By Ben Langlotz
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December 3, 2020
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Patent
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0 Comments
HOW TO KILL A BAD PATENT BEFORE IT KILLS YOU
As I’ve written before, sometimes the Patent Office grants a patent that simply shouldn’t have been granted. (Even government employees make a mistake now and then, after all).
The important question is what do you do when you’re accused of infringing a patent you think should never have been granted?
One famous but harmless example of a bad patent was the “Method of Swinging” involving pulling on the swing set ropes alternately to swing side to side, like every child has done. Oops! Fortunately, no playground moppets received cease-and-desist letters. The actual patent application was just a little “quality time” experience for a patent attorney and his kid. Dad wanted to show just how cool patent attorneys are (I think he flopped at career day at Junior’s school). So Dad applied to patent Junior’s swinging “innovation.” Surprisingly, he succeeded. The case became famous, and the Patent Office was embarrassed into reopening the case, and ended up rejecting the application. Whew!
Incidentally, this is something of an inspiration in my growing family. I fully intend that both our little kids will have patents in their names by the time they finish high school, ideally generating royalties. Karmen’s first patent application is still confidential, but if that turns out you’ll hear more.
For comic trivia buffs, did you know that the father of Hobbes’s friend Calvin was a patent attorney?
Incidentally, I sometimes have to advise a client that an invention of theirs probably isn’t patentable, often because pre-existing technology (aka “prior art”) makes the invention obvious. Often, they’ll respond: “But I’ve read about lots of bad patents that were granted, can’t you get me protection I don’t deserve, just like that?” OK, maybe they don’t phrase it exactly that way, but that’s the gist of it. I tell them that they really don’t want a bad patent for a couple of reasons:
The investment in getting the bad patent (even if you could get it) is basically wasted, because when you try to enforce the patent, you lose (more later on how you can use this in your own defense).
Worse, the process of enforcement can cost a fortune (six figures easily, maybe seven) and that’s all wasted when a judge rules that your patent is invalid.
A bad patent is probably worse than no patent at all.
So you really don’t want to get a bad patent, but if you want to know how bad patents happen, the secret is in concealment. If you’re aware of pre-existing technology that’s a lot like your invention, you’re better off disclosing it to your patent attorney, who will disclose it to the patent examiner. That might make it a tougher battle to get the patent, but if you succeed, you’re more likely to have a good patent that has real value against competition.
On the other hand, if you hide the “killer prior art” as I call it, the patent examiner might never find it on his own, and you might have an easier time getting the patent. What you get is much more likely to be a “bad patent.” It might look nice as a plaque on a wall, but if you ever accuse anyone of infringing it, their lawyer will have an easy way to tear your argument to shreds.
The lesson from this is to “disclose, disclose, disclose.” Make sure your patent attorney knows everything about the technology that came before your invention. In our conference, I’ll probably be grilling you about it. You’ll get the most value and benefit from the patent process, if you tell me everything, even the stuff you think I don’t want to hear. Especially that stuff! That’s because when I know all the ways a patent examiner might reject your application, I can give you good advice that lets you save your investment for a better invention. Or, if it still makes sense to proceed, I can fight with a strategy that knows where the pitfalls are, and slay the dragon instead of letting it hide, only to bite you later on.
Often, when we have a chance to confer about the worst prior art we know about, we can still come up with a solid strategy that ends up giving you valuable protection against competitors who might want to compete with your invention.
The reality is that most bad patents come from honest efforts to disclose the prior art. The problem isn’t that someone hid the smoking gun, the problem is simply that no one was aware of it. We can do patent searches, and the patent examiner will do a search, but we can’t always hope to find the killer prior art. Sometimes, the patent will be granted, innocently unaware of some prior art that should have led to a rejection.
Incidentally, the big probable with patent searches is that they only search the places that are easy (and cost-effective) to search. It’s like the drunk who is searching for his lost car keys on the sidewalk. A passerby asks: “Where did you have them last?” and the drunk replies: “Down the street half a block.” “So why look for them here?” “Because the light’s better under this streetlight!”
So we search the easy places, like the database of existing patents, and Google. But not every invention shows up there. A commercial product may never have been patented, or published on a website. An old article from Shotgun News might reveal that an invention was well-known long ago, and unpatentable, but the reality is that we can’t practically search every old publication, let alone know about all the unpublished inventions throughout history. It’s cheaper to risk getting patents that might later be weakened or invalidated, than to spend a fortune on a massive search that would still be imperfect.
Pro-tip: your own first patent search should be a Google search as if you’re trying to buy the thing you think you just invented.
Incidentally, the one time that a massive patent search is justified is when you’re accused of patent infringement, and you simply can’t afford to surrender. When millions of dollars are at stake, it can make sense to invest hundreds of thousands of dollars in a patent search, to try to come up with the smoking gun prior art that invalidates that patent you’re accused of infringing.
But when you get a nastygram from a competitor’s law firm telling you to stop manufacturing one of your key products (or pay hefty royalties) it matters a lot whether that patent is good (solid and enforceable) or bad (never should have been granted).
My first step is to take a look at the patent, and look at my client’s “accused” product. Sometimes, we’ll have a case to make that the product really isn’t covered by the patent. But other times, my client and I will agree that their product has each and every feature of one or more of the patent claims. And we might agree that there’s no way to “design around” the patent by making modifications that take it outside of the scope of the patent (without undermining the product’s marketability). So the infringement issue seems pretty clear.
So we can only try to invalidate the patent, or at least the portion of the patent we think we probably infringe. If we can invalidate it, then we don’t have to worry about paying royalties, or pulling the product from the market.
Ideally, my client already has the key to invalidating the patent: knowledge of killer prior art. Usually, it comes in the form of something like: “I can’t believe they got that patent! After all Acme put out a product just like that 10 years earlier, and it follows a principle that has been known since Colonial Times!” My ears perk up, and we hunt down all the prior art.
If the Acme and colonial evidence can be confirmed, I’ll then look at the “prosecution history” of the patent in question to see if the patent examiner had any idea this prior art existed. If it never came up, then we’re in great shape. But if the Acme and colonial prior art were known by the examiner (maybe the patent applicant had to argue against rejections based on the prior art) then we’re less likely to invalidate the patent. Few judges want to reverse the decisions of patent examiners who are technical experts with daily experience in the field.
So let’s say we find our smoking gun prior art that the examiner never knew about, and that would have led to a rejection if the examiner had seen it. What next?
First, I go back to the lawyers behind the accusation, and tell them the bad (for their client) news: their patent has just been found to have a serious, maybe fatal flaw. Ideally, they will look carefully at it, and then advise their client to go quietly away. That way, at least they can keep their patent, providing at least a bit of company pride, and maybe intimidation of a few other “infringers.” They might even be getting royalties on the patent from other companies, and want to avoid jeopardizing that revenue stream.
Unfortunately, some patent owners can be unreasonably stubborn, or get bad advice (maybe from the lawyer who doesn’t want to admit the patent he got for them is actually worthless). There can even be honest disagreements about whether the prior art will really kill the patent. Which brings us to the next step.
If there is still a dispute, there are a couple ways it can be resolved. At some point, the patent owner may file suit. At that point, we can file a Motion for Summary Judgment before the trial judge, and there can essentially be a mini-trial on whether the patent should have been granted, given the prior art we have uncovered. That’s “cheap” compared to a multi-million-dollar litigation, but can still cost hundreds of thousands of dollars.
Better still is to “Reexamine” the patent (there are several legal terms for this, but it’s a traditional term I use to cover it). This puts the patent and the new prior art back in front of a group of a group of hand-picked senior examiners. This is much cheaper, but still a big five-figure investment, substantially more than getting a patent in the first place. Typically, the judge in a lawsuit will “stay” (put on hold) the lawsuit until the patent geeks in DC decide whether the patent was actually deserved.
In a reexamination, we have the chance to tell the patent examiners exactly what the rejections should have been, and both sides can weigh in to help the examiner make their ruling. When we have a solid, confident, smoking gun bit of prior art, it can lead to a good outcome, and my client ends up paying no royalties, and continues profitably making their product.
As you might imagine, the credible threat of a reexamination can be a good negotiation tool to make a problem go away, or at least set royalties as a more agreeable rate.
With SHOT cancelled due to Covid, the consensus is a sigh of relief. I can report that of my top 100 active clients, four of the key people (owner/CEO) I work most closely with have contracted and recovered from Covid in recent months. This seems to fit the word that it’s getting more survivable for relative healthy people, or always was. The election roller coaster fits my early and not-too-risky prediction that it will either be good for the country, or good for the industry. I’d prefer a strong republic and healthy economy in which gun companies can innovate and compete, but it looks like we may end up with something else. By the time you read this, the Supreme Court may have decided between a weekend Republic (and the threat of their own destruction with Court-packing) or riots in the streets. Either one will sell guns, as long as laws don’t destroy the industry as threatened.
We appear to have been the beneficiaries of the Chinese curse that we “live in interesting times.” If you want much more of my timely legal and statistical thoughts on the election results follow me on Facebook, Twitter, or Parler.
