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By Joel I. Rosenblatt, Attorney at Law
Mr. Rosenblatt, a Registered Patent Attorney with the U.S. Patent and Trademark Office, practices in the commercial law of technology and the Internet and the law of patents, trademarks, and copyrights. He is a Florida Supreme Court Certified Mediator, a Florida Bar Approved Mediator for Computer Law Disputes, certified as a Mediator and Arbitrator for the U.S. District Court for the Middle District of Florida and is admitted to all U.S. District Courts for Florida. Any questions or comments may be directed to Mr. Rosenblatt at (321) 727-7626; FAX: 727-8209 or by email to jrosenblatt@cfl.rr.com
Patents - Quality of Service Issues
There will always be certain practices characterized by an inclusive body of arcane knowledge that become known as the “learned professions.” Until the 19th century, the practice of the lawyer and the ordained minister, were the learned professions. As medicine became more of a science, it too became one of the learned professions. It is precisely because these practitioners are known to have the knowledge and the lay person does not, that it becomes necessary to consult with these learned professionals. As these consultations are attended with a sense of urgency, there may be apprehension when selecting a practitioner or in the execution of his or her advice. In most case, all or almost, complete reliance is placed on the practitioner and the given advice or directions.
If there is ever a question of the quality of the advice, it usually goes unanswered as the lay person is usually unable to assess the advice without incurring the added expense of a second opinion and while second opinions are regularly made in the medical professions, they can be difficult in the legal profession. So how is an inventor, needing professional services, able to assess the offered quality of patent legal services or intellectual property services in general.
“By the result,” might be one answer and in the practice of patents, results may be easier to evaluate, but that still leaves a determination of the measurable parameters and assembly of the data necessary to ahieve those measurements. It’s not dissimilar from the problems faced by the pioneering scientists of doing the experiments necessary to prove the theory, where the machinery to do the experiments must be invented first.
As it’s always better to start with the simpler, I thought patents and the patent claims might be a good place. After all, it’s the patent claims that determine the protection afforded by an issued patent or published application and the quality of service given, and who knows the subject invention, inventive principles, and best mode of using the invention, best? None other of course than the inventor.
Now as it is the inventor who must find a patent attorney, rather than the other way around, what are some of the parameters the inventor will using to measure the patent attorney? Some may say price and that is high on the list. But even before that is question of enrollment or registration at the U.S. Patent and Trademark Office Registration to practice as a patent attorney. Lacking that registration, there is no “patent attorney” and no need to ponder the other questions regarding quality of service. However, having satisfied the issue of registration and having achieved a satisfactory price, the inventor should be determining if the patent advice, based on specialized knowledge known to the patent attorney and not to the inventor, is correct.
To illustrate and to advance the lesson, consider the claiming of the invention and the test made of the inventor when attempting to understand the quality of service received. At one time is was easier for the inventor than it is now. But with changing times, there are tradeoffs and while present claiming practice is less restrictive, sometimes producing broader appearing claims, the older less used claiming practice, was easier for understanding and less likely to be misunderstood by the court in a Markman proceeding. For information, a Markman proceeding places on the court, the crucial determination of the meaning and ultimately, the scope of the claims. This can be dangerous as it takes the definition of the invention from the inventor and places it in the hands of a non-technically educated judge.
That places a quality of service burden on the shoulders of the patent attorney to write claims easily referable to the invention described in the application specification and with a scope of equivalents meeting any possible variation envisioned by the inventor, while understandable by a judge with no more than a liberal arts education.
To place a date on the change in the way claims are written and the presently evolved claiming practice, it was after the time of the creation of the “patent court,” known as the Court of Appeals for the Federal Circuit, which is the only court designated to hear appeals from decisions of the U.S. Patent Office and appeals of trial court decisions in patent infringement cases. That was in the early 1980's and before that, an appeal of an infringement decision could go to any of the eleven circuit courts of appeals with the result of eleven variations of how a claim is to be interpreted.
In that historical time, the U.S. Patent Office required each patent practitioner to demonstrate an ability to correctly prepare claims meeting the strict standards of the Patent Office. Those standards included a recital, in the case of an apparatus or system, of each part, using the language of the specification, even if that language was “coined” by the inventor as long as it was understandable by those “skilled in the art.” Following the recital of the parts, the attorney was required to connect the parts by reciting each of the parts again in a precise antecedent form, and the inventive essence of the connection in a statement of their inventive cooperation. Some slack was cut for, or taken by, the attorney in ending the claim in a sweeping “whereby” clause where the inventive result could be summed up as the achievement of the precisely recited parts and cooperative organization without reciting strictly how the antecedent parts cooperate to achieve that sweeping result.
While the “whereby” clause made it easier for the attorney, it made it more difficult for the inventor when pursuing putative infringers, where the defense rested on a different theory of cooperating elements to achieve the “whereby” inventive result. Now, however, that standard is not required and instead, it is up to the patent attorney and the patent examiner to decide only if the claims, according to the patent law, particularly point out and distinctly claim the invention. The result, is more of a subjective decision based on a reading of the specification, the knowledge of the examiner and the intuitive feeling the examiner can develop from the application’s description of the invention. It may not be much to go on when contemplating paying the final patent bill or the expensive patent annuities to maintain an issued patent in force or even paying the retainer of a patent attorney when pursuing an infringer.
That leaves the client seeking patent legal advice perhaps only one sure parameter for measuring the quality of service rendered. That would be: has the patent attorney prepared at least one set of claims precisely reciting each part of the system, in the case of an apparatus patent, or step for a method patent, and the cooperative connection of each of the parts or steps necessary for the recited inventive result? The reason is two fold. First, it will reveal whether the patent attorney truly understands the invention, an ethical requirement of competence. Second, it will give the inventor at least one claim which is precisely tailored to the invention’s dimensions and which will be clear to any judge that it covers an infringing copy of the patented invention. And the third reason is that is a quality of service parameter well within the capability of the inventor.
Next month I’ll delve deeper into the quality of service issue of the scope of claiming options and whether the patent attorney has taken full advantage of each option.
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Joel I. Rosenblatt is state Supreme Court certified and available for mediation and arbitration. He practices as a registered patent attorney in patents, trademarks and copyrights. Specific areas of practice include commercial law related to electronics, computers, data processing, telecommunications, materials and mechanical engineering, the Internet and entertainment and in the development and licensing of technology and creative works. As Intellectual Property and Licensing Counsel for Fortune 200 corporations, he has acquired numerous patents for electronics and computer related inventions, and has prepared and negotiated design, development and distribution agreements for software, telecommunications, electronic technology, and creative works. As a logistics attorney, he has provided counsel and representation in the field of customs, logistics services, and in loss and damage claims.
Mr. Rosenblatt is available for mediation and arbitration in the fields of general law, intellectual property, entertainment, and technology law, and in logistics law and loss and damage claims. Emphasizing technology and the arts, he serves a wide range of intellectual property and commercial needs for individual and business clients. Mr. Rosenblatt, as a senior level attorney can provide clients easy access and quick turnaround.
Education and Professional Affiliations:
Mr. Rosenblatt holds a Bachelor of Electrical Engineering Degree from the New York Polytechnic University, an MBA from the Wharton School of the University of Pennsylvania, and a JD from the Catholic University of America Law School.
Mr. Rosenblatt is a Registered Patent Attorney with the U.S. Patent and Trademark Office and a member of the Florida and New York State Bars. Admitted to practice in the Court of Appeals for the Federal Circuit, the United States Court of Appeals for the 11th Circuit, the United States Court of International Trade and the United States District Courts for the Northern, Southern, and Middle Districts of Florida. Florida Supreme Court Certified for Circuit Court Mediation and approved by the Florida Bar as a Mediator of Computer Law Disputes. Mr. Rosenblatt has completed Florida Supreme Court Certified Arbitration Training and is certified as a Mediator and Arbitrator in the United States District Court for the Middle District of Florida. jrosenblatt@cfl.rr.com . |
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