Tuesday, March 9, 2010

Bad Actors in Patent Prosecution?

We were having a conversation with a very smart patent guy. He was asking about how to cull through many thousands of patents to see how many of them had the same specification. When I asked him what's up he said Cold Spring Harbor Labs. He added he needs to find patents and patent applications with the same specifications.

"The same specification like when there is a continuation in part or a divisional patent application where the inventor uses the same specification but just changes the claims?" (Arleen)

"No" (Smart Guy)

"The "same" as in the specification that discusses the same art. Like in a hunt for powerful prior art?" (Arleen)

"No. The same as in verbatim passages, think plagiarism, think stolen from another inventor. Passages of one patent that show up in someone else's application. There are bad actors out there." (Smart Guy)

Cold Spring Harbor Laboratory (CSHL) is suing its patent prosecution law firm and one of the firms attorneys for fraudulent prosecution of its patent applications because the attorney copied portions of prior art patent applications verbatim into one of CSHL's patent applications instead of writing an original specification for the new invention. It took a while for CSHL to figure it out but by the time they did, the damage was done.

Then add the "I need a shower after reading this thing" element of this case, the attorney created a patent search company without disclosing it to his clients or his partners at the law firm. His patent search company then billed CSHL for over $700,000 in services that weren't performed. The attorney approved the bills which were then paid by the law firm and CSHL to his do nothing search company. Talk about adding insult to injury.

The patent plagiarism was discovered by one of CSHL's licensing associates and patent attorneys well after the patent applications were filed. This was not a eureka moment of discovery. It was probably one of those the room is spinning, nauseous, am I really seeing what I think I'm seeing moments.

One has to wonder how much more of this is going on when the tools to look for this type of plagiarism are so limited. We've been doing it for a while to protect trade secrets and the techniques are used in the intelligence space to make sure that classified documents aren't released in emails or inadvertently (or deliberately) copied into new documents and printed or emailed.

CSHL is seeking $82M in damages because its inventor, Dr. Gregory Hannon and his colleagues were deprived of the benefits of their inventions and the ability to commercialize their inventions.

I wonder about the harm that may have been done to Dr. Hannon's and CSHL's s reputation within USPTO as the examiner discovered the patent plagiarism that was repeated over and over again by the bad actor. Did this result in the examiners who worked on applications from CSHL questioning the integrity of other applications as they worked their way through the system? The filing shows that the examiners did a good job and knew the art in the area so well that they found the plagiarism. CSHL also made efforts to clarify what was happening with USPTO but sometimes impressions can be lasting.

You can read the filing here. It will be interesting to see if other victims of this patent malpractice surface.

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