IP Attorneys Increasingly Getting Their Own Patents And Suing

from the joining-in-the-party dept

A year ago, the story of patent attorney Scott Harris started making headlines. While being an IP attorney at a prestigious law firm, on the side, Harris had been getting his own patents, and then using a shell organization to sue companies for infringing. Some of the companies sued were represented by the firm that Harris worked for. Talk about a conflict of interest, right? Well, reporter Joe Mullin has discovered that these sorts of things are increasingly common. Various IP attorneys involved in patent hoarding lawsuits are seeing how lucrative it can be to just get a patent and sue -- and so they're eagerly jumping into the game themselves. Mullin dug up a bunch of cases of IP lawyers getting their own patents, and then suing over those patents, outside of their day job. Not surprisingly, many of the patents seem highly questionable (a patent on a car entertainment system that has a radio in front with DVD video in back.)

However, the bigger question is the conflict of interest. First, with lawyers getting their own patents, there are always going to be questions about whether any of the patents are really the work of clients rather than the lawyer themselves. In fact, in the case of the car entertainment system above, one of the companies that's been sued over the patent points out that "two diagrams and several columns of text" appear to be directly plagiarized from another company's patents -- who just so happened to be a client of law firm the lawyer worked for. Oops.

The second potential conflict of interest is, as with Harris, about suing companies that are represented by the law firm the lawyer in question works for. In some cases, the lawyers dance around this. For example, in one of the cases Mullin discusses, the lawyer sued three of the four companies who own CareerBuilder. The lawyer did not sue the fourth owner, the Tribune Company. Why? While there's no official explanation, it's not hard to figure it out. The Tribune Company is a client of the law firm the guy works for. The other three owners are not. So, basically, the Tribune Company got lucky that the guy with the patent just happens to work for a law firm it uses. Perhaps the law firm sees this as a way of "locking in" clients: leave us, and one of our lawyers will sue you for patent infringement.

Either way, the article is a pretty depressing look at the state of patent law and patent lawyers these days.

Laws are laws, and the "state of patent law," or the state of any law, does not change by the actions of individuals who violate the law, or interpret the law to their own benefit. For example, is an increase in the number of premeditated murders a commentary on the "state of homicide laws"? It seems to me that the commentary is more on the enforcement of those laws, or the competence of law enforcement officials.

Also, without reading the articles, it seems to me that if a patent attorney has gained knowledge from a client that permits the patent attorney (or patent agent) to file and obtain a patent, then 37 C.F.R. 110 Canon 9, would be applicable: A practitioner should avoid even the appearance of professional impropriety. Beyond that, 37 C.F.R. 10.21, 10.57, 10.61, 10.65, 10.66, 10.76, 10.83, 10.84, 10.87 and 10.89 might be applicable, depending on the circumstances. Should any or all of these be applicable in a particular circumstance, a client (and potentially others) could file a complaint with the Director of the USPTO.

As with any profession, there will always be the equivalent of ambulance chasers, or those who appear to be ambulance chasers. They should hope they do well in their endeavors, because word gets around.