[Discuss] OSHW questions

[Chris Church]

> I am a lawyer but I'm not a patent lawyer. I'm completely confused though by the notion of advising my clients not to research something. From a corporate / business standpoint, this could be the worst advice I ever gave a client.
> 
> I can vaguely see an argument that (1) finding a similar patent will prejudice you and make you less likely to pursue your idea because someone else has already done something similar, and (2) once the other work is done, the patent attorneys doing the prior art search will find the relevant patents anyway.

As it had been explained to me in the past (by IP lawyers giving me council), "A lack of awareness of any existing patent on the subject can be used in a defense against claims of willful infringement."

That is, they would always argue that it couldn't be willful if I wasn't aware of the patent - i.e., being aware of the patent would have required to have first established some legal basis for belief that I could create an (later to be alleged) "infringing product," within intellectual property laws.  Being ignorant of any such patent, there was no need to create such a defense.  I was advised at more than one company that if I chose to go about researching patents, not to record which patents I researched unless they would be part of prior art in something we were filing.

I am not a lawyer, will not ever be, and at no point in time was this theory ever put to test involving me.  I also have no opinion either way as to the quality of such advice. =)

Chris

On Nov 21, 2012, at 1:23 PM, David Boyhan wrote:

> I am a lawyer but I'm not a patent lawyer. I'm completely confused though by the notion of advising my clients not to research something. From a corporate / business standpoint, this could be the worst advice I ever gave a client.
> 
> I can vaguely see an argument that (1) finding a similar patent will prejudice you and make you less likely to pursue your idea because someone else has already done something similar, and (2) once the other work is done, the patent attorneys doing the prior art search will find the relevant patents anyway.
> 
> It's just that the advice sounds a little like the client who once told me, years ago, only half-jokingly "we really want to buy this company, so don't do too much due diligence."
> 
> I'm just imagining the deposition:
> 
> "Did you think there might already be a patent on your idea?"
> "Possibly"
> "Did you look for one before you began to infringe my client's patent?"
> "No"
> "Why not?
> "My lawyer told me not to."
> 
> 
> 
> 
> 
> j. eric townsend wrote:
>> As so many of us have learned to say, "I am not a lawyer and this is not legal advice."   Also, I'm in the US if that matters much...
>> 
>> On 11/21/2012 4:52 AM, Andrew Katz wrote:
>> 
>>> If you contribute to a project under an agreement which requires
>>> you to warrant that you have no knowledge of any potentially conflicting patents,
>>> having done a search could be a bad thing [...]
>> 
>> I worked in consumer electronics from almost 20 years and never personally received "don't research patents" from a legal team.  I have heard "don't copy patents" (obviously :-) and "try not to look at current patents while you do research".  I always gathered that was about accidentally copying, not getting into a legal bind.  Working with national and international technology standards requires a lot of reading of other people's research and development documents.  (ex: how cable TV works, how transmitted television works, how analog modems work, etc.)
>> 
>> That being said, in the past five years or so, I have heard quite a few engineer and startup types say they have received "never look at any patents" advice from their legal counsel, it's mostly been people involved with selling 3d printers and related technology.  I suspect there is a virtual landmine of patents around 3d printing and related technology, but I haven't looked yet. :-)
>> 
>> --jet
>> 
>> 
> 
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