41 Years of Patent Practice

Lessons LearnedJohn Raubitschek

Patent Lawyers Club of DCFebruary 28, 2007

Patent Examiner

• Photography and bleaching arts - Groups 170 and 160

• When I started in the PTO, application fee was $30 which agencies had just started to pay

• Compact prosecution was new and PTO focus was on hours per disposal

NOL Patent Agent

• Prepared and prosecuted applications on propellants and explosives

• Liked working with inventors

• Nervous about explosions in labs

DC Patent Firm

• Worked mostly on mechanical inventions

• Much prosecution controlled by foreign associates

• Little interaction with inventors or clients

• Stayed less than a year

NAVSHIPS

• Looked for unreported inventions• Obtained licenses for USG but contractor owned

inventions• Contractor may lose all rights under Campbell

case (CAFC 2004) for not reporting invention• Challenged legends on drawings to allow re-

procurement by USG• Now formal validation procedures with due

process

National Science Foundation

• Acted on requests for rights by universities in their inventions made with NSF funds

• Case-by-case review time consuming, especially for valuable inventions

• IPAs greatly streamlined process by allowing universities having a tech transfer program to own their inventions

• IPA based on NIH model and codified later in Bayh-Dole Act in 1980

• B-D also protected patent applications from FOIA and made fellowships tax exempt

Lesson – seek change of the law to fix a problem

NAVSEA

• Handled administrative infringement claims and court suits against Navy

• Sometimes delay helps USG; in Jamesbury law suit, we settled reducing a 71/2% “jury verdict” by trial judge to 5% because of 20% interest rate in a 20-year old case

• In Jamesbury, was cross-examined by law classmate on document prepared by another classmate, which we later dropped

• Claim against agency by patentee may be a waste of time even though statute of limitations is tolled

Lesson – be careful in litigating against classmates

Army

• Determined rights on all Army inventions• Court review of two – Heinemann (sustained) and

Zacharin (patent held invalid)• My FBA journal article cited in Heineman cert petition• Army military doctor court martialed for lying on rights

determination questionnaire• Doctor acquitted because jury confusion over when the

invention on a blood substitute was made but two bar complaints filed against me – dismissed after explaining that I was Army’s attorney

Lessons – know who your client is and be careful what you publish

Army (continued)

• Denied an infringement claim because infringement not authorized by Army

• On appeal of later DC case, Judge Rich of CAFC said Army patent counsel was wrong and USG should have been sued, not the contractor

Lesson – John can be wrong

PTO

• Assoc Solicitor – briefed and argued 20+ cases at CAFC, won all except 3 but 2 were published

• In re Wands, lost landmark biotech case• In review of rexam in DCDC under sec 145 –

appellant forced to pay for PTO’s expert• Law classmate rejected proposal for joint expert,

wanted to control testimony • Represented OED in attorney discipline and re-

grades of registration exam• Lesson – don’t lie to OED or represent self

Commerce

• Administered patent regs in 37 CFR parts 401 (B-D), 404 (licensing) and 501 (employee rights)

• Two rights appeals (EPA and USDA) sustained in court review

• Interesting licenses (1) after CAFC decision on ownership, DoI desalination invention produced $2 1/2 million a year from NTIS nonexclusive licenses; (2) NIST exclusive license on DSA sustained in litigation in DC and CAFC but dropped after NSA objected

Lesson – ask agency counsel if language of law or reg is ambiguous or unclear

Commerce (continued)

• SCt IP cases – when opinion on cert requested by Court, SG asks DoC and other agencies; usually SG opinion based on a consensus altho agency views not publicly available

• SG may file amicus brief with agency views• Upon request, OSG and agencies may meet

separately with litigants before position is taken• SCt has heard a number of IP cases in recent

years and usually follows SG recommendation Lesson – “lobby” agency in pending SCt IP case