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[4LegsGood]

You might recall question 12 on the April 2001 AM exam. It's the one with the downward activated door stop (text below).

I know the answer is (E) - NONE OF THE ABOVE

But what the hell should he do? It's a screw up and a failure of a duty to disclose. Is there no choice but to sit on the patent, or would disclaiming the only claim be the "right" thing to do?

Any tips in case I ever actually pass the exam and then heaven forbid run into this sort of thing???

Edit: For some reason, when I was considering Re-issue before, I thought there was a problem, and now my brain is going to explode. It's gotta be a reissue right? The patent is partially or wholly inoperative or invalid because he claimed more than he had a right to. Right???  RIGHT? For some reason my brain is freezing here. There's nothing preventing him from filing a reissue because he claimed too broadly and admitting the Shack as prior art? If it hadnt' issued, he could file an RCE with an IDS, but after it's issued? No re-exam, obviously because of the nature of the prior art.

Edit: I've been staring at stupid exams forever now, I see them when I'm walking around like that kid in the Sixth Sense...

I see past exams

David


12. In January 2000, Chris invents an electrical door stop for automatically stopping a door at
any position by simply pressing the doorknob downward. The doorknob is such that when
carrying a large package, one may rest the package on the doorknob to stop the motion of the
door. During a lunch break before completing the writing of the application for the patent on the
automatic door stop, Chris’ patent agent, Sam, visits a local Shack restaurant and notices a door
stop which is actuated by stepping with one’s foot on a mechanical lever located at the bottom of
the door. Sam makes a mental note to ask a colleague as to whether he needs to disclose the
doorstop at the Shack restaurant to the USPTO in conjunction with Chris’ application in an
information disclosure statement, but ultimately neglects to do so. Sam knows that the restaurant
(and doorstop) was in existence at least one year prior to Sam’s visit. In the first Office action,
the only prior art uncovered by the examiner relates to stopping a door using a lever that engages
a channel in the ceiling upon being pressed upward. The examiner rejects the claim asserting it
would have been obvious to have either upward or downward actuating motion. In the reply to
the first Office action Sam argues that the downward motion is essential because it affords the
ability to actuate when one is carrying a package and that the prior art does not disclose a
downwardly actuated doorstop. Following Sam’s argument, the case issues. Claim 1 reads as
follows:
1. A door stop for automatically stopping the pivoting action of a door by pressing
downward, said door stop comprising:
a) first means attached to a door for receiving a downward movement;
b) second means for actuating a mechanism for engaging the floor surface in
response to the downward movement of the first means, said first and second means
being operatively connected.
Which of the following is true?
(A) Since Sam knew of the doorstop at the restaurant and not Chris, there is no duty to
disclose the Shack restaurant doorstop. An attorney need not disclose that which
is within his personal knowledge in an information disclosure statement.
(B) Since Sam discovered the Shack restaurant device after he had started writing the
application, the invention was fully disclosed to Sam. There is no need to
disclose that which occurs after an inventor completes his application disclosure.
(C) Sam needs to disclose only patents or printed publications to the USPTO to
satisfy the duty of disclosure. Since Sam was unaware of any patent or printed
publication for the Shack restaurant doorstop, Sam does not need to file an
information disclosure in this regard.
(D) Chris should file a request for reexamination seeking to have the Shack restaurant
door stop considered.
(E) None of the above.

[Isaac]

The facts say that the failure to disclose was negligent.  If the trial court believes that, then they should not find the patent unenforceable because of inequitable conduct.  However there is still the problem that the patent may be invalid based on the art.

Doing a reissue and getting the art in front of the examiner may give you a chance to get valid claims, but it wouldn't cure up any inequitable conduct.  A reexam would require finding some other art, but would allow submitting an IDS if the reexam were granted.  You cannot cure inequitable conduct with a reissue, but the wriggle room is that the failure to disclose was not intended to deceive the office.

Given that the court cannot probe the agent's mind, the court might very well find intent from these circumstances and if so, the reissue and the reexam would be pointless.

[4LegsGood]

1. What should Sam do?

2. What should Chris do?

Assume in both cases that NOBODY else knows about the Shack doorstop.

1. While I can accept that Sam (practitioner) screwed up, it is possible, isn't it, that he did it without deceptive intent, and couldn't he argue that? But the main question is this: What *should* he do? Let's say he wakes up in the middle of the night screaming, realizing what he's done.

What is the ethical proceedure? Does he make some kind of admission? Or does he just close his eyes and hope that nobody ever finds out? Isn't there some perscription for something to do other than him having to shut his mouth and hope nobody ever asks?

2. Does Chris (inventor) have any recourse? Let's say he goes to the Shack and sees the actuator and says "Oh crap!" and asks the owner when he had it installed, and finds out that the invetion predates his, but hasn't been published or patented, what can he do? What should he do? Can he, on the basis of what he knows, ala afadavit, file for reissue using another agent, assuming he no longer wants to deal with Sam for another reason (say for example, Sam, wracked with guilt over his Shack lunch took his own life by overdosing on Shack spicy chicken sandwiches), and Sam has never revealed his inequitable conduct? Absent another piece of prior art (patent/publication) re-exam is out. But what about reissue? The patent is partly or wholly invalid over the Shack door because Chris claimed more than he had a right to. But he could fairly easily narrow the scope of the claim based on the utility of having the handle higher to rest your package on it rather than the foot actuator.

If reissue is out, what should he do? Just sit on it? Do an express abandonment?

Questions without *some* answer drive me crazy.

David

[still_studying]

I don't think Chris has any recourse (other than possibly to sue for malpractice).  One of the other old exam questions concerned an inventor who discussed her invention to a potential licensee, after properly NDA'ing the appropriate people.  They promptly said "forget it", then stole her invention and began marketing it.

There were more facts in the fact pattern, but I can't remember them all at the moment.

The credited answer was that she could not get a patent because the invention had been on sale for more than a year.  Her only recourse would be to sue the company.

I realize that the two situations are not parallel, much less identical, but the point is that sometimes the outcomes aren't happy ones.

[4LegsGood]

I realize that the two situations are not parallel, much less identical, but the point is that sometimes the outcomes aren't happy ones.

Thanks SS, and I totally understand what you're saying and that he may just be screwed, but the fact of the matter is, that he still has a patent that is presumed to be valid, and nobody will probably ever find out about the door at the Shack.

If Chris never finds out or even if he does find out, what should he do? I understand that if it's ever questioned he'll be screwed, but what if he never is? Does he have an obligation to do something? Anything???

Also, I'm still not sure why Reissue isn't an option, without Sam or with Sam if Sam claims that there was no deceptive intent (whether or not it's true). Sure he may be shot down, but isn't that a way to fix this problem, from Chris's point of view?

David

[still_studying]

Well, legally and ethically speaking, there's an obligation to disclose any and all known relevant prior art.  Practically speaking, I think there are limits, otherwise Boeing would have to reference 1,075,533 every time they apply for something related to an aircraft.

However, I note that the claim uses means-plus-function language.  This limits the claim scope to what was disclosed in the specification.  If the mechanism of the restaurant's door is not covered by the specification -- in particular, if the specification only discusses doorknobs, and not foot-actuated levers -- I think it could be argued that it is not relevant prior art.