What do when no file history
yaco...@aol.com
patent. There is no file history -- it is lost.
Does patentee have a duty to maintain? How would the claims be
construed if the file history cannot be located?
Thank you in advance,
Ronnie
Alun L. Palmer
news:1113952841....@f14g2000cwb.googlegroups.com:
The file history should normally exist in three places. In the patent
office, with the owner of the patent rights, and with the attorneys or
agents that prosecuted the case. If it was prosecuted in house, or if the
inventor prosecuted it pro se, then there may be only two copies of
everything, but note that very few in house patent cousel prosecute
everything themselves, most use outside firms for some if not all of the
work, and they will keep their own copies of everything.
I assume that you mean that the patent office have lost the file, which
sadly is not all that uncommon. You can put it on 'official search', but
there is no guarantee that it will ever show up. Most, if not all, patent
agents/attorneys maintain their own files, and they should be well able
to reconstruct what is in the patent office file. Unfortunately, you have
no automatic right to see what they have. If you were in litigation with
them you could get it throught the discovery process, but as a
prospective licencee you can only ask.
As to how the claims would be interpreted with no official file, it is
likely that discovery would reveal the history to the court, so the
question wouldn't arise. I could envisage a situation where the patentee
had bought the patent rights and maybe other assets of a failed company,
where perhaps the patentee had no file history, but the odds of this
coinciding with the patent office having lost the file are pretty low.
Alun Palmer, Patent Agent
Emma Anne
Do you mean the patent office lost the file? Or the licensor did?
yaco...@aol.com
The patent offce, and the patentee says they have no documents, as it
was prosecuted a while ago. I do not know if they did a real search,
but that is their story.
I am wondering if they can assert their claims against us in this
scenario, or are they barred until they provide a files history
somehow?
Thanks,
Ronnie
Emma Anne
> Emma Anne wrote:
> > chil...@aol.com <yaco...@aol.com> wrote:
> >
> > > My company has been advised by a patentee that we need a license to
> a
> > > patent. There is no file history -- it is lost.
> > >
> > > Does patentee have a duty to maintain? How would the claims be
> > > construed if the file history cannot be located?
> > >
> > > Thank you in advance,
> > >
> >
> > Do you mean the patent office lost the file? Or the licensor did?
>
> The patent offce, and the patentee says they have no documents, as it
> was prosecuted a while ago. I do not know if they did a real search,
> but that is their story.
A company is trying to claim someone is infringing their patent and they
don't have a copy of the file history? I am extremely skeptical.
>
> I am wondering if they can assert their claims against us in this
> scenario, or are they barred until they provide a files history
> somehow?
>
If it were me, I wouldn't be inclined to entertain many claims of
infringement without seeing a file history. You can't know what the
claims cover without the file history. It may be full of narrowing
amendments and disclaimers.
(Not legal advice!!)
yaco...@aol.com
Emma Anne wrote:
> A company is trying to claim someone is infringing their patent and
they
> don't have a copy of the file history? I am extremely skeptical.
There is not much term left on it, so it was prosecuted a while back.
Anyway, that is their story.
> > I am wondering if they can assert their claims against us in this
> > scenario, or are they barred until they provide a files history
> > somehow?
> >
>
> If it were me, I wouldn't be inclined to entertain many claims of
> infringement without seeing a file history. You can't know what the
> claims cover without the file history. It may be full of narrowing
> amendments and disclaimers.
>
> (Not legal advice!!)
Thank you, but here is the problem. I need ot know the threat they
actually have over us. Can they assert it against us without a file
history and ask a court to interpret the claims as is, or are they
prohibitied form asserting it in a lawsuit because there is no file
history.
If the former I have to go to court if I do not license. If the latter
I can tell them to buzz off.
How do I find out which one it is?
TIA,
Ronnie
Alun L. Palmer
@o13g2000cwo.googlegroups.com:
The way it works is that if you end up in court with them you can try to
get the file history from them through discovery, but it seems likely that
they haven't got it, and you can't get blood out of a stone. If the PTO
have also lost it then you probably can't get it from there either,
although you can put it on official search, which if I were you I would
have done already, in the hope that it will turn up.
There doesn't seem to be anything preventing the courts from construing the
claims without a file history, if you can't find one.
Alun Palmer, Patent Agent
Emma Anne
I don't think you are going to get an answer to that question here.
That is a legal opinion with serious consequences - your attorney needs
to answer those kinds of questions. Sorry.
Mike Brown
>>>scenario, or are they barred until they provide a files history
>>>somehow?
I know of no law which says that a file history is a prerequisite to
suit. However, I can see that if there is a question of claim
interpretation, and they assert an interpretation which is counter to
the plain meaning of the words of the claim, that the judge might be
skeptical of their claim that they had argued that interpretation to the
examiner but can't find the file any more.
>>If it were me, I wouldn't be inclined to entertain many claims of
>>infringement without seeing a file history. You can't know what the
>>claims cover without the file history. It may be full of narrowing
>>amendments and disclaimers.
>>(Not legal advice!!)
Indeed, that is the problem. In the vast majority of cases the file
history is not of much help or hindrance - the only time it comes into
play is if there is some term in the claim which, if interpreted one
way, your product would infringe, and if interpreted another way, your
product would not, AND the applicant said something in the prosecution
of the patent which would swing the interpretation one way or the other.
For example, if you make a widget with a polarized frammistat, and the
patent's claims say "A widget comprising a polarized frammistat", and
your product looks just like the one in the patent drawings, there is
little or no probability that the file history is going to make the
slightest bit of difference. What term would you need to go to the file
history to interpret?
Which, in the end, is the reason why there's not a whole lot of use in
getting people in this forum to express "opinions" in the abstract,
without reference to the claims and the potentially infringing product.
These things are very fact specific, and you need to get professional
help on your specific product with reference to this specific patent.
Is there any term in the patent claims which even needs
"interpretation," or is it clear on its face? If the claims are clear,
and the terms used cover your product, it is unlikely that the file
history will include some admission that will change the situation. Not
impossible, of course, just unlikely. It's a hard sell to argue that the
words in a claim do not mean what they say because of an admission in
the file history.
Do the claims in the patent read on your product literally at all? Maybe
there is some element in the claims which is not present in your
product. Again, no need to look at the file history, if you don't have
all elements of the claim, you're not infringing.
Or is there some difference between your product and the claim, but the
patentee trying to bring your product in by saying the claim covers your
product under the "doctrine of equivalents"? There, the file history
might have been of some use, if there were claim amendments which might
have limited the scope of the doctrine of equivalents. However, there is
still discovery, and if, in the end, there is no record and no one to
depose to find out if there were amendments (what, everyone who touched
the file is dead or senile?), then the judge might consider this in how
he interprets the claims.
Does your product only infringe the claim if a certain word is
interpreted in a certain way? If so, then the file history would be of
some help, but it's not the only source of help. How do the references
in the field use the term? Can you get an expert to testify that the
critical word does not apply to your product? What does the patent
specification say? What do the drawings show? Do other patents use the
term in a way which would cause your patent to infringe, or is it always
used in a way which would let you off the hook? Is there prior art which
would force an interpretation one way or the other? All of these factors
will come into play.
Finally, even if the claims apply, is there prior art which would
invalidate the patent or limit it to the point where you don't infringe?
> I need ot know the threat they
> actually have over us. Can they assert it against us without a file
> history and ask a court to interpret the claims as is, or are they
> prohibitied form asserting it in a lawsuit because there is no file
> history.
They are not prohibited from asserting the claims, and you need to get
professional help to find out if you really have a problem or can tell
them to buzz off, as you say.
--
Michael F. Brown
Registered Patent Attorney No. 29,619
Emma Anne
(snip)
> Indeed, that is the problem. In the vast majority of cases the file
> history is not of much help or hindrance - the only time it comes into
> play is if there is some term in the claim which, if interpreted one
> way, your product would infringe, and if interpreted another way, your
> product would not, AND the applicant said something in the prosecution
> of the patent which would swing the interpretation one way or the other.
>
> For example, if you make a widget with a polarized frammistat, and the
> patent's claims say "A widget comprising a polarized frammistat", and
> your product looks just like the one in the patent drawings, there is
> little or no probability that the file history is going to make the
> slightest bit of difference. What term would you need to go to the file
> history to interpret?
Really good point. I was making the underlying assuption that it was
difficult to tell if the claims were being infringed or not, but we
don't know that. Certainly there are many cases where it is not
difficult - I just don't have clients hiring me to do opinions for those
cases.