Tuesday, March 21, 2017

You can wait before suing on a patent

Latches is an equitable doctrine that says you can't know about a claim you could bring and then wait years before bringing a lawsuit.  The idea is that after a while, people should be able to rely on the fact that you haven't sued to indicate that you won't.  Last year SCOTUS found that latches doesn't apply to copyright cases.  Today they extended that holding to patent cases.  https://www.supremecourt.gov/opinions/16pdf/15-927_6j37.pdf

This is a rare pro-inventor win at the Supreme Court, and maybe (hopefully) an indication that the court is starting to feel it has dealt enough damage to the patent system.  Maybe.

But the bottom line is this:  If you invent a new device (say, a nanobot that monitors health) and you patent it, if another company copies your design and produces the device for 6 years, gaining dominant market position, you can sue them for the 6 years of back damages (the max the statute allows) and for an injunction and damages going forward.  They cannot say "he knew about it from day 1, allowed us to become big for 6 years, and then sued" as a defense.

This does not change the rule that if the infringer knows about the patent and still infringes, intentional infringement damages are available.

So the inventor's knowledge about infringement does not impair the ability to sue; the infringer's knowledge about infringement does harm the infringer's position in litigation.

Friday, February 24, 2017

Who is running the USPTO?

Since Donald Trump's inauguration, there has been confusion about who is running the USPTO.  The USPTO's site says it is Michelle Lee, but the Department of Commerce's site (which is in charge of the USPTO) says the position is vacant.

Because of a quirk in federal law -- requiring that plaintiffs sue the director of an agency and not the agency itself -- there is a real urgency to finding out who the director is.  Inventors have a right to ask the federal courts to review certain agency decisions -- but it is unclear whether that right can be exercised if you don't know who to name in the suit.

Because of the importance of the question, I wrote up a Freedom of Information Act request and submitted it on January 26, 2017.  The response was due today, but instead of a response I got a notice saying they were taking an extra ten days to respond.

This is, at best, bizarre behavior from a federal agency.  The public has a right to know who is running the government.  In my opinion, the two most plausible explanations are both bizarre and scary.  (1) The agency itself does not know who is running the agency; or (2) The agency is keeping the identity of its director or acting director secret for as long as possible.  Both explanations reveal deep dysfunction.

I have produced today's agency response below: