Lawyer A gets a patent for Client A. Client A then sells the patent to Third Party (closely related to Client A, but still a third party). On behalf of Client B, Lawyer A seeks reexam based on art he didn’t know about during prosecution.
This is based roughly on what allegedly happened in litigation involving Patriot Universal Holdings. The case was remanded by this order from federal to state court a year ago, and I can’t find much else about it.
I’m just curious if anyone would do this…
In our book (shameless plug) we point out that some courts have let people attack patents they prosecuted, so long as it’s based solely on prior art they didn’t know about during prosecution…
“Skating away on the thin ice of a new day,” to continue the musical theme of this weekend.
Very thin ice. I can see finding no conflict if it’s an anticipation attack based on prior art that was unknown to the attorney at the time he prosecuted the application. If it’s an obviousness attack, even if none of the publications were known to the attorney, the ice is way too thin and the water below is really murky – what if the publications relied upon are merely cumulative of what was known to the attorney?
You’d have to be really desperate for work – or offered a really large amount of money – make it worth your while to place yourself in this situation.
Your last sentence is problematic, indicating that ethics can be bought…
(not sure that was the message you intended)
Very very very thin ice.
Allegedly happened or allegedly did not know?
I thought it was a no-no to ever represent someone attacking the validity of the patent you prosecuted — something about attorney-client privilege?
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