Dr.
Isailovic serves as an expert witness in patent litigation:
he assesses and evaluates patents and patent portfolios.
Patent
Assessment
Our staff can help you maximize the value of your patent portfolio
by evaluating it to assess whether it might infringe on existing
or emerging technology standards. We also evaluate portfolios
to rate patent claims for licensing potential. We produce
claim charts including limited reverse engineering when necessary.
Conversely, we can help you minimize the cost of bringing
your technology to market by assessing whether identified,
existing patents infringe on your technology.
In the case of alleged patent infringement, we examine the
prior art to try and determine its validity.
KEYWORD SUMMARY: Digital cinema, channel
coding/modulation; intellectual property; A/V, video architect,
video distribution, VoD, streaming video, video compression,
MPEG-1-2-4-7-21, AVC/H.264, VC-1, JPEG, DTV, HDTV, standards
committee, set-top box design, video monitors; multimedia;
analog and digital circuits and systems design; optical recording,
DVD.
US
intellectual property today is worth more than $5 trillion.
The US Patent and Trademark Office recently received an application
seeking a patent for what was claimed to be a better way to
stand in line while waiting to use an airplane toilet.
Electronic laboratory notebooks
A patent provides rights to an inventor to restrict the ability
of others to make, use or sell an invention. To obtain a patent,
an inventor must submit a novel and unique concept to a government
agency. In the scientific domains, laboratory notebooks are
typically used as the primary evidence toe prove inventorship
of a concept and the details of its first successful use,
or what is known as “reduction to practice”. The
US awards patents on a “first inventor” basis
rather than on a “first to file”, as almost rest
of world does.
Lately, the use of electronic laboratory notebook (ELN) technology
has risen sharply. ELN technology has not only led to increases
in laboratory efficiency and improved leverage of institutional
knowledge, but also to enhance protection of intellectual
property (IP). In December 2006, the risk of ignoring the
proper management of patent-supporting electronic records
changed appreciably with amendments to the United States Federal
Rules of Civil Procedure (FRCP). These changes alter the procedures
of discovery, which is the process of requesting, or compelling,
information from one party to another in a civil case [see
Rule 26(a)(1) A and B].
The first patent board in the US, established in 1970, was
made up of Secretary of State Thomas Jefferson, Secretary
of War Henry Knox, and Attorney General Edmund Randolph. The
board issued only three patents in the first year.
Charles Duell resigned as head of the patent board in 1899
because “everything that can be invented has been invented.”
Patent Reform Act of 2009 |
| Hot items |
- Provisions for post-grant review
that would allow patents to be challenged outside
of court at the US Patent and Trademark Office (PTO)
after they had been granted.
- Limiting infringement damages: global manufacturing,
pharmaceutical and biotech industries are squaring
off against the computer, IT, and financial sectors.
|
| For (the bill) |
It will improve the quality of patents while limiting
needless infringement cases. |
| Against |
The changes will stifle invention, decrease patent
values, and weaken protection and enforceability
of patents for small and start-up companies. |
| Issues |
First –to-file procedure:
gives credit for an invention based solely on the
application’s filing date rather than on the
date of the invention itself. Independent inventors
and small business would be up against large companies
in the race to the patent office finish line.
A post-grant review procedure
would allow a third party to submit a cancellation
request to the US Patent and Trademark Office
a full 12 months after the patent was issued.
The re-examination process could further delay
patent authorization and enforcement.
The way damages are calculated in patent
infringement suits:
Currently, a patent infringer typically is fined
for the entire market value of a product. This
is preferred by many small companies as well as
pharmaceutical and biopharmaceutical businesses,
because they typically have only a few patents
associated with a product.
The proposal would require courts to apply a reasonable
royalty rate by subtracting the value of prior
art from the value of the infringed product. This
is a preferred choice for the high-technology
large companies such as Microsoft, Apple, Intel,
Google and IBM, because a typical computer or
phone component usually incorporates numerous
patents and can incur million dollar damage fees.
|
| My oppinion |
Don’t separate engineers/inventors from
patents/inventions |
| Opposing opinion |
One may argue until the cows come home …
Copyright rights – it all comes down to money:
when money talks, rights walk. |
|
Essential problems: protecting patents
and avoiding unnecessary litigation. |
| Rule 26: Major Changes
for Attorneys and Experts |
| A major revision to the federal rules governing expert
witness reports is on track to take effect in December.
Lawyers and experts alike agree that the changes are long
overdue.
No longer would Rule 26 of the Federal Rules of Civil
Procedure allow full discovery of draft expert reports
and require broad disclosure of any communications between
an expert and trial counsel, as has been the case ever
since the rule's revision in 1993.
Instead, under proposed amendments to Rule 26, those
communications would come under the protection of the
work-product doctrine. The amendments would prohibit
discovery of draft expert reports and limit discovery
of attorney-expert communications. Still allowed would
be full discovery of the expert's opinions and of the
facts or data used to support them.
The changes were approved by the U.S. Judicial Conference
in September and submitted to the Supreme Court. The
Supreme Court is expected to approve the amendments
by May 1 and submit them to Congress. Unless Congress
rejects the rules, they will take effect on Dec. 1,
2010.
The proposed rule is broadly supported by trial lawyers
and bar organizations as a step towards reducing the
cost and contentiousness of litigation.
Organizations that endorsed the rule include the American
Bar Association, American College of Trial Lawyers,
American Association for Justice, Defense Research Institute,
Federal Magistrate Judges’ Association, Lawyers
for Civil Justice, Federation of Defense & Corporate
Counsel, International Association of Defense Counsel,
and the U.S. Department of Justice.
Dual Sets of Experts
"Lawyers and experts take elaborate steps to avoid
creating any discoverable record and at the same time
take elaborate steps to attempt to discover the other
side’s drafts and communications," the Judicial
Conference explained in its report to the Supreme Court.
"The artificial and wasteful discovery-avoidance
practices include lawyers hiring two sets of experts
– one for consultation, to do the work and develop
the opinions, and one to provide the testimony –
to avoid creating a discoverable record of the collaborative
interaction with the experts."
The proposed rule would expressly provide that the
work-product protection applies to "protect drafts
of any report or disclosure required under Rule 26(a),
regardless of the form in which the draft is recorded."
The proposed rule retains the three categories of attorney-expert
communications that are excluded from the work-product
protection under the existing rule:
1. Communications pertaining to the expert's compensation.
2. Facts or data that the attorney provided and the
expert considered in forming opinions.
3. Assumptions that the attorney provided and that the
expert relied on.
In another change, the proposed rule would alter the
procedure for witnesses who will provide expert testimony
but who were not specifically retained to provide expert
testimony. Treating physicians and government accident
investigators are examples of this category of expert.
Under the proposed rule, if the expert is not required
to submit a written report, then the lawyer who will
use the testimony must submit a disclosure summarizing
the facts and opinions to which the expert is expected
to testify.
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