Loren Donald Pearson

Loren Donald Pearson is a Registered Patent Attorney and a Florida Bar Board Certified Intellectual Property Attorney.  He is a partner at Assouline & Berlowe, PA and leads its intellectual property group.  Read his profile

 
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Entries in invalidity (1)

Monday
Mar112013

S.H.I.E.L.D. Bill Hopes to Curb Patent Trolls

The Saving High-Tech Innovators from Egregious Legal Disputes (SHIELD) Act of 2012 H.R. 845 was introduced by Representatives Defazio and Chaffetz to provide patent-infringement defendants with a means to reflect the cost of successful defense back on a non-practicing entity/plaintiff/patent holder.

A very good discussion of the problem and the pros of the bill are provided on Dennis Couch's PatentlyO Blog.

The article does not discuss any of the cons.

The significant cons of the bill are that owners of presumptively valid patents are subjected to the significant cost of buying a bond to guarantee the cost of the defendant's defense.

Exceptions are provided to original inventors, owners who exploit the technology, and universities.

My opinion is that the current system provides adequate checks to a plaintiff.

Rule 11 provides an adequate check to non-infringement.  To avoid Rule 11 sanctions, a plaintiff should conduct an investigation of an accused device and a claim analysis (i.e. a claim chart) before filing suit.  If none is conducted and the accused device is not infringing, the plaintiff may face a Rule 11 motion by the defendant for the cost of the defense.

The USPTO's procedures provide a means to challenge validity.  The purpose of the USPTO's examination is to provide a presumptively valid document.  Why attach further burdens on the inventor?  A defendant can challenge the validity of a patent through administrative remedies.