Posts Tagged Rule 56
Keeping secrets is bad for relationships and the USPTO feels secrets are bad for patents as well. In fact, the Patent Office doesn’t like secrets so much that they have a special rule against hiding the ball during the patent application process, Rule 56.
The Patent Office requires “each individual associated with the filing and prosecution of a patent application” to disclose any all information they have which is material to the patent application in question.
This rule is serious business. The highest paid attorney ($900+/hr) I have ever met built his practice around Rule 56 disclosures. Why? Because failure to disclose known prior art under Rule 56 can invalidate an otherwise perfectly valid patent, destroying hard won competitive and technological advantages.
Rule 56 is part of the USPTO’s broader carrot-and-stick approach to producing better patent: on one hand, if you fail to disclose key information during the patent application process, your patent may end up being an invalid, worthless piece of paper. On the other hand, anything you disclose to the Patent Office will be considered during the application process. Any resulting patent will be granted with a presumption that the patent is valid in light of the information considered during the application process. This presumption can lead to a significantly stronger, more valuable patent.
Space Sysems/Loral (SS/L) has a long, successful history of building commercial satellites. Nearly 50 years ago, they built Courier 1B, the first active communications satellite. Fast forward to the present and we find that SS/L is producing communications satellites for a variety of companies, including a single satellite, the ViaSat-1, which can provide 12Mbps internet connectivity for nearly 1 million people in the US. ViaSat, Inc awarded SS/L the contract to construct ViaSat-1, ViaSat’s first satellite, but ground-based trouble has arisen in the form of a patent dispute. On February 1st of this year, ViaSat filed suit alleging that SS/L copied proprietary and confidential technologies ViaSat disclosed during the development of ViaSat-1. Allegedly, SS/L integrated these technologies into a competitor satellite SS/L was building, the Hughes Jupiter satellite. ViaSat also alleges that SS/L is infringing at least four of ViaSat’s patents, including a patent on the placement of Earth-based transmission stations in relation to end users, which issued the day before ViaSat filed suit. SS/L, owner of approximately 160 patents on satellite and related technologies, has counter sued, alleging that ViaSat has infringed SS/L patents and arguing that ViaSat’s patents are invalid because Lockheed Martin actually invented the technology and ViaSat may have neglected to mention that fact to the Patent Office while it was trying to secure its patents! Read the rest of this entry »