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   In-house vs. outside patent prosecution liability
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   Author  Topic: In-house vs. outside patent prosecution liability  (Read 2854 times)
gman
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In-house vs. outside patent prosecution liability
« on: Dec 7th, 2005, 5:35am »
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Could any one recommend a good book or comment on their own knowledge of the differences between in-house and outside liability issues?  For example, would an in-house practioner be liable to the company for patentability searches?
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franlorin
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Re: In-house vs. outside patent prosecution liabil
« Reply #1 on: Dec 7th, 2005, 6:54am »
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on Dec 7th, 2005, 5:35am, gman wrote:
Could any one recommend a good book or comment on their own knowledge of the differences between in-house and outside liability issues?  For example, would an in-house practioner be liable to the company for patentability searches?

 
I cannot recommend any book regarding in-house vs outside "liability issues", but for "patentability searches", you may want to review many of the comments by "full members" of this forum regarding how patentability searches can NEVER be completely comprehensive (although I may have a somewhat different idea about this), so how can anyone performing a "patentability search" be liable in any way? - it is up to the applicant who requests the search to ask the patent searcher for evidence to show that an adequately comprehensive search was performed, e.g., classification systems used, etc.
 
there is no apparently established patent search procedure in existence, that defines whether a search met "approved procedures" or not, so how can "liability" be determined? - of course, I am trying to address this concern through my efforts and my website Smiley
 
take care.
 
Fran Lorin www.patent.0catch.com
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Fran Lorin
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gman
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Re: In-house vs. outside patent prosecution liabil
« Reply #2 on: Dec 7th, 2005, 11:17am »
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The USPTO is creating templates for searches that one might consider a standard.  However, the question is not meant to be are searchers legally responsible for their work.  The question is about in-house liability vs. outside liability.
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franlorin
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Re: In-house vs. outside patent prosecution liabil
« Reply #3 on: Dec 7th, 2005, 1:37pm »
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on Dec 7th, 2005, 11:17am, gman wrote:
The USPTO is creating templates for searches that one might consider a standard.  However, the question is not meant to be are searchers legally responsible for their work.  The question is about in-house liability vs. outside liability.

 
Ok, sorry, I cannot address that particular question, just the question regarding patent searching
 
BTW, the USPTO "templates" (http://www.uspto.gov/web/offices/com/speeches/05-53.htm) are actually just listings of various databases, resources and search tools suggested for use in each US Class - However, I consider a "template" to be a form that can be modified, such as you might find in MS Word -  what the USPTO offers as "templates" can hardly be considered as "standards" for searching at all - for example, are ALL the databases listed in the  "template" supposed to be searched? - gimme a break, give ALL searchers a break! - if ALL the databases do not necessarily need to be searched, then where is the "template" guiding the searcher to decide? - the USPTO really should use the term "resource listing" instead of the very misleading term "template"
 
take care
« Last Edit: Dec 7th, 2005, 1:46pm by franlorin » IP Logged

Fran Lorin
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Isaac
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Re: In-house vs. outside patent prosecution liabil
« Reply #4 on: Dec 7th, 2005, 3:52pm »
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Employee negligence is a state law issue.  I think in most jurisdictions, an employer cannot sue an employee for ordinary negligence.   I believe there are at least a few jurisdictions where there is contrary case law.
 
However as the culpability level rises from ordinary to gross negligence or intentional behavior, there may a greater chance that an employer's suit could succeed.
 
If an in-house counsels activity cause some kind of harm to a third party such as a business in a joint venture with the employer, the in-house counsel might in some situations face personal liability for malpractice.
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Isaac
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