Patent Law

Eric Lane is the author of the Green Patent Blog ("covering intellectual property issues in clean technology") which launched in December 2007.  He is a patent attorney at Luce, Forward, Hamilton & Scripps in San Diego, where he is in the Intellectual Property and Climate Change & Clean Technologies practice groups.

The following is excerpted from his July 13, 2008 post titled, "A Lesson for Nilssen: Breaking the Rules Proves Costly for Prolific CFL Inventor:"

In a previous post I wrote about Ole K. Nilssen, who played fast and loose with the U.S. Patent & Trademark Office (PTO) disclosure rules while prosecuting and maintaining some of his 200+ patents directed to compact fluorescent lighting (CFL) technology.  Nilssen?s shenanigans included incorrectly claiming the right to pay reduced fees reserved for small entities, submitting misleading affidavits, and failing to disclose to the PTO then-pending litigation with Motorola on related subject matter.

The inventor?s conduct before the PTO was later deemed inequitable conduct by the district court and the Federal Circuit Court of Appeals (Federal Circuit) (Patent rule 1.56 imposes a duty of candor on the applicant, and patent case law deems such deception and incomplete disclosure of material information during the patent application process ?inequitable conduct? that renders any resulting patents unenforceable).

It turns out that Nilssen?s sloppiness before the PTO spilled over to the courtroom and has cost him about $6 million.  Last month the Federal Circuit affirmed a district court decision that Nilssen should pay Osram Sylvania, Inc.?s (Sylvania) attorney fees to cover the cost of the patent infringement suit Nilssen brought against Sylvania.

See the full post here.