Delay in investigation and death of continuation

Last week was our annual Patent Portfolio Management Program, where we discussed the business, legal, and patent enforcement realities involved in building and maintaining the patent portfolio that companies need, whether that is the result of organically created and protected innovation, portfolio growth through mergers and acquisitions, or through strategic patent management. file acquisition.

One of the more important conversations from a patent owner’s perspective was how to responsibly and continuously grow a patent portfolio through continuation. At first glance, you might want to dismiss this conversation as casual, unprovocative, and unworthy of attention. Not so fast!

While patent practitioners typically do not have to worry much about prosecution negligence, it has become quite a hot topic since the United States Patent and Trademark Office (USPTO) and the courts initiated actions that can only be described as an attack on an applicant’s statutory right to seek and file additional claims if those claims are supported by the initial disclosure.

This came to light in the courts recently when a district court found that the Sonos patents at issue in a patent dispute against Google were unenforceable for negligent prosecution because Sonos had filed a motion to continue. Never mind that the claims were supported by — and Actually incorporated from—a prior filing. According to the district court, because Sonos could have filed these claims in the continuation earlier, it created a negligence defense for Google.

It is clear that the district court is wrong, and the case is on appeal to the Federal Circuit. Unless the Federal Circuit wants to shake the very foundations of patent enforcement in America, filing a continuation cannot legally—not legally, practically, or rationally—lead to a finding of negligence. The statute gives patentees the right to file continuations, and the USPTO remains under injunction to not disrupt a practice of continuations that goes back to the Office’s failed attempts to limit the number of claims and continuations that an applicant could file.

Interestingly, while the courts and the USPTO have focused on the fact that the claims in the continuation may have been filed earlier, neither the courts nor the USPTO seem willing to acknowledge that filing continuations is usually necessary, because patent examiners refuse to provide the scope of claims to which the applicant is truly entitled until continuations and requests for continued examination have been filed and the examiners have obtained additional production within their quota. You see, examiners have to do so much work to maintain a good reputation and to preserve their positions, and one way many examiners ensure this is by gradually giving patent applicants the claims to which they are entitled, so that they receive numerous additional filings related to applications they have already fully reviewed.

In any event, negligent prosecution should apply only to egregious cases of unreasonable and unexplained delays in prosecution. And a finding of negligent prosecution should require that the accused infringer be harmed by the applicant’s egregious delay by proving that it invested in, worked on, or used the claimed technology during the period of delay. Last year, the Federal Circuit ignored the harm requirement when it found that PMC had engaged in egregious and unreasonable delay, resulting in a finding of negligence in Apple’s favor, despite the fact that Apple did not begin any infringing activity until years after the delay ended, which, as Judge Stark pointed out in a separate opinion, meant that Apple had failed to prove the harm required by the applicant’s delay.

That’s why, at a time when negligent prosecution is becoming an increasingly effective excuse for infringement, last week we discussed this problem, what companies can and should do differently, if anything, and why the ability to add patents through the use of continuations is critical for innovators.

This podcast is part of my conversation with Dean Geibel, General Counsel, Patents, Samtec, Inc., and Eric Foster, Intellectual Property Counsel, First Solar, Inc.