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432 | Patent it YOURSELF in Markman v. Westview Instruments, Inc., 116 S.Ct. 1384 (1996), has removed juries’ powers to interpret claims and hence reduced their power to decide the issue of infringement. P. Arbitration Instead of a lawsuit, if both parties agree, the entire infringement dispute can now be submitted to arbitration. In this case, an arbitrator, usually a patent attorney or retired judge, will hear from both sides in a relatively informal proceeding. The arbitrator will adjudicate the patent’s validity, infringement, etc. The arbitrator’s fee (about $10,000 to $50,000 and up) is far cheaper than the cost of a regular lawsuit complete with depositions, formal interrogatories, and other formal proceedings. In addition, it’s much faster. The arbitrator must file the award with the PTO. The American Arbitration Association is frequently used and has rules for arbitration of patent disputes, but the parties can use any arbitrator(s) they choose. Q. How Patent Rights Can Be Forfeited Patents and their claims can be and often are retroactively declared invalid or unenforceable by the PTO or the courts for various reasons, such as: • relevant prior art that wasn’t previously uncovered (Chapter 6) • public use or sale of the invention prior to the filing date of the patent application (Chapter 5, Section E) • misuse of the patent by its owner—for example, by committing antitrust violations, and • fraud on the PTO committed by the inventor—for example, by failing to reveal relevant facts about the invention and the prior art (Chapter 10, Section E4). In addition to losing your patent rights, you may discover that what you thought was a broad claim is so narrow as to be virtually useless. Generally, you’ll discover this when your airtight infringement action goes down the drain when the PTO or the judge declares your patent noninfringed. Most people are surprised to learn that patents, although duly and legally issued, can be declared invalid, nonenforceable, or noninfringed. In other words, a patent isn’t the invincible weapon many believe it to be. Rather, a patent can be defeated if it has weaknesses or if it isn’t used in the proper manner. Still, 50% of patents that get to court are upheld. In addition, the percentage of patents that are treated as valid is higher than the court statistics indicate, since they don’t count the many patents that don’t get to court because the infringers saw the impossibility of invalidating them or didn’t want to spend the $250,000 or more necessary to fight the patent. An accused infringer of a patent can avoid liability (that is—defend against the infringement action) in three different ways: • by showing that the claims of the patent aren’t infringed • by showing that the patent isn’t enforceable, or • by showing that the patent is invalid. With regard to the first, noninfringement has already been covered above in Section J. Under the second, a patent can be declared nonenforceable if the owner of the patent has misused the patent in some way or has engaged in some illegal conduct that makes it inequitable for the owner to enforce the patent. Some examples of conduct that will preclude enforceability of a patent are: • false marking (marking products with patent numbers that don’t cover the product marked) • illegal licensing practices, such as false threats of infringement • various antitrust violations, such as package licensing • extended delay in bringing suit, which works to the prejudice of the accused infringer, and • fraud on the PTO, such as withholding a valuable reference from your Information Disclosure Statement, or failing to disclose the full and truthful information about your invention in your patent application. (See Inventor’s Commandment 17 in Chapter 10.) Third, the validity of the patent being sued on can be challenged by: • prior-art references that the PTO didn’t discover or use properly • proof that the specific machine covered by the patent is inoperable • a showing that disclosure of the patent is incomplete, that is, it doesn’t teach one skilled in the art to make and use the patented invention • a showing that the claims are too vague and indefinite under section 112, or • a showing that the patent was issued to the wrong inventor, etc. As you can imagine, the subjects of patent nonenforceability and invalidity are also complex and difficult. In fact, it has been said that if enough money is spent, almost any patent can be “broken.” However, patents are respected in many quarters and, as stated, billions of dollars change hands in the United States each year for the licensing and sale of patent rights.
ChaPter 15 | After Your PATENT ISSUES: Use, MAINTENANCE, and INFRINGEMENT | 433 R. Your Patent Is Subject to Interference for One Year For one year following the issuance of your patent, you are potentially subject to losing it if another inventor who has a pending application on the same invention can copy your claims in their application and can get the PTO to declare an interference. If the other inventor wins “priority” in the interference—that is, the PTO finds that the other inventor “reduced the invention to practice” (built and tested it or filed a patent application) before you, or conceived it first and was diligent in effecting a reduction to practice—you’ll effectively lose your patent or any claims in issue. While conflicts between patent applications and in-force patents are relatively uncommon, they do occur, due to the failure of the examiner to spot the interfering application before your patent issues. (See Chapter 13, Section K, for more on this.) S. Tax Deductions and Income I include this brief section because, unfortunately, most inventors give no thought whatever to taxes, either with regard to the money they spend to get their patents, or to the money they make when they sell or license their patents. I say “unfortunately” because the government will effectively subsidize your patent expenses by allowing you to deduct them. Because of space limitations, I can’t provide a full guide to all of the patent-tax rules, but here are the basics. You should consult a tax professional or the IRS for the final word: 1. You can legally deduct your patent and invention expenses (i.e., the cost of this book, patent searches, drafting and attorney fees, PTO fees, technical research, models, experimentation and testing, up to $25,000 of depreciable property, etc.) if the IRS considers that your inventing constitutes a trade or business. If you buy depreciable property above the $25,000 limit, you must depreciate this over its useful life. If you meet the trade or business test, you’re in luck: You can deduct any net Schedule-C loss against your other (ordinary) income. However if the IRS considers that your inventing is a hobby (that is, you’re a dilettante) they will allow you to deduct your patent and invention expenses only against any income that you receive from the hobby. What do you have to do to meet the trade or business test? The taxman will consider that you have engaged in a trade or business if you can show that you have been serious, diligent, and have spent substantial time on your invention activities. In other words, Uncle Sam will give you a passing grade if you kept careful records, had a model made, did prior-art and marketing research, made substantial efforts to sell or license the invention, acted in a businesslike manner, etc. 2. If you license your invention on a nonexclusive basis (see Chapter 16), you haven’t given away all of your rights, so your royalties are considered ordinary income. Report on Schedule C or Schedule E. 3. If you sell all of your patent rights, or grant a full exclusive license, the IRS considers that you’ve sold it all; your receipts or royalties, even though received over a long number of years, are considered capital gains; report on Schedule D. T. Patent Litigation Financing Because of the high cost of litigation, cost assistance (at a price) is now available from several companies. Lloyds of London (www.lloyds.com) and Intellectual Property Insurance Services Corp. (www.infringeins.com), 9720 Bunsen Parkway, Louisville, KY 40299, 502-429-8007, write policies directly. These companies will, in return for an annual premium, reimburse part or all of the cost of patent enforcement litigation, up to the policy limit. You can even begin coverage while your patent application is pending. However, some companies may have a less-than-optimum rating and some may require you to jump through difficult hoops, such as getting an infringement and validity opinion from an independent attorney, before they will reimburse your expenses. Below are some companies and firms that finance contingent-fee patent litigation. Carefully investigate any company before engaging them. Also, as stated, most litigating attorneys will take on contingent-fee litigation if the damages are substantial, the defendant has a deep pocket, and the patent is strong and clearly infringed. Below are just a few of the many litigating patent attorneys and services who have handled contingent-fee litigation. These listings do not imply any form of endorsement or recommendation of these attorneys or their services. • Enpat, Inc. (www.enpat.com) • General Patent Corporation International, (www. patentclaim.com) • Patent Enforcement and Royalties Ltd. (www.Pearlltd. com) • Costello, John P., Esq. (patents@cwnet.com) • Hosteny, Joe, Esq. (jhosteny@hosteny.com) • DiPinto & Shimokaji (shimokaji@dsattorneys.com) • ThinkFire Services USA, Ltd. (info@thinkfire.com)
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N O LO ® “The best roll-up-your-
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Products & Services Books & Softwar
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15th edition Patent It Yourself You
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Acknowledgments My deep thanks go t
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2 3 4 The Science and Magic of Inve
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13 14 J. The Patent Laws of Other C
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About the Author David Pressman is
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