Copying, inventing, and lying under oath

A patent practitioner writing a patent application usually starts with a very sketchy description of the invention from the inventor and ends up with a very lengthy monograph of the invention. The extra information included in the patent application has to come from somewhere. Typically, the extra information comes from one or more of the following sources: the practitioner's knowledge of the field of the invention, the practitioner's conversations with the inventor, other related applications the practitioner has written before, other work the inventor has done before, published patent or non-patent literature, and impromptu inventions by the practitioner.

The inventor has to review the patent application before the patent application can be filed. When the inventor receives the monograph that is called a patent application, he becomes somewhat overwhelmed with all the new information. The inventor starts to review the patent application. The inventor may not understand some of what he is reading because the document is written in a peculiar way—a combination of legal writing and technical writing. He may read the shorter background of the invention a little diligently and then speed-read through the lengthier detailed description of the invention, leaving a few notes here and there for the patent practitioner to show that he reviewed the patent application. By the time the inventor gets to the claims, he can barely stand looking at the patent application anymore. He marks the review as complete and returns the marked-up patent application to the patent practitioner.

Usually, when the inventor is reviewing his patent application, he is focused on whether the description is technically accurate (i.e., sounds good) and whether what he thinks is unique about the invention has been enunciated. But this sort of review is not enough. For the review to be complete, the inventor should also verify that the invention described in the patent application is actually his invention. Now, one may think that such a verification is not important, except that trouble can brew when the inventor fails to verify that the invention described in the patent application is actually his invention.

Take the case of CSHL (Cold Spring Harbor Laboratory), which is suing a former patent counsel for mistakes in handling of shRNA patent applications based on inventions by one of its researchers, Greg Hannon. According to the article titled "CSHL Sues Former Patent Counsel for Mishandling shRNA Patent Applications," which appeared in RNAi News on on the 25th day of February 2010, CSHL is suing the former patent counsel for the following reasons: (1) the patent counsel did not provide an original, complete description of Hannon's inventions in Hannon's patent applications, (2) a significant portion of the detailed description (including certain preferred embodiments) of Hannon's inventions consisted of text copied (verbatim) from prior patent applications, and (3) the patent counsel failed to seize several opportunities to re-draft Hannon's applications to include a complete and original description of Hannon's inventions. CSHL is suing the former patent counsel because these mistakes have jeopardized its ability to protect Hannon's inventions at the U.S. Patent and Trademark Office.

When I read the freely-available portion of the article, I could not help thinking that Hannon must have reviewed the "defective" patent applications. Not only must he have reviewed them, he must also have claimed the inventions described in the patent applications as his via an oath or declaration that is required to be filed with all non-provisional U.S. patent applications. If significant portions of the patent applications included materials not invented by Hannon, Hannon should have protested while reviewing the patent applications that the extraneous materials are not his inventions and that his inventions had not been adequately described. He should not only have protested, he should also have refused to execute any oath or declaration until the patent applications were rid of the defects. By executing the oath or declaration, he effectively lied about what he had invented. Thus, the former patent counsel may have not been diligent in preparing the patent applications, but the inventor lied under oath, which means CSHL may have a hard time winning its case against the former counsel.

Usually, failure to review a patent application properly does not always result in a law suit. In some cases, it may just make it impossible or extremely difficult to get a patent. For example, the information that may be needed to distinguish the claimed invention over the prior art may be missing from the patent application. This was actually an issue with the Hannon applications.