Wednesday, March 28, 2007

Litigation Issues Spook Community Patent Review

As the Community Patent Review Project (aka "Peer-to-Patent") readies for launch, a number of important concerns are being raised by prospective participants.

Assume someone from your engineering staff reviews, comments, and submits prior art on a patent application. The application issues as a patent. Now you are being sued on that patent. How will this affect your ability to defend yourself in court? What if the comments came from someone in your patent department?

It should cause concerns for any business owner looking to participate.

For one, there's the issue of willful infringement. If your company is following along in the prosecution of the application, it will become almost impossible to claim later that you weren't "aware" of the patent, once it issues.

Second, there's the issue of provisional patent rights. Under 35 U.S.C. § 154(d), a patent owner can obtain a reasonable royalty from any infringer from the date the patent application is published, to the date the patent issues. The catch here is that, before you can claim provisional patent rights, the potential infringer must (1) receive actual notice of the publication, (2) the patent must issue, and (3) the issued claims must be substantially identical to the published claims.

To my knowledge, there are very few, if any, published cases interpreting any of the provisions of § 154(d), so it is unclear how this can be applied by patent application owners whose patents eventually issue.

Finally, there's the issue of admissions (a "peer-to-patent estoppel," as it were). It will be difficult enough to monitor what employees are saying, but you would also have to monitor how they are saying it. And when they post on the site, it will (presumably) become part of a permanent public record.

To put this another way, assume an application comes across the screen that is assigned to a litigious patent troll (take your pick). How many comments do you think that application will receive from companies that have been the troll's historic targets?

Read "Infringement fears haunt patent project" from today's BusinessWeek.

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