PatentCAM – Answers to our most Frequently Asked Questions
Our recent webinar, Beyond the spreadsheet – Powerful tools to manage patent information and scientific literature elicited a lot of interest and questions related to our PatentCAM software platform.
Over the next several weeks, we will post answers to those frequently asked questions here, starting below with our response to the first question, “How does capturing written comments in PatentCAM avoid legal issues related to discovery?”
As a quick background, our web-based platform, PatentCAM, is a simple, centralized repository for categorizing, archiving, and monitoring patents and non-patent literature.
It features a simple user interface and is easier to use than other more complicated patent management platforms on the market.
PatentCAM provides a secure, shared repository for R&D, legal, and other corporate stakeholders, to manage, annotate, and maintain patent information related to your organization’s technical areas of interest. Customized for patent and technical information professionals, PatentCAM replaces generalized spreadsheets used by many organizations in managing this highly valuable information.
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PatentCAM – Frequently Asked Questions #2:
How are patents imported into PatentCAM?
Some of our customers subscribe to commercially available patent search tools, while others use publicly available sources. PatentCAM enables users to import patent numbers from any commercial or free database platform to categorize, analyze, and monitor only the patents that are pertinent to your company or project.
Some of the more well-known search tools include Patbase (Minesoft), Orbit (Questel), Innography (CPA Global), TotalPatentOne (Lexis Nexis), Scifinder (Chemical Abstracts Society), USPTO (US Patent and Trademark Office), Espacenet (European Patent Office), Patentscope (World Intellectual Property Office), The Lens, Google Patents among others.
Basically, any tool that provides a patent publication number will work. Simply paste the patent number(s) into the import dialogue and PatentCAM will fetch the bibliographic information, full text, family data and more.
The import feature can also handle Digital Object Identifier (DOI) numbers for non-patent literature. And, for scientific literature or publications without a DOI, you can manually insert the title, abstract, dates, a link, and other bibliographic information. You can also upload a PDF of the reference to store it along with the bibliographic information.
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PatentCAM – Frequently Asked Questions #1:
How does capturing written comments from technical experts in PatentCAM avoid legal issues related to discovery?
There are a whole host of legal opinions and guidance from lawyers on what information qualifies as attorney-client privileged (we have provided some in-depth resources below if you are interested in reading further).
This is an important question because the information that becomes discoverable from your patent research can have a major impact on the outcome of the case.
We will leave it to the attorneys to opine on whether or not certain technical information or communications about that information is or is not protected in discovery through attorney-client privilege. From a lawyer’s perspective, the answer is likely “It depends”.
Some organizations take the legal issues associated with technical experts reviewing patents to an extreme. They believe that no information related to patents should be written down – all information should be communicated orally. This, in our view, is impractical and not very useful to the organization.
Others have gone as far as to instruct R&D teams NOT to search for patents thereby promoting a policy of willful blindness. In one case, this policy backfired when the plaintiff’s allegations of willful blindness were sufficient to defeat the defendant’s attempt to dismiss the claim of willful infringement. The judge ruled that “A well-pled claim for willful blindness is sufficient to state a claim for willful infringement.”
Our view at IP Checkups (we aren’t lawyers), is that ALL technical information may be discoverable in the context of patent litigation.
Therefore, we promote the use of PatentCAM™ as a technology which supports an internal process to form the basis of internal corporate policy, with the following rules:
- All competitive patent and non-patent literature information is stored in a central, searchable repository – i.e. PatentCAM.
- All patent information resulting from patent searches or patent review is uploaded and stored in the PatentCAM platform.
- All emailed communications, comments, rankings, or other metadata related to the patents are stored in PatentCAM.
- Downloading or reviewing patents from any other source or in any other format is considered “rogue” behavior and is not allowed by the corporation.
- Technical experts and R&D staff are encouraged to read others’ patents to learn or familiarize themselves with any useful technical disclosure in the patent.
- Feel free to add comments, however, do not add or email any written subjective or descriptive comments other than language that is quoted verbatim from the patent.
- Do not let your interpretation of the document affect your current or upcoming research or work activity.
- Attorneys or legal staff must review all comments left by technical experts.
Implementing PatentCAM not only reduces costs associated with discovery and litigation – it also creates the advantage of systematically enabling technical experts to review competitor patents safely, with attorney oversight.
It also provides defensible arguments to a judge or jury in the context of patent litigation by showing:
- The corporation has a proactive and systematized process, technology, and policy around analyzing and reviewing competitors’ patents.
- Potentially relevant patents are reviewed and marked by technical experts and then reviewed a second time by attorneys.
- Review of the information by legal counsel to vet whether a freedom to operate opinion is necessary.
Not only can organizations show they have implemented a best practice, but they can also avoid the typical problems that occur in a spreadsheet paradigm. Namely, challenges associated with disparate information spread across the corporation by emails and other correspondence that is not regularly reviewed by attorneys and may contain problematic comments.
Here are links to older published guidance from reputable law firms and the American Bar Association (ABA).:
https://www.sgrlaw.com/ttl-articles/916/
https://www.oblon.com/publications/attorney-client-privilege-and-work-product-immunity-in-patent-litigation
https://www.americanbar.org/groups/business_law/publications/blt/2013/10/01_unger/
https://www.finnegan.com/en/insights/articles/the-attorney-client-privilege-and-attorney-work-product-doctrine-may-prevent-an-adverse-party-from-obtaining-documents.html
Do you have additional questions that you would like us to answer? Contact us.