Patent Law

Tarnished

By Gary Odom and Jordan Kuhn

Landmark Screens had Thomas D. Kohler file a patent application in 2002 for an electronic billboard. Allegedly, after a restriction requirement, Kohler dropped claims and supposedly filed a divisional. But, according to Landmark, Kohler screwed up, lost continuity, thus losing the original priority date, making the parent and its own billboard prior art. It seems that the so-called divisional omitted the specification - nothing but a sheet of paper indicating that a divisional was being filed. Landmark sued for malpractice last week.

From the complaint, regarding the 10/640,916 divisional:

Pennie & Edmonds and Kohler failed to properly and with due care submit to the PTO the '916 divisional application, which included those claims covering novel and valuable aspects of Landmark's invention, by at least the following negligent errors and/or omissions: (a) failing to include a copy of the specification and drawings with the '916 divisional application, as required by the PTO, thus rendering Landmark's divisional application incomplete; (b) submitting an obsolete and out of date transmittal letter with the '916 divisional application that failed to contain an incorporation by reference statement concerning the specifications and drawings filed with the '096 application, thus rendering Landmark's divisional application incomplete; and (c) failing to utilize a "postcard receipt," method by which the PTO could have notified Pennie & Edmonds and Kohler in a timely manner of the missing portions of the '916 divisional application.

The suit alleges that Landmark should have been notified earlier, as in: "actively concealed... negligent actions", that Kohler (shown in photo) let the clock run out on correcting the problem before notifying Landmark. Kohler was with Pennie & Edwards, which was absorbed by Morgan Lewis in late 2003.

The complaint charges legal malpractice, negligence, breach of fiduciary duty, and breach of implied contract.

Whatever constitutes prosecution malpractice overshadows that Landmark apparently hired a bozo prosecutor, and thereby lost what may have been valuable intellectual property. Patent Hawk practically makes a living from junk patents by inept prosecutors. Not a select group by any means. Many patents are badly done. Few are what they should have been.

If you want quality prosecution work you can rely upon, call Platinum Patents. How's that for naked self-promotion!

Sources: the complaint, dribble from Zusha Elinson in Law.com, and comments from a blurb in Patently-O. Also covered by Dan Slater at the Wall Street Journal.

Full post as published by The Patent Prospector on May 30, 2008 (boomark / email).