Considerations for Avoiding Litigation in the US

New York patent attorney, Martin B. Pavane, Vice Chair of Intellectual Property Group, Cozen O’Connor, kicked off the IT’S TIME—RT Imaging Summit Zhuhai @2014 as the keynote speaker today, with his suggestions on how the aftermarket can avoid litigation in the US.

After providing the over 200 delegates the latest details on the ongoing Canon “Dongle-gear” case in the US against cartridge remanufacturers, Pavane advised the aftermarket how to avoid litigation in the country.

 He urged the monitoring of patents as being fundamentally important. The aftermarket companies should conduct a full freedom-to-operate search before launching a new product. Many aftermarket players either do not have the time, or knowledge of the legal jargon, so patents and patent application research can be done by assignee, class or subclass. Moreover, he reminded that the US Patent and Trademark Office (“PTO”) issues all patents on Tuesdays, and publishes the granted patents in the Official Gazette, which is available online (http://www.uspto.gov/news/og/patent_og/).

In addition, Pavane told Recycling Times recommended that pending patent applications is also essential. He said, “Often, a patentee will leave at least one patent application in a patent family pending. Then he can amend the patent claims to cover anything disclosed in the application. Amendment of patent claims is permitted even if the patentee is attempting to cover a third party’s newly-introduced product. ”

He added that applications to the PTO to invalidate a patent is often less expensive and faster than litigation. “If a patent is of concern,” he said, “and there is known prior art that invalidates the patent, there are procedures available to invalidate the patent in the PTO. A third party may submit any patent, published patent application, or printed publication of potential relevance during PTO examination of another party’s pending patent application.

Pavane commented on how impressed he was to see so many industry players attending the RT Imaging Summit in Zhuhai. “The aftermarket has an obvious increase in awareness over intellectual property and willing to go to this event to educate themselves.” The industry is changing every week because of legal disputes over intellectual property rights, and players cannot afford not to be kept informed.

Shortly a video interview with Martin Pavene sharing his insight on the hotly debated issue of Canon’s dongle gear lawsuit will be broadcast from this website.