Imagine the embarrassment of having an email discovered during litigation where one of your employees exclaims that your new product probably infringes a competitor’s patent he has only just perused. Of course, it is sound business practice for companies to routinely review their competitors’ published patent applications and issued patents. Armed with this information, your company can make strategic business decisions. However, your company should take steps to avoid creating potentially harmful documents, emails and other correspondence that could be used against it in litigation.
If your company has personnel involved in (a) reviewing the competitors’ published patent applications and issued patents and/or (b) monitoring the prosecution of a competitor’s patent application, then be sure to implement some simple policies on how to document and report the findings and concerns. Those policies should also address which individuals are to receive such reports and communications. Finally, the policy should sensitize the employees responsible for the reviews about the risks of poorly worded and premature assessments about risk.
Once in litigation, an accused infringer will be required to produce many internal documents that are relevant to the issues that are raised in the lawsuit. Accordingly, internal reports or correspondence of an accused infringer that discuss the patent-in-suit will likely be subject to discovery requests from the patent holder. Once such a document is identified as being responsive to a discovery request, whether a hard copy or in electronic format, the accused infringer will be required to produce the document unless the court determines the document is either privileged attorney-client communication or attorney work product.
Written statements such as, “we infringe this patent” or “let’s copy what they are doing,” should clearly be avoided. So, too, should statements about the relative strength of a competitor’s patent or the potential negative impact a patent may have against the company. It would also be prudent to avoid making negative or snide statements about the competition or its personnel. These types of statements could end up being used during litigation to shed a negative light on your company.
Copying an in-house attorney or outside counsel will not guarantee that the communication or report will fall within the categories of privileged attorney-client communication. To be a privileged attorney-client communication, the communication must be between attorney and client and made for the purpose of furnishing or obtaining professional legal advice or assistance.
“You find a published patent application or issued patent that raises concerns. What now?”
When concerns are raised that the claims of a patent application or patent may cover the company’s products or services, everyone within the company should avoid documenting the concerns in writing (i.e., e-mail correspondence or other written reports or communications). This includes both individuals involved in reviewing the competitors’ published patent applications, issued patents, and prosecution history and those to whom the concerns are relayed.
Everyone should also keep in mind that voicemail messages may also be considered documents that a company could be required to preserve and produce in litigation. Accordingly, everyone should also avoid leaving detailed voicemail messages concerning competitor pending applications and patents.
Instead of documenting concerns about competitor patent applications and/or patents in writing (or leaving detailed voicemail messages), the concerns should be discussed orally within the company and then orally relayed to a patent attorney. After evaluating the concerns, the patent attorney can then advise the company how best to proceed.
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Carstens, Allen & Gourley will gladly assist your company in developing policies and practices to follow in gathering and assessing corporate intelligence. We can also provide training and guidance to personnel who are directly involved in analyzing patent applications, issued patents, and the prosecution of pending patent applications.
By Bill Imwalle
