tag:blogger.com,1999:blog-5574479.post231232263644205705..comments2024-03-28T11:16:43.146+00:00Comments on The IPKat: Are there ethical reasons for not "googling" your inventor client?Verónica RodrÃguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger17125tag:blogger.com,1999:blog-5574479.post-4597912772851980082015-02-24T12:20:08.799+00:002015-02-24T12:20:08.799+00:00To the anon at 15.34, I can't see any issue wi...To the anon at 15.34, I can't see any issue with filing of patents when you are aware of knock-out prior art, as long as the client is fully aware of the implications of this, i.e. that they will be spending money on a patent that is potentially worthless, and that he cannot use it in court. And, as long as they obey the rules e.g. in the USA regarding disclosure of relevant prior art. Having "Patent Pending" for a time is a perfectly good reason for filing. There may also be contractual obligations to file on research done for a third party.<br /><br />And of course, the patent examiner may validly disagree with one's own viewpoint on the relevance of a particular piece of prior art.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-21787840729931974642015-02-23T08:41:17.252+00:002015-02-23T08:41:17.252+00:00To anon at 20:26:
You say you fully disagree with ...To anon at 20:26:<br />You say you fully disagree with me, yet you then go on to discuss professionalism regarding vetting your client.<br /><br />My comment is in respect of prior art searching prior to a patent filing. I fail to see the connection. Unless, of course, your professionalism involves reading your client's scientific publications as opposed to running credit checks. Personally, I don't see that as valid or relevant, but if you do find something of interest prior to taking on a new client (presumably that is when you do your check?) you can tell your client prior to agreeing to draft an expensive application. Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-77625237750518825992015-02-22T23:37:52.554+00:002015-02-22T23:37:52.554+00:00Anon 15.34, when I was in industrial practice, one...Anon 15.34, when I was in industrial practice, one of the subsidiary companies had a policy of filing a new patent application for a feature of its new products, however trivial, to keep competitors guessing. Their competitors did the same, and I never considered it unprofessional behavior. Sauce for the goose is sauce for the gander. The client ought to know his business, and a feature that is prima facie trivial to the non-expert, may turn out to be commercially important. I still recall one for a mounting bracket that I drafted that seemed so trivial it had a snowball's chance of getting granted. The main embodiment could have been knocked up in miniature a century ago from half a dozen standard Meccanno parts, but the closest prior art found by the EPO was a German Gebrauchsmuster for a bracket for attaching a cine camera to the end of a walking stick to allow filming at near ground level to get the viewpoint of a small animal. We filed a PCT and got patents granted in several countries. <br /><br />Filing patent applications for prima facie trivial features is a perfectly legal procedure, and as long as the client is warned of the possible outcome of such an application, I do not see that there is anything unprofessional about following the applicant's instructions. Ronnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-50185726360486372792015-02-22T20:32:08.279+00:002015-02-22T20:32:08.279+00:00One factor that doesn't appear to have been me...One factor that doesn't appear to have been mentioned is that doing a search can give away the invention, to a greater or lesser extent - at least to the search engine operator, but who's to know who they might pass information on to? An example we were giving in training is if the inventor has discovered that giving castor oil will induce labour. A simple search of "castor oil induce labour" will probably find any prior art, but it will also give away the entire invention to anyone that sees the query.<br />Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-90074248917116995322015-02-22T20:26:50.355+00:002015-02-22T20:26:50.355+00:00Anonymous @ 18:43,
I hear what you are saying and...Anonymous @ 18:43,<br /><br />I hear what you are saying and (also) fully disagree with you.<br /><br />Baseline professionalism includes a simple vetting. I do attempt to draw the distinction between clearance activity and this baseline vetting.<br /><br />Further, both my long ago superiors and I communicate this baseline professionalism to the client before they agree to hire us. This is <i>supposed</i> to maintain that professionalism. Again, as an officer of the court, I owe a first allegiance - bar none - due my personal professionalism. Clients that don't like this are always welcome to file pro se.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-2674150144773279932015-02-22T18:43:28.110+00:002015-02-22T18:43:28.110+00:00Anon at 15:34 - I agree with the majority of your...Anon at 15:34 - I agree with the majority of your last comment. Presently, working in-house for an organisation bullish in marketing and challenging as regards appreciating legalities, I am constantly under pressure not to maintain my professionalism. Such businesses operate for the short-term benefit of management.<br /><br />However, as a private practice attorney, I believe you are not in a position to take it upon yourself to go googling for prior art if it is against the wishes of the client. You are not retained to act in the best interests of your client in every regard, but only those areas in which you are retained and instructed.<br /><br />By all means, suggest to the client that a rapid look-see is in their interests.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-77208264576605958712015-02-22T15:34:01.478+00:002015-02-22T15:34:01.478+00:00Michael,
Thank you for your reply (this is Anony...Michael, <br /><br />Thank you for your reply (this is Anonymous @ 2:28).<br /><br />I respectfully disagree with you - as I did with my then superiors back then. <br /><br />If I am putting my name on anything - including submissions to the Patent Office, it is my innate duty to maintain a minimum level of professionalism. Makings filings in order to have "patent pending" and to fill out a portfolio quantity per se falls <i>under</i> that professionalism level.<br /><br />The mere fact that such actions can take place does not make those actions "professional." <br /><br />A client may desire any number of actions which of themselves are not illegal, but still fall under a certain level of such professionalism. Of course, this is not to say that the client should not be informed (and I have learned to express this upfront with the client - <b>as did my superior in the immediate context of my example</b>). I would of course distinguish my basic survey from an action of a rigorous search and clearance study. I think the two are different not just in degree, but are different in kind as well.<br /><br />As to your point 3, I find your statement a bit muddled. To wit: one's own professionalism always - always - come first, even before client's interests. To be rational, a client's interests do not include their representative's professional standing. Yes, I agree with you that billing does fall behind the client's interests (as appropriate), but billing also falls far behind (and is distinct from) one's professionalism. These are three - not two - distinct items in operation. In my case, I was able to (at least partially) assuage my superior by appealing to his sense of professionalism (outside of the lost billings AND the short term hit to his own "searching" ego) and position my find as a benefit to the client's long term interests. ON this last point, what is in the client's <b>best</b> interest may in fact be at odds with their stated short term interests (a no-search-at-all, pump up the count, patent pending action, accompanied by a foray into a product ALREADY on the market by a competitor - and possible patent protected by them - <b>can</b> carry more harm than a purposefully ignorant "just march ahead" mindset that is aimed solely at the short term.<br /><br />To a counter point of your point 3, then: my professionalism is what the client is purchasing - NOT just a scribe or an "errand boy" to follow orders without thinking. Maintaining my professionalism is - and always is - the first order of business, even in fact, ahead of the client's goals. I would like to think that any other collateral issues - such as exploring social media to gauge the client - and that falls under this directive remains my unchallengeable, and in fact, dutiful, right.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-82242639729497312342015-02-22T14:44:32.192+00:002015-02-22T14:44:32.192+00:00"1. Prior Art. Sure, in US and Israel the att..."1. Prior Art. Sure, in US and Israel the attorney has an obligation to report prior art."<br /><br />yes, but not obligation to go looking for art.<br /><br />"One should therefore not search without permission."<br /><br />ABSOLUTELY<br /><br />"some companies get confused and put their billing first."<br /><br />I would suggest that billing is more often than not the determining factor many firms.<br /><br />I would suggest that attorneys advise their clients that a search is in their best interests prior to drafting. The benefits far outway the cons and unless the client knows there are things they would rather the attorney didn't find, the only reason for not searching are cost and time (imminent publication). Even in those cases, a minimal search - internet/free databases is essential to help identify the inventive concept and draft a claim having some value.<br /><br />Once an application has been filed and can no longer be updated (priority period used) it is probably best not to know unless a validity-guarantee (as best one can provide) is a requirement.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-49471223477190354362015-02-22T09:29:55.923+00:002015-02-22T09:29:55.923+00:00I see this discussion as relating to two separate ...I see this discussion as relating to two separate issues:<br /><br />1. Prior Art. Sure, in US and Israel the attorney has an obligation to report prior art. In other countries, I assume one cannot knowingly draft claims for something anticipated. However, whether a claimed invention something is inventive or not, is, of course, subjective. I've managed to convince examiners where I was not convinced myself. I recommend searching to the client and and am aware of the problem of client's own earlier disclosures coming out of the woodwork. It regularly happens with university academics, but I've had it with a range of other clients. I get them to state that there was no prior disclosure. One has to warn clients about own goals. However, if they want you to go ahead, fine. <br /><br />The trouble with searching is that you don't know what you'll find. Sometimes clients are interested to be patent pending for commercial reasons and are willing to spend a certain amount of money on drafting and filing patents, but do not want to know what's out there. One should therefore not search without permission.<br /><br />2. I think that it is reasonable to do some minimal background checks to avoid taking on clients that are dishonest. Where applicant is a company, one should check the company number and address since clients get these facts wrong, but doing so will invariably provide details of the company and may raise flags.<br /><br />3. I suspect that in some companies, where a junior or trainee finds that an invention is known without being asked to search, the senior is annoyed that the golden goose has been killed. One should put client's interest first, but some companies get confused and put their billing first. Where one's own living is linked to the advice given to client, it is sometimes easy to get confused as to what is in the client's best interest.Michael Factorhttp://www.blog.ipfactor.co.ilnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-87510518060304543172015-02-21T21:32:39.548+00:002015-02-21T21:32:39.548+00:00Neil has certainly started an interesting debate h...Neil has certainly started an interesting debate here. Most of the previous comments revolve around carrying out an Internet search using a well-know search engine. I happen to agree with the contributors who argue that it is probably a necessary part of due diligence to establish that firstly you actually know who the client is, and secondly a ten-minute search can often turn up highly relevant prior art. Indeed in my previous life as a patent examiner I would routinely search inventor's own publications and frequently come up with highly relevant prior art to cite back to the patent attorney - much easier than having to carry out a full-blown search.<br /><br />The second part about befriending a client on a social media site is much more difficult to argue. I frequently get friends requests. My principle is to accept them on LinkedIn - and maintain that site for purely business use - and reject them on Facebook. I don't necessarily want clients to see private photos and posts destined for friends and family. That used to work quite well, but I've seen how Facebook has become increasingly a business tool and I'm now wondering whether I should set up a Facebook page for business contacts.Anonymoushttps://www.blogger.com/profile/02789591295998616170noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-31235689472331918192015-02-21T02:28:54.153+00:002015-02-21T02:28:54.153+00:00James,
Many years ago, as a junior member of a te...James,<br /><br />Many years ago, as a junior member of a team, I personally experienced what you describe (in the context of a client's claim to an invention). A search turned up within ten minutes not only the concept itself (full lack of novelty), but an actual catalog page from the competitor.<br /><br />I was chastised for my basic (in my view, such an action is indeed basic) activities.<br /><br />My chastisement lessened (in reality, only partially) when I explained that my actions SAVED the client from further expenses chasing a patent that was never going to be (or if somehow granted, would not be enforceable), and possibly even avoiding infringement. The senior partner remained unhappy.<br /><br />I found out only much later that the reason why the senior partner was unhappy was because he had told the client that he had performed a "routine diligent search," and had to eat some humble pie.<br /><br />But back to the direct issue at hand: client WILL lie. Anytime my reputation is at stake, I owe first and foremost to myself to comport myself with professionalism which - as you note - necessarily involves gauging the veracity of the client.<br /><br /><br />And yes, this means "internal" clients as well.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-81587284020561493172015-02-20T18:02:00.182+00:002015-02-20T18:02:00.182+00:00Anon 13:08, There may be. I know of a few examples...Anon 13:08, There may be. I know of a few examples where no prior art search was commissioned, but 10 secs of internet searching identified prior art, which avoided the need to engage further client expenses. <br /><br />There are also times when there may be an ethical duty to conduct searches of clients, client's businesses and related activities as part of our duties to the Court and others. <br /><br />Under the code of conduct applying to barristers and solicitors in British Columbia we have the following footnote in our code of conduct, regarding times when we should conduct further inquiries of a client:<br /><br />"[3] Before accepting a retainer, or during a retainer, if a lawyer has suspicions or doubts about whether he or she might be assisting a client in any dishonesty, crime or fraud, the lawyer should make reasonable inquiries to obtain information about the client and about the subject matter and objectives of the retainer. These should include making reasonable attempts to verify the legal or beneficial ownership of property and business entities and who has the control of business entities, and to clarify the nature and purpose of a complex or unusual transaction where the nature and purpose are not clear."Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-201070245613792582015-02-20T13:24:31.560+00:002015-02-20T13:24:31.560+00:00Carrying out customer due diligence under money la...Carrying out customer due diligence under money laundering regulations often involves a bit of googling. I know some disagree but IPReg consider these regulations to apply to Patent and Trade Mark Attorneys.<br /><br />Also, surely the whole point of LinkedIn is to add clients? Or am I missing something?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-49441816890421931362015-02-20T13:08:41.006+00:002015-02-20T13:08:41.006+00:00I wonder whether there are circumstances in which ...I wonder whether there are circumstances in which failure to google one's client might even turn out to be professional negligence.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-78964129254699792382015-02-20T13:07:03.144+00:002015-02-20T13:07:03.144+00:00If the attorney does search for information on the...If the attorney does search for information on the inventor and finds a page disclosing the bones of the patent application they are in the process of drafting what should they do? Ignore it and pretend they have no knowledge of such prior publication or take it into account when formulating the claims?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-79602252638503176402015-02-20T12:55:21.996+00:002015-02-20T12:55:21.996+00:00There is a huge difference between a doctor resear...There is a huge difference between a doctor researching a patient and an attorney researching a client.<br /><br />The discussion is therefore unnecessary.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-9101011699028264012015-02-20T12:44:40.456+00:002015-02-20T12:44:40.456+00:00It seems a bit odd to be worried about searching f...It seems a bit odd to be worried about searching for public domain information relating to a client when potentially far more invasive searching, such as for example credit checks, are carried out as standard practice.Rich Lhttp://www.lock-ip.comnoreply@blogger.com