Narcissistic CEOs: Handle patents with care
Typically, the discovery of patent infringement will trigger prompt consultation with patent counsel. The patent attorney, who may not have prosecuted and obtained the patent in question, will study the patent and its file history and compare the patent’s claims with the accused product.
If one or more claims of the patent ‘read on’ the accused product, the attorney will provide to the patent’s owner its infringement opinion. This will open the door to the patent owner’s right to seek damages and injunctive relief in appropriate US district courts.
There are times that such a preliminary investigation by patent counsel will uncover problems with the patent(s) in question. While the patent owner may strongly and confidently believe that valuable patent rights belong to the company, patent counsel may discover that infringement does not in fact exist.
How can this happen? Very simply, it may be that the attorney responsible for prosecuting the underlying patent application that led to the patent’s issuance amended the originally filed claims in order to obtain allowance. Or, it may be that in pursuing allowance, the attorney made arguments that will be treated as “prosecution estoppel”. Such estoppel has the effect of limiting the scope of the issued claims as if their language had been expressly amended.
Such claim limitation may occur without the knowledge or appreciation of the inventor or owner. Clients often turn over to prosecuting patent attorneys the complete responsibility for obtaining allowance of the patent application without monitoring the exchanges that occur between counsel and the US Patent and Trademark Office (USPTO) examiner. The focus of the client is often simply ‘will I get a patent?’, with little or no attention paid to the scope and meaning of the patent’s claims.
