3M Gets Stuck with Attorneys' Fees in Patent Case

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In Transweb LLC v. 3M Innovative Properties Company & 3M Company, the Federal Circuit Court of Appeals affirmed the district court’s finding that 3M was liable for antitrust violations in that 3M was found to have obtained its patent through inequitable conduct and subsequently sought to enforce the patent. As a result of 3Ms behavior in both acquiring and enforcing the patent, the appellate court awarded treble attorneys’ fees which came to about $26 million.

The patents at issue focus on filter material used in respirators for construction workers etc.  Transweb had developed a new filter material similar to the 3M subject patents. The Federal Circuit found the 3M patents were invalid based on evidence indicating that Transweb’s president distributed samples of their new filter material at a trade show more than a year before 3M filed patent applications covering their new filter material. The finding of inequitable conduct was confirmed because the evidence indicated 3M knew of Transweb’s prior distribution, and did not properly disclose it to the US Patent and Trademark Office as required.

The court then found that 3M’s enforcement of their patent against Transweb constituted an antitrust violation as an abuse of the legal process and awarded Transweb’s attorneys’ fees for defending against 3M’s lawsuit.  In justifying the award, the court stated that the attorneys fees were appropriate because they flowed directly from “3M’s unlawful act [of] bringing suit based on a patent known to be fraudulently obtained.” In awarding treble attorneys’ fees, the court indicated that the enhanced award was justified because the suit brought by 3M forced Transweb to either cease competition in the market or expend money to defend itself.

What’s the take away here?  When preparing and prosecuting a patent application, ensure that your organization meets all requirements with regarding to disclosure to the US Patent Office.  This requires diligence and educating all involved in the process.  Sometimes that can include sales, marketing, and business development personnel as well as R&D and manufacturing. 

Protecting your innovative developments is critical to any organization.  Having the right person to help you make that decision is important.  The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game.   The first telephone consultation is free.  Email us at klynch@kliplaw.com.

Rethinking Patent Costs

The other day I was speaking to a business owner.  She regretted not seeking patent protection sooner and more often for various innovations developed by her company.  When we discussed average costs, she was surprised that the costs were considerably lower than what she thought they would be. 

Provisional patent preparation and filing costs will depend on the approach you take to filing.  There are basically two approaches to provisional patent filing.  The first is the “cheap and cheerful” approach that requires that basic structure and function of the invention be communicated in the application with appropriate drawings, photos, and/or data or other relevant information. 

The second provisional filing approach is to treat the provisional the same as a utility application.  This means that the application will be written in a more formal, structured style as required for utility applications, including a set of claims, formal drawings, etc.  The cheap and cheerful application can be free if you file it yourself.  The US Patent and Trademark Office website has an inventor assistance center that provides basic information and help with filling out patent filing forms. Costs for provisional applications range from free if you do it yourself to an average of $4000, according to the American Intellectual Property Law Association (AIPLA).  I think this figure is high and would recommend shopping around.   See my previous post on selecting the right patent attorney for your invention.

Regular utility applications will cost more because they are more formal in nature and require drawings that comply with the U.S. Patent Office rules.  However, if you go the more formal route first and file your provisional application as if it were a utility, then you only incur the cost once, except for additions and/or changes.  Memories fade and attentions turn to other priorities.  I believe the best approach is to prepare your provisional one time.  In the long run, if there are few additions or changes, the cost is less than doing it twice.  The average cost of a utility application is $7000 according to the AIPLA.  Again, I would get more than one estimate and look at smaller firms and locations in areas where the cost of living is less. 

At the end of the day, if you are self financing, it is still a significant spend.  However, if your patentable innovation is at the core of your business, you can’t afford not to seek protection. 

What’s the take away here?  Don’t write off your ability to protect your invention with a patent before speaking to at least two or more patent professionals.  Protecting your innovative developments is critical to any organization.  Having the right person to help you make that decision is important.  The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game.   The first telephone consultation is free.  Email us at klynch@kliplaw.com.

DIY Patent Searches: Good Luck with That

Recently I’ve found websites and blog posts promoting your ability to conduct your own patent search.  Unless your invention is extremely straightforward, I would not recommend doing that. 

The U.S. Patent Office was created in 1802.  As such, issued patents were organized by categories or classes and subclasses.  As innovation has evolved, the categories of classes and subclasses has evolved and changed considerably.  Unless you are extremely familiar with the patent records organization, you are better off spending your money on a professional searcher who will find all of the relevant categorical nooks and crannies.  Often times a material, process or structure in your invention may have applicability in areas you have not considered.  These need to be identified and pursued in order to obtain a full and thorough search. 

Patentability must be based on a complete search to have value.  If not, you are spending good money after bad by investing in the preparation and filing of a patent application based on incomplete patent search results.  You are better off knowing that your invention is unpatentable than spending money on the preparation and filing of a meaningless application.  In addition, your application, and particularly your claims, can be tailored to that patentable space defined not only by your invention but by the relevant prior art found in a good search. 

Capitalizing on innovative developments is critical to any organization.  Having the right person to help you make those decisions is important.  The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game.   The first telephone consultation is free.  Email us at klynch@kliplaw.com.