Thursday, October 23, 2014

Code of Conduct

Last week, the companies responding to the ITC complaint by Revolaze made their initial filings and, on first glance, things seem to have gone in an unexpected direction.  While I haven’t had an opportunity to review the actual filings, based on the news reports I have seen it appears that the respondents are claiming inequitable conduct by Revolaze.

Inventors, patent attorneys and agents, and people who are substantively involved in the preparation and prosecution of patents have an obligation to deal with the USPTO in candor and good faith.  These people also have a duty to disclose information they are aware of when this information is material to the patentability of an invention.   This is generally referred to as the Duty of Disclosure

The failure to comply with the duty of disclosure will result in a finding of inequitable conduct and the cancellation of the entire patent. 

Operating with candor and good faith are the key to meeting this requirement.  What the USPTO requires and expects is that applicants will share with them everything they know. 

While there are many aspects to the duty of disclosure, there are two areas I want to focus on.

The first focus area involves prior art.  It commonly happens that applicants come across prior art that is material to patentability after an application been filed.  The important thing here is to forward this information to the USPTO as soon as possible.  And by ASAP, I mean immediately – the sooner this information gets to the USPTO the easier it is for everybody.

The second focus area involves properly identifying the inventors.  Unfortunately determining the inventor can be a touchy subject.  What I have observed is that after a project is successfully completed the politics will kick in and everybody involved in the project will want their name on the patent.  Unfortunately, it just doesn’t work that way.  The people to list as the inventors are only those people who came up with the critical elements of the inventive concept.  And unfortunately, the inventors can change through the patent prosecution process.  There are a number of reasons this will happen but a common example is when an application is “divided,” or split into two applications.  When an application is divided along the lines of an inventor’s contributions, then some inventors will have to be removed from the original application.  

In the Revolaze case, the respondents appear to be claiming that Revolaze was deceptive when they identified the inventor.  And if that is true, that would be very bad news for those patents.

Below is a summary of selected patents that have been recently issued in textile related classification codes:

Yarns of polyoxadiazole and modacrylic fibers and fabrics and garments made therefrom and methods for making same:  This invention relates to a flame-resistant spun yarn, woven fabric, and protective garment, comprising a blend of 60 to 85 parts by weight of polyoxadiazole staple fiber and 15 to 40 parts by weight modacrylic staple fiber; based on 100 total parts of the polyoxadiazole staple fiber and modacrylic staple fiber in the yarn. This invention also relates to methods for making the yarn.  Patent:  8695319.  Inventor:  Zhe.  Assignee:  E I Du Pont De Nemours And Company. 

 Tufting machine and methodA method for using a tufting machine to produce athletic turf bearing precise graphic tuft patterns at a high throughput rate is disclosed. The utilized machine includes tenter frame and a series of tufting frames upon which tufting head components are mounted. The entire length of a piece of backing material is wrapped around the tenter frame, and the tenter frame circulates the backing past the tufting frames, and the tufting head components are shifted as may be necessary to form a desired graphic tuft pattern.  Patent:  8695519.  Inventor:  Bearden.  Not Assigned

Fire retardant panel compositions:  A fire retardant structural board is provided that includes a body of fibrous material, a triglycidyle polyester binder, a sodium borate pentahydride fire retardant, and a sodium borate pentahydride fire retardant. The body of fibrous material has a weight, first and second surfaces, first and second sides, and a thickness. The fibrous material and triglycidyle polyester are dispersed throughout the thickness of the body. The sodium borate pentahydride fire retardant is dispersed between individual fibers of the fibrous material and throughout the thickness of the body. A sodium borate pentahydride fire retardant composition also coats at least the first surface of the body.  Patent:  8697586.  Inventor:  Balthes,  Assignee:  Flexform Technologies, Llc

Nanowebs:  A nonwoven web of fibers that have a number average diameter of less than 1 micron. The web can have a Poisson Ratio of less than about 0.8, a solidity of at least about 20%, a basis weight of at least about 1 gsm, and a thickness of at least 1 micrometer.  Patent:  8697587.  Inventor:  Arora,  Assignee:  E I Du Pont De Nemours And Company. 

Surgical Bra with Mastectomy Kit:  A surgical compression bra for patient support with a mastectomy kit. The surgical bra includes a body portion with a releasable front closure, shoulder straps with releasable closures, an internal pocket, adjustable poly filled pad prostheses, and a detachable mastectomy pouch.  Patent:  8696403.  Inventor:   Haley.  Assignee:  Bras To Help Save The Ta Tas, Llc

Jim Carson is a principal of RB Consulting, Inc. and a registered patent agent.  He has over 30 years of experience across multiple industries including the biotechnology, textile, computer, telecommunications, and energy sectors.  RB Consulting, Inc. specializes in providing management, prototyping, and regulatory services to small and start-up businesses.  He can be reached via email at or by phone at (803) 792-2183.

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