Thursday, March 25, 2010

Ropes & Gray: copying patents legal and ethical?

A post by Brian Baxter notes Ropes & Gray filed a motion on March 23 to dismiss under FRCP 12(b)(6) the Cold Spring Harbor Lab [CSHL] malpractice suit, with Baxter including the text:

Ropes & Gray argues that copying text from other patents is a perfectly ethcal and legal practice.

The exact text of the R&G brief states:

Significantly, CSHL does not contend that there is anything inherently wrong
with copying text into a patent application. To the contrary, such copying is accepted practice.
See DAVID PRESSMAN, PATENT IT YOURSELF 181 (13th ed. 2008) (sold in the PTO's store and
relied on by many practitioners) ("If you see any prior-art patent whose specification contains
words, descriptions, and/or drawing figures that you can use in your application, feel free to
Patents are not covered by copyright and it's considered perfectly legal and ethical
to make use of them.") (emphasis added).

The text feel free to plagiarize! reminds one of Harvard Business Review's text "Plagiarize with Pride". As to the freedom to plagiarize, IPBiz notes, well, sort of.

An important point to note is that plagiarism and copyright violation are two DIFFERENT things, and here the difference matters a bit. Usually copying might be for the purpose of filling in background: that which is already known and clearly represented as such. [Keep in mind that this sort of copying of background information, without attribution, was found NOT to be acceptable in the plariarism cases at Ohio University.] Separately, the absence of copyright protection is not permission to fail to attribute. Rule 1.63(b)(3) imposes a duty to disclose material information. If what was copied (without attribution) is material to patentability, there is a problem. [In passing, one wonders "what happens" if someone copies material from a patent which is separately copyrighted, eg, a later patent applicant copies a figure in a patent which actually is subject to a prior copyright.]

Copying, without attribution, into a "detailed description of the invention" might be considered something different from filling in background. Representing to an examiner that you invented something that was in fact invented by someone else does not fall under the ambit of "feel free to plagiarize." If a reasonable examiner might have thought it "was" the invention, that might be inequitable conduct, too. Further, if the copying into the "detailed description of the invention" distorted what the CSH invention appeared to be, then arguments based on alternative grounds of rejection might ring hollow.

So far, IPBiz has not seen a discussion of the impact on this case of Rule 1.63 which includes

(a)(4) State that the person making the oath or declaration believes the named inventor or inventors to be the original and first inventor or inventors of the subject matter which is claimed and for which a patent is sought.

(b)(2) State that the person making the oath or declaration has reviewed and understands the contents of the application, including the claims, as amended by any amendment specifically referred to in the oath or declaration; and

(b)(3) State that the person making the oath or declaration acknowledges the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56.

**This raises the point of "who" is supposed to recognize copying and other bad acts? See

NYTimes finally mentions on Dec. 25 role of MBC in Hwang-gate

**As an ironic twist, the authors of the text in the HBR of "plagiarize with pride" drew a line at robust patents:

At page 68 in the April 2004 issue of HBR, one has in the article that became the basis for Hardball:

Plagiarize with pride.

Softball competitors like to think that their bright ideas are sacred. But hardball players know better. They're willing to steal any good idea they say --as long as it isn't nailed down by a robust patent -- and use it for themselves. Ray Kroc didn't invent McDonald's; he took the idea from brothers Dick and Maurice McDonald when he bought their small chain of burger joints. Home Depot founders Arthur Blank and Bernie Marcus didn't invent the first warehouse-outlet hardware chain; they got the "big box" concept from their earlier employer, Handy Dan Home Improvement.

[from the IPBiz post Harvard Business Review article: Plagiarize with Pride in August 2006; see also]

In the memo's section on 12(b)(6), there is a point on federal jurisdiction:

See Immunocept, LLC v. Fulbright & Jaworski, LLP, 504 F.3d 1281, 1283
(Fed. Cir. 2007) (concluding that jurisdiction under 28 U.S.C. § 1338 was appropriate where "the
malpractice claim presents a substantial question of patent law . . ."). Nevertheless, the
substantive elements of each cause of action are governed by state law.

although the jurisdiction of the federal district court under 1338 is not challenged. There is a
substantial question of patent law in this case.

The memo does challenge venue for the case in SDNY pursuant to 1391(b)(1) and 1391(b)(2).

The memorandum of law by Philip R. Forlenza of Patterson Belknap is available.

Previous IPBiz post on Ropes & Gray case:

Plagiarism by patent attorney leads to malpractice claim

A piece in jdjournal noted:

Ropes & Gray filed a motion to dismiss on Tuesday, citing the fact it is common practice to copy text from other patents.

“Cold Springs Harbor Laboratory’s lawsuit lacks merit because the determination of the (Patent and Trademark Office) to reject the patent applications is based on the existence of prior work with other respected scientists and not on our firm’s efforts,” the firm said in a statement.

**Nate Raymond in the NYLJ had text:

Hannon said he had been unaware the applications contained text similar to Fire's patent. Cold Spring said laboratory and other records support the conclusion that Hannon had already conceived of the use of short pin RNA before the patent application was filed.

Whether or not Gregory Hannon was unaware of similar TEXT, one finds it somewhat hard to believe that Hannon was unaware of Fire's WORK. As noted above, an inventor has a duty NOT to file claims that merely re-state that which is known:

(a)(4) State that the person making the oath or declaration believes the named inventor or inventors to be the original and first inventor or inventors of the subject matter which is claimed and for which a patent is sought.


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