against accusers who are actually in your business. i.e.,
if they try to shut you down with their patents, then you threaten to shut
them down with your patents. This portfolio may be less helpful against
accusers whose only activity is suing people and who don't have their own
technological activities.
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Pascale Fung
Assistant Professor
Department of Electrical & Electronic Engineering
University of Science & Technology
Clear Water Bay, Kowloon
Hong Kong
http://www.ee.ust.hk/~pascale
tel: +852 2358 8537
sec: +852 2358 8511
fax: +852 2358 1485