The Price of Globalization (Foreign Filing Licenses)

I have spent a couple of hours trying to figure out where I need to file a patent application, and I still don’t have a good answer.  The scenario is pretty simple, and an effect of globalization.  My US company client has a patent application that has five inventors.  The inventors include on American national, a Chinese national, a German national, a Swedish national, and a Turkish national.  I have been tasked with figuring out where we can file, to maintain the ability to file elsewhere internationally, and minimize the possibility of penalties.

The US has the most restrictive foreign filing license requirement.  It requires that any invention made by a US national, or for a US national, be filed initially in the US or in the PCT with the US as the search authority.  Alternatively, a foreign filing license could be obtained, without filing in the US.  Failing to follow this rule will result in loss of patent rights, and can result in significant penalties including fines and potentially jail time.

China requires an initial filing in China, for any invention conceived or completed in China, or receiving a foreign filing license.  However, that license may take up to four months to issue.  The penalty for failing to do so, is loss of Chinese patent rights. Of course if state secrets are disclosed, more severe penalties may be imposed.  But that is not a real risk in this case.

Germany requires a foreign filing license for any invention with a German inventor that has a secrecy aspect.  Getting that license may take up to four months.  The penalty is focused on disclosure of state secrets, and for that it is severe.  It is unclear whether there are any penalties if you fail to seek a foreign filing license, but no state secrets are disclosed.  At least one source said that these requirements only apply to national security related applications.

Sweden appears not to have any restrictions, at least in my review of their patent law. If you have any input on it, let me know.

Turkey appears to have no restrictions, at least in my review of their patent law.  If you have any input, let me know.

This kind of project is only going to become more common, as global corporations have inventors in various countries, working together.  If anyone knows of a good source that explains these laws, I would very much appreciate knowing about it.  Otherwise, I’m just going to keep adding to my little spreadsheet, as I encounter inventors from various countries.

Legal Ethics Around LinkedIn Endorsements and Recommendations

I try to keep up with developments in Legal Ethics by following the Legal Ethics Forum’s blog. This post by Andrew Perlman about LinkedIn endorsements was interesting.

The question is whether the new “Endorse a skill” feature on LinkedIn could violate legal ethics rules. Andrew suggested that it may violate Rule 7.1 of the Model Rules, which states that:

A lawyer shall not make a false or misleading communication about the lawyer or the lawyer’s services. A communication is false or misleading if it contains a material misrepresentation of fact or law, or omits a fact necessary to make the statement considered as a whole not materially misleading.

I think there is a strong argument that these endorsements are not statements by the lawyer about his or her own skills, and thus falls outside the purview of Rule 7.1.

However, California has more stringent rules. California’s Rules of Professional Conduct address this in Rule 1.400. The item of particular interest, however, is the standards adopted by the Board of Governors. One of those standards states:

(2) A “communication” which contains testimonials about or endorsements of a member unless such communication also contains an express disclaimer such as “this testimonial or endorsement does not constitute a guarantee, warranty, or prediction regarding the outcome of your legal matter.”

A LinkedIn page would clearly constitute a “communication,” defined among other things in Rule 1.400 as “(2) Any stationery, letterhead, business card, sign, brochure, or other comparable written material describing such member, law firm, or lawyers; or (3) Any advertisement (regardless of medium) of such member or law firm directed to the general public or any substantial portion thereof.

Therefore, it appears that an attorney’s LinkedIn profile, in California at least, should include the express disclaimer proposed by the standards.

In an overly cautious move, I have updated my LinkedIn profile in light of this. I am also planning on contacting the attorneys at LinkedIn to see if they can make such disclaimers part of the default profile configuration, at least for attorneys.

What do you think?

Avvo and The Attorney

There are numerous attorney rating services out there, ranging from the peer ratings of Martindale-Hubbell, the answer-based ratings of LinkedIn, to the “neutral” ratings provided by services such as Avvo.

Avvo claims on its website that “It’s unbiased. Because ratings are calculated using a mathematical model, all lawyers are rated by the same standards.”

Multiple lawsuits have attempted to challenge Avvo ratings. The latest, Davis v. Avvo, 2:11-cv-01571-RSM (W.D. Wash. March 28, 2012) has been dismissed as Strategic Litigation Against Public Participation (SLAPP), and the attorney has been ordered to pay Avvo’s attorney fees as well as an additional $10K punitive damages, as described on the Technology & Marketing Law Blog.  You can find numerous other examples of Avvo’s lawsuit history on that same blog.

So, suing Avvo is a bad plan. But is Avvo truly neutral?  It is highly doubtful.

An easy example of this is my profile. When I first became aware of the service I looked myself up, and found that I was rated at 2 ½ stars for experience. A quick glance showed that another attorney at my firm, who started at the same time and had identical career path to mine, had 3 ½ stars for experience. Given that the “experience” rating depends, per Avvo entirely on “a lawyer’s years in practice” I found this surprising. When I contacted Avvo, via email, my rating was quickly updated. I now have four stars of experience, which apparently corresponds to my 15-years of practice as a patent attorney.

However, when I look at their “recommended” attorney (which appears directly next to my listing, and is someone who has paid for their listing), it appears that a Stuart James West, who graduated law school in 1998 and was admitted to practice in California in 1999 has 5 stars of experience.

Even more surprisingly, Kirupa Pushparaj, who graduated law school in 2007 and was admitted to the bar in 2008, apparently has a 5 star experience rating.

I would be very curious to have Avvo explain these discrepancies. In the meantime, I recommend ignoring Avvo ratings entirely.

US Patent Office PAIR Monitoring

There are numerous services to monitor Public PAIR.  This is useful to monitor the status of one’s own cases, as well as the status of the cases of one’s competitors.

For one’s own cases, for example, if an After Final Amendment or a Petition is filed, it does not stop the clock for a response.  Monitoring PAIR to ensure that any Advisory Actions or Petition responses are timely received is very helpful.  Similarly, once an Issue Fee is paid, you have until the case actually issues to file a continuation application.  While an Issue Notification is provided by the Patent Office, the Issue Notification is often provided days before the actual issue date.  Therefore, it is worth monitoring PAIR to ensure that this information is obtained at the earliest possible time.

For one’s competitors’ cases, it is useful to know when cases are going to be issuing, or substantive office actions are received.  As the post grant procedure comes into effect, starting on September 16 of this year, knowing right away that a competitor’s case is about to issue becomes even more important.

Of course, in any Reexamination, the timelines are tight, and having an extra few days by receiving the copies of any office actions or filings by the opposing party is useful.

These services range in cost.  For example,

CE Status for example provides a PAIR monitoring for $180.00 per case per year.

Cardinal IP monitors public PAIR for $10 per case per month (e.g. $120 per case per year).

Questel provides PAIR monitoring, as well as monitoring international patent offices.  I could not find pricing online. (If someone provides this data, I will update this)

Maxval also provides public PAIR monitoring for $60 per case per year.

Of course, it is possible to manually monitor PAIR as well.  There is an advantage to doing so in-house, because it enables access to Private PAIR, rather than just to Public PAIR, as with the listed services.  However, this is time consuming, and requires administrator time on a daily or weekly basis.  Currently my Admin monitors PAIR on a weekly basis, on Mondays.  The day of the week was selected because patents issue on Tuesdays, and I want to ensure I get even last minute issue notifications.

I’m working on writing a script to see if I can use Private PAIR with a script (though I may need to sign in manually).  Does anyone know of a functioning script or application that works well, and isn’t too expensive?

Legal Challenge to End of False Marking Claims in America Invents Act

The first challenge to the America Invents Act is against the termination of the private right to enforce false marking. The end to false marking, providing that the only private litigants with a claim are competitors who can show actual harm, became effective immediately after President Obama signed the America Invents Act. It applied to all cases, including those pending. Since then, numerous cases have been dismissed, including some sua sponte.

Ken Brooks had a pending case against Dunlop Manufacturing, in the Northern District of California, San Francisco for false marking, filed back in 2010. In response to Dunlop’s Motion to Dismiss, under the new America Invents Act rules, Mr. Brooks brings a constitutional challenge to the AIA. In his memorandum Mr. Brooks states that he relied upon the statutory right which existed prior to the passage of the AIA, and that this destroyed an existing property interest. He cites to U.S. ex re. Stevens v. State of Vermont Agency of Natural Resources (162 F.3d 195, 2nd Circuit 1998) which held that qui tam plaintiffs have a private property interest in the outcome of such cases.

While the brief is written rather flamboyantly, and likely to appeal to lay readers not the judge, the point is interesting. Mr. Brooks did in fact invest some amount of money in pursuing this case, in the clear expectation of recovery, if he could prove a violation of the false marking act.

Of course, the Supreme Court held unanimously in the United States v. Carlton that retroactive tax laws were constitutional, thus making it unlikely that Brooks would succeed in his claim.

Furthermore, there are at least two cases that held that qui tam actions for false marking are unconstitutional, prior to the passage of the America Invents Act. This may mean that the court would find the act a mere clarification of an existing standard.

The more interesting question is whether, if any challenge is successful, the entire statute would be thrown out, since the America Invents Act does not include a severability clause.

Via Greg Aharonian‘s eponymous newsletter.

Some Scenarios Exploring First to File or Disclose

I’m trying to figure out corner cases under the new America Invents Act rules. In most cases, people won’t be directly affected by the rule change, but I can see the below four scenarios coming up.

• Scenario #1: Inventor A invents and immediately discloses (by publishing in obscure journal). Inventor B invents, and files a patent application, but does not disclose. Inventor A files a patent application, after Inventor B. Who if anyone gets a patent?
• Scenario #2: If Inventor A and Inventor B both disclose at the same conference. Both then file a patent, Inventor A files before Inventor B. Who if anyone gets a patent?
• Scenario #3: Inventor A discloses X. Inventor B files a patent for X+Y. Subsequently, Inventor A files a patent for X+Y. Who, if anyone, gets a patent, on X, Y, and X+Y.
• Scenario #4: Inventor A has a non-enabling disclosure. A third party C publishes an enabling disclosure. Inventor B files a patent on the invention. Subsequently, Inventor A files a patent. (Timing is A disclosure, C publication, B filing, A filing). Who, if anyone, can get a patent?