$7M PATENT MALPRACTICE AWARD - SCARY STUFF!
Dan Fishman
attorney for obtaining insufficient protection for his invention in the
issued patent.
The patent involved is 5,276,596.
The inventor apparently asserts that Black & Decker's "SnakeLight" is
similar to the patented invention. But the patent holder asserts that
the patent attorney did no obtain broad enough protection for his
invention. Apparently the inventor claims that the patent attorney
obtained only "structural" claims for his flashlight holder and failed
to obtain method claims for use of the invention.
Quoting from the Boulder Daily Camera article (www.bouldernews.com
12/9/99):
"Though Krenzel and his attorneys are uncertain to what extent, if any,
Black & Decker "borrowed" from Krenzel's invention in developing
SnakeLight, they argued the real issue was the lack of a proper patent
to protect the invention."
...
"We believe it is consistent with what occurred — that the law firm did
in fact fail to protect his invention and that invention became part of
the SnakeLight."
...
"One of Krenzel's arguments was that the Klaas firm filed for a
'structural' patent for Lite Fantastic, meaning the patent would cover
the device's structural makeup. Rather, Jablonski argued the Klaas firm
should have filed for a 'method' patent covering the device's use."
It would be interesting to know more about the patent attorney's
interaction with the client in preparing, filing and prosecuting the
patent.
But regardless, this is scary stuff. And we thought all we had to worry
about was changing patterns of claim interpretation by the courts!
--
Daniel N. Fishman, Registered Patent Attorney
(303) 442-8100 (Voice)
(303) 442-8160 (Fax)
(303) 579-2847 (Cellular)
dfis...@acm.org OR fis...@ip-legal.com
mcp
We were told at Kayton that malpractice claims against Patent Attorneys
were rare. Is this case an anomaly or the shape of things to come? Did
the price of drafting and filing a patent just increase? Does a patent
attorney/agent now have to have one or two colleagues review his/her
work before filing?
It's scary. Maybe the conversations between the inventor and the patent
attorney need to be videotaped. ("Just get me a patent...I don't have a
lot of money to spend on this thing. It probably won't sell anyway.")
Bruce Hayden
>
> A Boulder Colorado inventor just won a $7 million award from his patent
> attorney for obtaining insufficient protection for his invention in the
> issued patent.
>
> The patent involved is 5,276,596.
> 'structural' patent for Lite Fantastic, meaning the patent would cover
> the device's structural makeup. Rather, Jablonski argued the Klaas firm
> should have filed for a 'method' patent covering the device's use."
The problem here is that many patent attorneys seem to not view
inventions functionally, but rather as a connection of parts.
I found this when I started writing electronics cases. Our background
(Dan's and mine) is in software, and we are thus used to thinking
functionally. Many engineers (and thus patent attorneys) are not.
The worse one I ever saw was a software patent claimed as a
collection of parts - a processor, a display device, a pointing
device, etc. all coupled together. I still have a vision of the
examiner while he was filing his 102 rejection looking at his PC
and trying to figure out what was going on. (There was enough in
the spec that I could file a continuation and get some functional
coverage).
> But regardless, this is scary stuff. And we thought all we had to worry
> about was changing patterns of claim interpretation by the courts!
Yes. It is a bit scary. I know that I sure didn't carry $7 million
in malpractice when I was in private practice. Dan would know more
about the firm's reputation, as he works in the area, and I haven't
for five years or so now. But my impression is that this was not
a low end firm, and had a decent reputation.
There is a bunch of "crap" out there these days, and it is
no longer just at the bottom end. Rather, I would suggest that
the overall quality of patent drafting has decreased over
the last couple of years as the demand for patents has gone
up faster than the supply of experienced practitioners has.
--
--------------------------------------------------------------------
The preceding was not a legal opinion, and is not my employer's.
Original portions Copyright 1999 Bruce E. Hayden,all rights reserved
My work may be copied in whole or part, with proper attribution,
as long as the copying is not for commercial gain.
--------------------------------------------------------------------
Bruce E. Hayden bha...@acm.org
Phoenix, Arizona bha...@ieee.org
bha...@copatlaw.com
Bruce Hayden
> We were told at Kayton that malpractice claims against Patent Attorneys
> were rare. Is this case an anomaly or the shape of things to come? Did
> the price of drafting and filing a patent just increase? Does a patent
> attorney/agent now have to have one or two colleagues review his/her
> work before filing?
I am not sure if that would have helped here - not knowing more
of the specifics yet than those Dan posted. But yes, I think the
stakes just went up.
I would argue though that it was inevitable. There is too much money
now involved in patents. They are worth too much for the type of
stuff that some patent practitioners are churning out (I do not
think that was the problem here, but is elsewhere).
On patentpractice-l yesterday, there was a discussion about a guy
getting disciplined by a state bar for how he treated his patent
clients. The URL for his web page showed that his firm had issued
somewhere on the order of 200 patents this year, at an average
price of $7k. One of his software cases that I reviewed was 8
pages long, including 4 of drawings (of something akin to flowcharts)
and six columns of text, including 7 fairly narrow method claims.
Besides the narrowness of the claims (which may admittedly be a
function of some very crowded prior art), I also question whether
the 4 1/2 columns of text, excluding claims, was really enabling.
But even without the incompetence that Greg Aharonian rages about,
I do see a problem in that it is indeed easy to make mistakes in
the patent business, and those mistakes can cost money. In the case
that Dan posted, it appears that Black and Decker made a bunch
of money on their SnakeLite.
> It's scary. Maybe the conversations between the inventor and the patent
> attorney need to be videotaped. ("Just get me a patent...I don't have a
> lot of money to spend on this thing. It probably won't sell anyway.")
But as I pointed out elsewhere, this may not have been the
problem here. The firm hammered does not have a reputation of
"bottom feeding", but had been able to bill itself out as being
fairly "high-tech".
Glenn Webb
attorney offered to do a reissue within the two year period but the inventor
refused and went to another local law firm who handled the reissue. I
have also been told that the defense case may have confused the jury who
apparently was sympathetic to a solo inventor against a law firm.
On the insurance side, I had great difficulty in obtaining insurance as a
solo practitioner due to the amount of patent prosecution in my practice.
My rates were greatly lowered when I partnered with a litigator. Most
carriers now believe while the risk of malpractice is low, the liability
when it occurs is great.
Glenn L. Webb
Webb & Lewis, LLC
Denver, Colorado
mcp <m...@pagesz.net> wrote in message news:385064...@pagesz.net...
> Dan Fishman wrote:
> >
> > A Boulder Colorado inventor just won a $7 million award from his patent
> > attorney for obtaining insufficient protection for his invention in the
> > issued patent.
> >
> > The patent involved is 5,276,596.
> >
> > The inventor apparently asserts that Black & Decker's "SnakeLight" is
> > similar to the patented invention. But the patent holder asserts that
> > the patent attorney did no obtain broad enough protection for his
> > invention. Apparently the inventor claims that the patent attorney
> > obtained only "structural" claims for his flashlight holder and failed
> > to obtain method claims for use of the invention.
> >
> > Quoting from the Boulder Daily Camera article (www.bouldernews.com
> > 12/9/99):
> >
> > "Though Krenzel and his attorneys are uncertain to what extent, if any,
> > Black & Decker "borrowed" from Krenzel's invention in developing
> > SnakeLight, they argued the real issue was the lack of a proper patent
> > to protect the invention."
> >
> > ...
> >
> > "We believe it is consistent with what occurred - that the law firm did
> > in fact fail to protect his invention and that invention became part of
> > the SnakeLight."
> >
> > ...
> >
> > "One of Krenzel's arguments was that the Klaas firm filed for a
> > 'structural' patent for Lite Fantastic, meaning the patent would cover
> > the device's structural makeup. Rather, Jablonski argued the Klaas firm
> > should have filed for a 'method' patent covering the device's use."
> >
> > It would be interesting to know more about the patent attorney's
> > interaction with the client in preparing, filing and prosecuting the
> > patent.
> >
> > But regardless, this is scary stuff. And we thought all we had to worry
> > about was changing patterns of claim interpretation by the courts!
> >
> > --
> > Daniel N. Fishman, Registered Patent Attorney
> > (303) 442-8100 (Voice)
> > (303) 442-8160 (Fax)
> > (303) 579-2847 (Cellular)
> > dfis...@acm.org OR fis...@ip-legal.com
>
>
> We were told at Kayton that malpractice claims against Patent Attorneys
> were rare. Is this case an anomaly or the shape of things to come? Did
> the price of drafting and filing a patent just increase? Does a patent
> attorney/agent now have to have one or two colleagues review his/her
> work before filing?
>
JMargolin
They should not complain when they are ensnared by
the system that they created.
File this under: "Hoisted by their own petard."
================================
George Morgan
Juries are famous for big awards that get set aside. George H. Morgan,
Professional Engineer, Patent Agent, visit my site at
http://www.evansville.net/biz/patagent
Bruce Hayden <bha...@ieee.org> wrote in article
<38511592...@ieee.org>...
> Dan Fishman wrote:
>
droe2
jury awards?
"George Morgan" <pata...@evansville.net> wrote in message news:01bf457e$eaf9d2a0$d71f78cc@morgan1...