Deceptive Intent and Possible Actions

Retarius · 05-18-18 at 09:01 PM

I have a client who partnered with another company in 2010 to develop and file a Provisional Application. There were 6 inventors, my client and 5 with the other company.

The other company filed a PCT app, claiming priority to the provisional, then a 371 US app in 2013, claiming priority to the PCT and Provisional apps. The other 5 inventors filed an assignment to the other company but my client did not. Around the time the 371 application was filed, my client's company had a falling out with the other company and they jointly decided to not pursue products based on the provisional application.

A few months after filing the 371 app, the other company filed a Preliminary Amendment. The only thing the amendment did was to change claims using multiple dependencies to single dependencies. No limitations or claim elements were added, deleted, or amended. They also filed in 2013 a Rule 48 amendment to remove my client as an inventor, referencing this being required by the preliminary amendment. Given the preliminary amendment made no changes to any claim limitations, the basis for the rule 48 amendment seems to me to be fraudulent/deceptive. My client was never notified of this.

The 371 application has been proceeding through prosecution the past few years. This past November, a Final office action was issued that makes a 102(f) rejection based on different inventors than the PCT or provisional applications - where my client is prominently identified as an inventor. In fact, not only should he be an inventor, he is possibly the inventor who conceived at least half of the invention. The other company sent a declaration to my client a month ago, requesting that he sign and return it ASAP so that he can be an inventor on it.

I'm guessing if my client refuses to return the signed declaration the other company will just claim he is an uncooperative inventor and get him re-named as an inventor, thereby overcoming the 102(f) and a patent will issue.

The examiner does not seem to be aware of the rule 48 amendment, which makes it clear that it wasn't a case of the inventor being "inadvertently left off" the US application, but was instead a deliberate act. It seems to me we have excellent grounds to dispute this patent, but my question is what reasonable options are available? Can I call the examiner and point out the rule 48 amendment and see what he does? My client is a startup and lacks the cash for a reexam after a patent issues. Please let me know if you can identify options here to prevent issue of the patent.

snapshot · 05-19-18 at 04:52 PM

Quote from: Retarius on 05-18-18 at 09:01 PM
The examiner does not seem to be aware of the rule 48 amendment, which makes it clear that it wasn't a case of the inventor being "inadvertently left off" the US application, but was instead a deliberate act. It seems to me we have excellent grounds to dispute this patent, but my question is what reasonable options are available? Can I call the examiner and point out the rule 48 amendment and see what he does? My client is a startup and lacks the cash for a reexam after a patent issues. Please let me know if you can identify options here to prevent issue of the patent.

I don't know what your real options are, but definitely don't call the examiner of that application! I feel like there would be some shady ethical grounds that you'd be wandering into there. If it happened to me, I would be uncomfortable with it and start it going straight up the chain to my supervisor ("So, I just got this phone call . . .").

Retarius · 05-19-18 at 06:22 PM

Yes, that is one of my concerns. I don't have power of attorney, and absolutely don't want to take on that type of risk.

midwestengineer · 05-19-18 at 08:30 PM

Quote from: Retarius on 05-18-18 at 09:01 PM
I have a client who partnered with another company in 2010 to develop and file a Provisional Application. There were 6 inventors, my client and 5 with the other company.

The other company filed a PCT app, claiming priority to the provisional, then a 371 US app in 2013, claiming priority to the PCT and Provisional apps. The other 5 inventors filed an assignment to the other company but my client did not. Around the time the 371 application was filed, my client's company had a falling out with the other company and they jointly decided to not pursue products based on the provisional application.

A few months after filing the 371 app, the other company filed a Preliminary Amendment. The only thing the amendment did was to change claims using multiple dependencies to single dependencies. No limitations or claim elements were added, deleted, or amended. They also filed in 2013 a Rule 48 amendment to remove my client as an inventor, referencing this being required by the preliminary amendment. Given the preliminary amendment made no changes to any claim limitations, the basis for the rule 48 amendment seems to me to be fraudulent/deceptive. My client was never notified of this.

The 371 application has been proceeding through prosecution the past few years. This past November, a Final office action was issued that makes a 102(f) rejection based on different inventors than the PCT or provisional applications - where my client is prominently identified as an inventor. In fact, not only should he be an inventor, he is possibly the inventor who conceived at least half of the invention. The other company sent a declaration to my client a month ago, requesting that he sign and return it ASAP so that he can be an inventor on it.

I'm guessing if my client refuses to return the signed declaration the other company will just claim he is an uncooperative inventor and get him re-named as an inventor, thereby overcoming the 102(f) and a patent will issue.

The examiner does not seem to be aware of the rule 48 amendment, which makes it clear that it wasn't a case of the inventor being "inadvertently left off" the US application, but was instead a deliberate act. It seems to me we have excellent grounds to dispute this patent, but my question is what reasonable options are available? Can I call the examiner and point out the rule 48 amendment and see what he does? My client is a startup and lacks the cash for a reexam after a patent issues. Please let me know if you can identify options here to prevent issue of the patent.

Who is the applicant on the 371 application?

Retarius · 05-19-18 at 08:59 PM

The other 5 Inventors.

midwestengineer · 05-19-18 at 09:09 PM

Quote from: Retarius on 05-19-18 at 08:59 PM
The other 5 Inventors.

Is your inventor under an obligation to assign? Would your client not have rights in a subsequently issued patent if your client joins the application?

Retarius · 05-19-18 at 11:35 PM

No obligation to assign. Yes, he understands he would have rights in an eventual patent.

midwestengineer · 05-19-18 at 11:45 PM

Quote from: Retarius on 05-19-18 at 11:35 PM
No obligation to assign. Yes, he understands he would have rights in an eventual patent.

It sounds like your client hasn't been harmed by whatever may have occurred. What does your client want? For the practitioner to be sanctioned for the fraudulent filing?

Retarius · 05-20-18 at 01:15 AM

My client has not yet been harmed by the patent, but is concerned about future potential. So, can you think of anything other than conventional reexam after issue that can reasonably be done?

midwestengineer · 05-20-18 at 01:27 AM

Quote from: Retarius on 05-20-18 at 01:15 AM
My client has not yet been harmed by the patent, but is concerned about future potential. So, can you think of anything other than conventional reexam after issue that can reasonably be done?

How could your client possibly be harmed by an issued patent in which he/she would have an interest? Your client would be free to sell or grant licenses as he/she sees fit.

lazyexaminer · 05-20-18 at 01:41 AM

Quote from: Retarius on 05-20-18 at 01:15 AM
My client has not yet been harmed by the patent, but is concerned about future potential. So, can you think of anything other than conventional reexam after issue that can reasonably be done?

A reexam is based on prior art patents and printed publications. Doesn't sound like that is applicable in your situation. I am still curious to hear how your client is potentially being harmed...if he "is concerned about future potential" what exactly is he concerned about? It appears he will have rights if a patent issues...

Retarius · 05-20-18 at 02:36 AM

There are things I don't want to get into that are extraneous to the question asked, so if you can answer it it would be greatly appreciated. Thanks!

midwestengineer · 05-20-18 at 02:44 AM

Quote from: Retarius on 05-20-18 at 02:36 AM
There are things I don't want to get into that are extraneous to the question asked, so if you can answer it it would be greatly appreciated. Thanks!

The only remedy is to sanction the practitioner. That will not stop the patent from being issued. After the application was filed, the co-inventors have a right to continue to pursue a patent. Your client cannot stop them from pursuing patent rights. Remember that once the patent issues, procedural violations before the USPTO do not matter unless they resulted in the fraudulent obtainment of the patent.

The USPTO did the right thing. It identified an issue regarding inventorship and refused to issue a patent unless the inventorship is corrected. The co-inventors are now correcting the inventorship. Your client does not have the unilateral right to deny others their rights to the invention, just like the other inventors do not have the right to deny your client's rights to the invention.

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