The Challenges Posed when Protecting with Patents
The world of intellectual property (IP) has grown to become an ever-important component for businesses to invest in, to ensure their innovations are fully protected. This month we speak with Richard Hoffmann on the IP sector and how the Court could improve when dealing with IP related disputes.
Does your initial degree in chemical engineering help you when practising law? In what way does it place an advantage for you?
In practicing intellectual property law, an engineering degree is very helpful. By having the appropriate background education, I am better able to communicate with inventors to fully understand the scope of their inventions. The requisite educational background also allows me to better advocate for patentability with the patent office. In the case of litigation where infringement and validity of the patent are at issue, my degree provides a technical foundation which helps me fully understand the invention so I can distil relatively complex technology into more easily understandable arguments to present to a judge or jury who often do not have a technical background.
What are important aspects to consider for patent applications in the mechanical and chemical arts?
It is critical to properly identify what features of a new “invention” are truly inventive. Once the inventive aspects are identified, it is important to craft patent claims to fully cover the invention without including extraneous limitations that are not necessary to fully define the invention. For mechanical inventions, the patent application requirements are relatively straightforward; however, in chemical cases, there are some unique requirements in preparing an application to deal with issues, such as structurally similar compounds and other unpredictability in the art.
Regarding the above, where do clients tend to be misinformed on the importance of patenting and trademarking their work?
Clients, particularly individuals or small companies, often do not initially have a good understanding of the different types of IP protection; they often confuse what a patent protects and what a trademark protects. For patents in particular, clients often have unrealistic expectations of the what their patent will cover. My job during the application process and afterwards, is to help them understand the scope of their patent – what it protects and what it does not.
What challenges do you face when acting as Lead Counsel in Federal Courts in IP related matters? How do you overcome this?
Educating a judge and jury as to the patented technology is one primary challenge. Judges will often allow a technology tutorial which gives them a session with the lawyers to get acquainted with the patented technology. This is not the case with a jury. During a trial, I have a limited amount of time to teach the jury the technology that is patented and how an accused device would infringe (or avoid infringement) of the patent claim at issue. I accomplish this by combining simple explanations with metaphors and examples that are relatable to someone without a good understanding of the subject matter. Often technology, such as videos or power point presentations, can be used to help convey an understanding of the technology to the jury.
What are common issues you see arise in IP litigation and what would be the best way to solve such issues?
A particularly common problem that arises in IP litigation is dealing with extensive discovery. Lawyers tend to abuse discovery. In addition to what they actually need to support their case, lawyers will often seek marginally relevant or even irrelevant information. Whether this is done intentionally or out of fear of overlooking some potential issue, such tactics unnecessarily increase the expense of the litigation and do not help resolve any truly contested issue. Because the Federal Rules of Civil Procedure do not limit the number of document requests, litigators often employ this “scorched earth” approach to discovery. There is not an easy solution to this problem. Courts that enforce the Rules might need to take a hard look at such abuses and limit the scope of discovery in any given matter to that which is truly necessary to the party to properly present its case.
As Thought Leader, can you share with us the key to becoming a ‘super lawyer’?
A major key is preparedness. When arguing case there is no substitute for knowing both the law and the evidentiary record. Understanding the technology and issues and being able to convey my thoughts and arguments in a coherent manner results from being fully prepared.
What developments in Michigan are you hoping to see in the future, relating to IP law?
I would like to see the Federal Courts in Michigan adopt a uniform set of Patent Rules so that the procedure for a patent case is the same, regardless of the Judge that is hearing the case.
