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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 jirosenblatt@earthlink.net
TRUE LIES
Are there any? The words themselves would reveal the truth only if the truth revealed the lie. With that in mind, a truth or a lie, may appear anywhere, anytime, in the legal process, but there is a distinction which does make a difference. Our legal system is unlike others where guilt or liability is admitted as a sign of good citizenship. Ours is an adversarial system, standing on the Fifth Amendment right not to self incriminate. However, given human nature and its penchant for rationalization, our rights, exercised in the adversarial system may produce less than the full truth which becomes less than a full lie, and sometimes the distinction blurs.
But there is another part of the legal system without adversaries and where less than the truth regularly goes unchallenged because the other non-adversarial party is under no obligation, or lacks the structure or authority, to question the “truth” of the statements made. That is what is known as an ex parte as compared to an inter parte, proceeding. The best known example of an ex parte proceeding has recently transpired every where there was an obligation to file a 2002 Federal Income Tax Return. Although the “Sword of Damocles,” hangs above our heads in the knowledge there is the possibility of an audit and a criminal charge if income is understated, it is self apparent that some of the information entered on the tax form, known only to the individual, and not reported to the IRS on a W-2 or other reporting form, may be entered with the rationalization, “it won’t be caught.” .”.
In the intellectual property legal process, the best known ex parte proceedings regular take place before the U.S. Patent and Trademark Office and before the Librarian of Congress, Registrar of Copyrights.
A patent application is made with the knowledge a patent will certainly issue if there is no other prior invention duplicating or rendering the claimed invention obvious. But there are other grounds for denying a patent, stated in the patent law and constructively known to all applicants. For example, no patent will be granted if the invention was in public use or one sale in the U.S.A. or published anywhere in the world, more than one year prior to the filing date of the application. The most famous case is of bearings placed on a crankshaft for experimentation and after the experiment proved successful, the automobile with the bearing was sold, placing the invention within the grasp of the public for more than one year and invalidating any patent issuing therefrom. In the ex parte non-adversarial process, there is no possibility that the patent examiner would ever know of hidden adverse facts, without disclosure by the applicant. It is because of this disadvantage that patent examination requires as a matter of law, the duty of good faith, candor, and honesty. Words that spring to mind, with “candor,” are “forthrightness,” as in a sincere unreserved honest expression.
The patent field is the most notorious for a lack of candor, so much so that inventor’s uncorroborated testimony was hardly taken as credible. However, the trademark field is the most likely candidate for the “measured deception,” which when exposed, will invalidate any registered trademark. To gain a measure of a “measured deception,” one only has to look to the statutory form of the trademark application to see how a good faith deception or outright fraud, may occur. The applicant is required to state, “to the best of his or her knowledge and belief,” that there is no other party with the right to use the same or similar mark in commerce, must verify the facts in the application as to the mark’s date of first use and the goods or services with which the mark is used and verify the applicant is the owner of the mark.
In trademarks fraud is likely only because good faith mistakes are more easily made. The most likely place is in the “date of first use, and it is a mistake that may easily serve as grounds for invalidation. The trademark examiner will accept the applicant’s date of first use as stated in the application because the Trademark Office is not equipped or authorized to verify its truth. That is why the trademark law requires the applicant verify all of the information. However, the registration process requires the trademark be published for a thirty day period and as fraud in the application is always grounds for invalidating the registration, the prospect of parties with an adversarial interest opposing the application, may serve as the applicant’s “alter ego,” encouraging full candor in the initial application process.
For those who would ask the question, how would anyone know the date of first use given in the application was not true, the answer is in a trademark dispute, the very first interrogatory and request for discovery, is directed to the verifiable business records of the applicant showing a sale in commerce of the goods, as stated in the application. That means an arms length sale or provision of, or advertisement of, services, in interstate commerce, as shown by invoices bearing the trademark and some model number or other suitable description, as sent with the goods.
So what are the wages of less than full candor? It’s called inequitable conduct and is the scarlet letter for any petitioner in a court of equity. The remedy sought by a patentee or owner of a registered trademark, is based on the statutory right of exclusive use. That means the owner can petition a court for an order enjoining any party within the court’s jurisdiction from using the invention or the mark. That remedy is equitable and one of the great maxims of the equity court is those who seek it must show it and must come into the court with clean hands.
What makes “hands,” once clean now dirty, is one of the great wonders of the equity court but there are a few glaring examples serving a bright line reminders that good faith, candor, and honesty remain a rigid rule in dealing ex parte with a patent or trademark examiner.
In the patent area “fraud,” means undisclosed facts known to the applicant which are material to the examination process, and provable by clear and convincing evidence. Luckily for the potential fraud, its proof requires a heavy weight of evidence. In the trademark area, the burden is the same but easier to prove, without the requisite business records or some credible witness who can verify in a credible manner that in “yesteryear,” a sale of the trademarked goods really did take place.
If fraud is found, the patent or trademark will be found invalid, an order will issue invalidating the patent or mark, and there may be more bad news coming. The consequences of asserting a right acquired by fraud and unclean hands, leaves the party asserting the right, without a legal right to the equitable remedy sought of “exclusive use.” It may sound complicated but it’s not. Think of taking something you believe you own, take it, and then find out you don’t own it. That’s stealing. Now, place “exclusive use,” side by side with “monopoly,” or “attempt to monopolize,” for an instant match, leaving our former patentee or trademark proprietor in violation of federal and state law and possible criminal liability. Not a good place to be and avoidable, as we say in the law, ab initio.
Stay Tuned for Next Month's Article!
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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. jirosenblatt@earthlink.net . |
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