It is difficult to overstate the importance of thorough legal research and analysis. While important in all aspects of the law, it is critical in patent violation cases. Sanctions with significant financial implications can result from failing to do pre-filing thoroughly. In this article, National Legal Staffing Support examines how LPO can help get pre-filing work done correctly.
What is pre-filing analysis?
To get the most out of patent protection, a thorough pre-filing analysis is imperative. With the goal of determining the patentability of the proposed idea, an exhaustive search for applicable prior art or design is crucial.
Changes after filing are generally not permitted, so the filing’s success depends on how the product, idea, or art is depicted in the application. There is essentially one chance to get it right, so the pre-filing stage should carry significant weight.
Analyzing for those patentable aspects or features that are of greatest value to the registered design is of the utmost importance. To accomplish this analysis, an understanding of what elements are eligible for design protection must be clearly defined.
What is the outcome of poorly performed pre-filing?
Failing to conduct a reasonable pre-filing inquiry is cause for a patent infringement case to be dismissed. Other possible sanctions include the requirement to pay the opposing party’s attorney’s fees.
In the patent infringement case, Refac Int’l, Ltd. v. Hitachi Ltd., the court held that the patent owner, Refac, failed to make a reasonable inquiry to determine that its complaint was well-grounded in fact. The court awarded the opposing party its attorney’s fees as a Rule 11 sanction. The court found that the plaintiff’s pre-filing investigation was inadequate where the plaintiff “assumed without justification that all of the accused products violated one or more of its patents but made no reasonable (or any) investigation to confirm this. . ..”
How LPO Can Help Get Legal Research Completed
The process of legal research, including patent pre-filing analysis, can be long and tedious. Without staff trained and experienced in patent research, there is an additional risk that something will be missed or misunderstood.
One of the primary benefits of LPO is the flexibility of matching the right person to each task. From a pool of qualified legal researchers, an experienced LPO firm can delegate the work to someone with experience in a similar case.
Without the resources of an LPO service provider, a law firm may find itself in the unenviable position of assigning the work to an unqualified staff member. This can be an expensive mistake to make for two reasons. One, without the flexibility provided by LPO a high-priced attorney better suited for trial work may, out of necessity, get stuck doing research. Two, a mistake in the pre-filing analysis can trigger expensive sanctions in court.
As any experienced attorney will tell you, the legal profession’s real work takes place in front of computer screens as researchers pour over documents looking for relevant information. In patent work, this is especially true. Understanding the patentability of a product, design, art, or invention is crucial. Knowing what makes such intellectual property patentable comes from experience.
About National Legal Staffing Support
National Legal Staffing Support is a leading provider of legal process outsourcing and a pioneer in legal services. Located in Boca Raton, Florida, the company offers front- and back-office support to experienced consumer protection attorneys specializing in debt resolution. National Legal Staffing Support offers paralegal services, document management solutions, pre-litigation support, pre-filing analysis, research, and client communication management.