Wednesday, December 13, 2006

Sun-Times obtains patentability opinion McKenna made for Jackson

In a patentability opinion patent attorney Michael McKenna wrote for truck driver-inventor Joe Jackson in March 2002 (obtained by the Chicago Sun-Times on Dec. 12), McKenna said: "I recommend that no patent application be filed. This opinion is based upon our search of the relevant records of the United States Patent and Trademark Office (PTO)."

The Sun-Times does not say "exactly how" it obtained the opinion, but it does mention the document appearing: "In papers retrieved by Jackson's son from the trunk of his father's car." The Sun-Times also notes: The document -- dog-eared and oil-stained -- doesn't indicate whether there was further correspondence or contact between Jackson and McKenna until Friday's deadly shooting. [IPBiz notes that an opinion written in March 2002 would not reference correspondence AFTER March 2002.]

The Sun-Times also states: The 100-plus-page document, which provides dozens of references and accompanying artwork of already-patented similar toilets, was turned over to Jackson four years ago.

IPBiz notes that an opinion turned over to Jackson in March 2002 would fit into a time scale of six weeks from Feb. 18, 2002 (the date of the meeting of Jackson and McKenna), so that McKenna worked on the project and replied promptly. In other words, McKenna did perform the task as McKenna promised to Jackson on Feb. 18, 2002. It may not have been what Jackson wanted, and Jackson may not have understood the significance of the work by McKenna.

IPBiz suspects that the "100 plus pages" comprise primarily copies of US patents. It is unlikely that truck driver Jackson (or most people) would understand the significance of the patent documents per se. It would be interesting to note how the unpatentability of Jackson's invention is explained in the "patentability opinion" of McKenna itself. It would also be interesting to see which pieces of prior art were emphasized in the opinion, to try to understand "why" Jackson got the idea that McKenna deceived him. The Sun-Times is silent on these points. It does summarize the situation:

In papers retrieved by Jackson's son from the trunk of his father's car, McKenna told Jackson that his idea wasn't likely to earn a patent, but that Jackson was free to use McKenna's research to apply for a patent or look into "licensing options."

In related matters, IPBiz has questioned whether the Cosby patent is anticipatory prior art to the Jackson invention. The Cosby patent was published by the time of the McKenna opinion.

A discussion of comments made by Rev. C.L. Sparks, including commentary on the meeting between McKenna and Jackson on Feb. 18, 2002, appears

Separately, although the file on the disciplinary complaint made by Jackson against McKenna (which was found to be without merit) is not publicly available, it would probably shed light on the matter.


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