- Projected CLE: 15.0 hours
- Price: $2195
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Instructors:
Paul Gardner
- Course Times: AUG. 2010: 8:30 - 11:30; 12:45 - 4:15 (Wed-Thurs); 8:30 - 11:45 (Fri)
- Download Syllabus
Please note that the faculty member listed for this course is subject to change prior to the actual course date.
It all starts with the invention and the inventor.
Then, the patent practitioner (patent attorney or patent agent) generates the vitally necessary patent protection, without which the appropriate economic reward will not flow to the inventor or the owner of the invention.
That protection is maximized through intimate cooperation among the inventor, the patent practitioner, the paralegal, and the patent administrator.
This course (and the book that supports it) presents and is the guide to that which the inventor, paralegal, and administrator should know (really, must know, according to case law) about patent law and its practice, to ensure that the patent practitioner's work product generates a U.S. patent that will effectively provide the maximum (or any) reward to which the inventor or assignee, or both, are entitled by statute and the U.S. Constitution.
Non-patent lawyers engaged in any aspect of patent activity, whether in licensing, litigating, or counseling, will find this course a bedrock of basic and empowering patent law information.
The U.S. Court of Appeals for the Federal Circuit, in Washington, DC, is the highest court in the country to rule on patent infringement litigations (save the U.S. Supreme Court, which only rarely accepts a patent dispute). The Federal Circuit expressly held, in 2001, that:
[I]nventors represented by counsel are presumed to know the law.
Brasseler, U.S.A. v. Stryker Sales Corp., 267 F.3d 1370, 60 USPQ2d 1482 (Fed. Cir. 2001).
Because the Brasseler inventors did not know the law, they failed to inform their patent attorneys about a potential, but avoidable, patent-barring event. Because the inventors did not inform their attorneys, the entire Brasseler patent for a commercially valuable product was rendered worthless. Moreover, as insult added to injury, the court required Brasseler to reimburse the infringer, Stryker, for Stryker's attorneys fees in the litigation, even though the Federal Circuit acknowledged that Stryker had indeed infringed Brasseler's patent.
The reader may wonder why the Federal Circuit should not have placed the burden for the inventors' patent law education upon the shoulders of Brasseler's patent attorneys rather than upon the inventors' shoulders. The answer is that the court should have, and did! The court held that the attorneys should have inquired more deeply into the information provided by the untutored inventors. But, realistically, for the attorneys to have inquired more effectively would have, to some extent, required their surmising the areas of basic patent law concepts of which the inventors lacked awareness.
In 2005 the Federal Circuit vigorously reaffirmed its Brasseler presumption that inventors represented by counsel are presumed to know the law in Novo Nordisk Pharmaceuticals v. Bio-Technology General, 424 F.3d 1347 (Fed. Cir. 2005). In Novo Nordisk the inventor was not even a U.S. resident and his only contact with his (really his assignee's) U.S. practitioner was indirectly through his Danish patent agent.
For patent practitioners to provide the patent law education required by the Federal Circuit would be exceedingly time consuming – especially so because what must be taught depends upon what the inventors (and all others involved substantively in procuring the patent) do not know relative to the facts that bear in each case. But even when the required patent law education is not provided, the court's default mandate is that those presumed to know the law do know the law because the patent practitioner was obliged to provide it.
Ethics in the form of violating the duty of candor under Rule 1.56 will be held from 9:00 to 10:00 a.m. on the third day, as currently estimated.