Hi, all. I’m doing some speaking and writing on IPR ethics. I’ve read Professor Dolak’s article (an earlier version is here; I couldn’t find the recently published version on-line). I’m not sure I agree with her 100%, but it’s a very good piece.
What ethics issues have you run into (or, more precisely, have you heard others have run into) during post-grant proceedings? I’d love to know because that’s where my writings are headed next.
Been thinking about it for a while. One obvious thing is the fun games that a lawyer will play in deciding what “inconsistent” information he must submit. Others?
Two alleged “gamings” of the system are the alleged use of threatened but un-filed IPRs by generics to gain some kind of compensation or advantage from pharma company patent owners that is sometimes not in the public interest, or use of IPRs for stock price manipulation by short-sellers . I have no basis for confirming the former, there are reportedly 15 of the latter IPRs and both are being used to argue for draconian legislation precluding the use ANY IPRs by any company [or even hospital associations, insurance companies or pubic interest groups] against any patent subject subject to Hatch-Waxman [instead of much better fixes]. See the recent Gene Quinn blog on Senate confusion.
Note that an un-filed IPR deprives other legitimate IPR users from the prior art and arguments that would be publicly avialable if the petition were actually filed.
Paul, unless the prior art is privately held, the prior art is known to all. No one is depriving anyone of prior art by not filing an IPR.
Arguments? Really?
Paul, your constants braying about the benefits of IPRs is more than annoying. They are currently rigged against patent owners for any number of reasons, and are very expensive to prosecute to boot. You seem to neglect that the threat of the IPR is made against whole portfolios of a small company’s patents. In addition, it seems the practice in about 25% of the cases to file one IPR after another against a patent until the patent owner breaks.
When are you going to see that IPRs, with no standing requirement, with the ability to file repeatedly, with the unfair procedures, exist primarily as a tool against small companies. The mere threat of the IPR, like the upcoming threat of a mandatory award of attorneys fees, is designed to strip small firms of their patents.
But small companies are the companies that most need patents because they have a normally have single product and their patents are the only way to keep a big company from just taking it from them.
Constant braying on things that hurt patent holders….
Ned the pot and Paul the kettle…
anon, advocating that patents be confined to patentable subject matter, advocating that patents be confined to the inventions disclosed, that they have definite claims, etc., is not anti-patent.
Issuing patents on junk, with functional and indefinite claims brings the whole patent system into question. It has largely been responsible for the chaos we have with trolls who tend to assert junk patents in the first place.
Defenders of junk patents are not seeing the big picture, anon.
“responsible for the chaos we have with tr011s”
Pure B$ Ned – you’ve drunk the anti-patent koolaid.
“Defenders of junk patents”
More pure B$ – there is quite a difference between defending the actual law written by Congress (what I do) and the worthless misdirection and ad hominem of the label of “junk patent defender.”
We should distinguish between characteristics of “the system” and those of “gaming” such system. Blaming the system when gamers emerge is a waste of energy. Somebody should do something about the gamers rather than the system.
I’m European so I’ll use the generic term “opposition” for any and all inter partes proceedings at the PTO. I would say that, as such, they promote the progress. They facilitate settlement, which promotes progress rather more efficiently than litigation. They squeeze out bad patents and raise the presumption of validity of good patents. The mere possibility of opposition prompts applicants to concentrate prior to issue, and take to issue only claims that are robust against opposition.
The fact that some will “game” the opposition system is not a sufficient reason to get rid of any possibility of opposition.
But hey, what to I know about the environment in the USA. Tell me, is it so different from Europe that no comparison is useful or possible?
Waste of energy…?
Not at all. Here in the States, paying attention to this type of feedback is an important part of adjusting the systems.
Dan, there is a major difference from protecting one’s legal rights and threatening to damage someone else where one’s own legal rights are not at stake. One is malicious and unprivileged.
Are you saying that “Tr011s” do not have a legal right to enforce their property rights (no matter how thin those may be? You want to deny this basic due process right based on who owns the right quite apart from what the right really means?
Sounds like you are speaking from the Infringer’s Rights playbook.
Yes, true.
I wonder about repetitive IPRs?
Indeed.
Any petitioner or RPI or privy needs to be legislatively barred from bringing more than one IPR against a patent. Anything else must be considered an abuse of the system, which is so easily abused as it is.
Well, you have the whole “short”/market manipulation thing…
anon, I agree. It should be a criminal offense for anyone to sell or buy stock in a patent owner’s business within 1 year of that person filing or participating in filing an IPR.
It should further be a criminal offense for anyone to threaten to file an IPR in any license or settlement discussion.
It should further be a criminal offense for anyone to threaten to file an IPR in any license or settlement discussion.
That’s pretty ridiculous, Ned.
Not really, DanH. Threatening to file an IPR is a form of extortion.
Have you ever been in a negotiation where the other side has a piece of public use prior art that no one else knows about, and threatens to publish it if they do not get a favorable deal?
What is your response?
Not really, DanH. Threatening to file an IPR is a form of extortion.
Sure it is, Ned. Just like threatening to file an infringement suit is extortion.
Except when it is not, you mean?
And, DanH, just what justification does one have to assert that public use prior art is the highly confidential information of a defendant so that no one but the litigating attorneys can know what it is?
Sounds a lot like you are talking about the AIA’s Prior User Right setup there Ned.
You also run the risk of intersecting Trade Secrets Ned – you know, the pedantic answer you wanted to shovel instead of being inte11ectually honest on the alternative to copyright thread…
One problem (of many), with your anti-software-patent curse-ade is that you simply cannot be consistent in your views of aspects of software which demand a different type of protection than copyright. The aspect of utility protection – the type of protection that the patent system was designed for. Add in your refusal to recognize my simple set theory on written matter and the plain fact that manufacture – by the hand of man – includes software, and your inconsistencies consume you.
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