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   Author  Topic: Deposing Patent Prosecution Counsel  (Read 5957 times)
MattB
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  mbycer   MBycer
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Deposing Patent Prosecution Counsel
« on: Oct 3rd, 2007, 1:24pm »
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Hello all,
 
Case: Plaintiff sues Company for infringing Patent A.  Patent A was filed by Prosecution Counsel.  Defendant deposes Plaintiff's Prosecution Counsel.
 
In deposing the prosecution counsel, what can Defendant ask? (also, what might the plaintiff's atty ask?)
 
What are the limits imposed by the attorney client privilege with regards to the background of the invention, prosecution process, prior art, etc.?
 
What questions would you ask?
 
From my initial research, it appears that you can ask about his knowledge of certain things, but not about whether he discussed them with the client, or who brought what to who's attention, etc.?
 
Any direction to case law, rules, etc and your thoughts would be appreciated.
 
Thank you,
 
MattB
« Last Edit: Oct 3rd, 2007, 1:27pm by MattB » IP Logged

Matthew L. Bycer
Registered Patent Attorney
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http://www.cvglaw.com
DJoshEsq
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Re: Deposing Patent Prosecution Counsel
« Reply #1 on: Dec 4th, 2007, 3:35pm »
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A patent is legally enforceable and gives the owner the exclusive right to commercially exploit the invention for the life of the patent.  
 
This is on your website and is NOT true.
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D. Joshua Smith, Esq.
Registered Patent Attorney
McDonald Hopkins, LLC
Cleveland, OH
216-348-5400
MattB
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  mbycer   MBycer
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Re: Deposing Patent Prosecution Counsel
« Reply #2 on: Dec 4th, 2007, 4:41pm »
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Thanks for the correction DJosh.
 
It turns out that is the Australian patent law.  Although I thought that was clear, I am happy to amend the site.
 
As for my question, the deposition of patent counsel is limited not by topic area, but more like lawyer confidence.  The issues revolve around the client's expectation of privacy, more than what was discussed.
 
We had a depo about a month ago, it went well, asked all the questions we wanted and the plaintiff counsel failed to object at all.
 
Thank you Brent for your personal message!
 
Peace,
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Matthew L. Bycer
Registered Patent Attorney
http://www.bycer.com
http://www.cvglaw.com
CriterionD
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Re: Deposing Patent Prosecution Counsel
« Reply #3 on: Dec 4th, 2007, 5:37pm »
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On the issue of "exclusive right" versus "right to prevent others," I feel that "right to prevent others," infers an "exclusive right," since either way it means nobody else has the right.  If this is not the case, then the World Intellectual Property Organization is mistaken too (see the FAQ's up at www.wipo.int).  After all, "exclusive" is defined as "Excluding or tending to exclude"
 
In regards to the widely accepted legalesque definition - i.e. a patent gives you "the right to exclude others from making, using, offering for sale, or selling" - if you want to get real technical, I believe thats inaccurate.  A patent gives the right to "exclude others from..." but technically it does not give you the right to do so, it gives you the right to request that a court of law does so, no?
 
I understand the reasoning and all, but in my opinion saying that a patent does not grant an exclusive right to "make, use, offer for sale, or sell" is like saying a driver's license doesn't give you the right to drive (because you can always commit illegal acts behind the wheel depending on how you drive)
 
« Last Edit: Dec 4th, 2007, 5:41pm by CriterionD » IP Logged

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JSonnabend
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Re: Deposing Patent Prosecution Counsel
« Reply #4 on: Dec 7th, 2007, 8:52am »
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CriterionD -
 
I believe Josh's point was that under U.S. law, a patent does not confer the right to practice the invention.  It's entirely possible -- and far from unheard of -- that a patentee cannot practice the invention claimed by his patent due to so called "blocking patents."
 
As for your semantics on "right to prevent . . .", I would say the patent grant includes that right by statute, but one often must go to court to enforce that right.
 
- Jeff
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SonnabendLaw
Intellectual Property and Technology Law
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JSonnabend@SonnabendLaw.com
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