Session 3.4 SEARCHING IN THE COMPUTER AGE: Dealing with the Client

1. Session 3.4SEARCHING IN THE COMPUTER AGE:Dealing with the Client FICPI FORUM – VENICE October 7, 2004 R. Danny Huntington & Erin Dunston

2. TYPES OF SEARCHES Patentability Infringement Validity Freedom to Operate

3. PATENTABILITY SEARCHES No duty in the U.S. to search for art (M.P.E.P. § 609 “There is no requirement that an applicant for a patent make a patentability search.”) However, must disclose material information uncovered during search Economic status of client often controls (Costs now versus costs later; sophistication of client may lead to conclusion that search is unlikely to be productive)

4. PATENTABILITY SEARCHES(Continued) Define the Search (Often helpful to draft rough claim, or at least decide what the elements of a claim might be based on invention as initially described by the inventor)

5. PATENTABILITY SEARCHES (Continued) Talk to inventor(s) Get as many documents as possible from inventor during that discussion Do a quick initial search on patent office website for a patent in the same general area, and then discuss invention with the inventor using the patent as a guide

6. INFRINGEMENT SEARCHES Potential Plaintiff Allocate percentage of budget to searching Electronic searching has greatly improved the ability to obtain information on products, literature, etc. of others (Rule 11) USPTO website and 18-month publication have greatly increased ability to get information and potential reward (35 U.S.C. § 154(d) - right to reasonable royalty from publication until issuance, provided published claims are substantially identical to those that issued; search may allow drafting of claims for publication that are substantially identical to issued claims)

7. INFRINGEMENT SEARCHES (Continued) Potential Defendant Allocate percentage of budget to searching (or should they after recent Knorr decision by the Federal Circuit?) Electronic searching has greatly improved the ability to obtain information on products, literature, etc. Electronic searching has also increased ability to monitor published claims to design around, and obtain early opinion about infringement/validity May decide to provoke interference to prevent issuance

8. INFRINGEMENT SEARCHES (Continued) Potential Defendant (Continued) Claim construction will be an issue Need to review file history for: Possible estoppels Definitions in patent that might guide search Evidence of unexpected results Need to consider both literal infringement and doctrine of equivalents Claim-by-claim analysis

9. VALIDITY SEARCHES Electronic Databases are VERY helpful, but are only as good as the information that has been added (that is, the value of electronic searches for older technologies may not be as useful) Crowded art or not?

10. VALIDITY SEARCHES (Continued) Claim-by-claim analysis Need to look for elements of claim in combination If not an anticipation, need documents to demonstrate obvious to combine based on skill in the art

11. FREEDOM TO OPERATE SEARCHES Define the commercial embodiment Obtain information about product or service Discuss with client all elements of potential product/method Important to discuss all possible modifications/substitutions which may arise Determine other products in market and whom marketed Search by both technology and company names

12. FREEDOM TO OPERATE SEARCHES(Continued) Discuss commercial embodiment with searcher Try to define commercial embodiment in claim-like format (i.e., element-by-element) Explain scope of each element including possible modifications/substitutions

13. FREEDOM TO OPERATE SEARCHES(Continued) Ensure that searcher appreciates distinction from validity search Must search all patents/patent publications which will be in force at the time commercial embodiment is practiced

14. FREEDOM TO OPERATE SEARCHES(Continued) If potential infringement is identified, may need to do separate validity opinions on those patents

15. RECOMMENDING or DISCOURAGING SEARCHES Regardless of the decision, must inform the client of the pros and cons How does the attorney memorialize, or does he/she, that the pros and cons were discussed? Probabilities versus certainties (can make reasonable inferences in favor of client)

16. RECOMMENDING or DISCOURAGING SEARCHES (Continued) Make certain understand art before providing preliminary conclusions Only provide writing after certain that understanding is correct Dangerous to provide full opinion for review and modification by client prior to finalizing (may want to provide summary of art to client for review without conclusions)

17. RECOMMENDING or DISCOURAGING SEARCHES (Continued) In final analysis, want opinion that will cause trier of fact to believe that an appropriate effort was made If more than one opinion is prepared, cannot expect to be allowed to disclose only one, or parts of opinions While no longer a presumption that failure to produce an opinion means that it was unfavorable, judges will still be looking for fairness

18. DUTIES OF THE ATTORNEY Attorneys have the duties of, inter alia: Competence Communication Candor

19. DUTIES OF THE ATTORNEY COMPETENCE Focuses not only on the attorney’s qualifications, but how a given matter is handled Model Rules of Professional Conduct Rule 1.1 (2003): “Competent representation requires the legal knowledge, skill, thoroughness and preparation reasonably necessary for the representation”

20. DUTIES OF THE ATTORNEY COMPETENCE Are you personally competent to complete the search, or should others do the search? Model Rules of Professional Conduct Rule 1.1 cmt. 5 (2003): “Competent handling of a particular matter includes inquiry into and analysis of the factual and legal elements of the problem, and use of methods and procedures meeting the standards of competent practitioners.” May want to retain a technical advisor

21. DUTIES OF THE ATTORNEY COMMUNICATION A lawyer should explain a matter to the extent reasonably necessary to permit the client to make informed decisions regarding the representation. Model Rules of Professional Conduct Rule 1.4 cmt. 5 (2003). Considerations regarding the types of searches

22. DUTIES OF THE ATTORNEY CANDOR “In representing a client, a lawyer shall exercise independent professional judgment and render candid advice.” Model Rules of Professional Conduct Rule 2.1 (2003). Candor is both a duty of the advisor and an element of competence and communication Advisor contrasted with advocate Impact of search terms, scope, etc.

23. DUTIES OF THE ATTORNEY CANDOR The demise of the negative inference may promote candor Opinion versus search results (duty of disclosure will dictate disclosure of material documents discovered during search, but not underlying opinion concerning patentability)

24. Thank You