When you believe that someone has taken an illegal step like filing for a patent by fraudulently using your invention without naming you as the inventor, obviously, you will need to take legal action. However, simply suing may not be enough. Simply suing without taking the proper additional steps could leave you exposed to some very damaging risks. An experienced South Florida commercial litigation attorney can help you ensure you are taking all the necessary additional steps to make certain that your business and your intellectual property is protected fully.
What do we mean by taking the extra steps? An ongoing dispute related to software devices for cruise ship guests offers some insights.
D.D. was an inventor of wearable small, wireless devices (and the customized software associated with them) used in the cruise ship and other hospitality industries. D.D. had worked in this area for more than a decade, including developing systems for big cruise names like Disney. Later on, another competing cruise line brought in D.D. to work on its guest system.
D.D. eventually decided to leave that project prior to its completion and design a new product. Sometime after that, the cruise line began filing several patent applications. D.D.’s corporation sued, alleging that the cruise line obtained its patents via fraud when it failed to identify D.D. as the inventor.
As the inventor’s legal team recognized, simply suing for patent infringement, unfair competition, and trade secret misappropriation wouldn’t be enough. An inventor in D.D.’s position needs what’s called a “protective order” that bars the other side from taking specific actions.
In this inventor’s case, one of the components necessary to ensure that his interests were fully safeguarded was something called a “prosecution bar.” The prosecution bar that this inventor proposed said that anyone who had access to highly confidential materials as part of this case was prohibited from being involved in any actions for the prosecution of a patent or patent application that was related to “wireless sensing technology.”
Without that bar, the inventor could potentially have been at risk of having the cruise line’s attorneys “accessing source code and other technical documents and then using those items to revise” the cruise line’s wireless sensing technology patents and/or patent applications based on that knowledge.
The three requirements for a prosecution bar
If you seek that kind of prosecution bar, you have to demonstrate to the court three mandatory things to succeed. They include: (1) “that the attorneys are involved in competitive decision-making,” (2) that the prosecution bar you’ve proposed is “reasonable in scope,” and (3) that you would incur “specific harm” without the prosecution bar.
In this circumstance, the inventor had the proof needed to satisfy each of these three critical elements, and so the trial court granted the inventor’s request for its preferred prosecution bar, thereby limiting what the cruise line’s attorney could do in relation to the cruise line’s patents and patent applications.
When someone has misused your intellectual property or trade secret information, it may become necessary to sue. In this complex field of litigation, however, simply filing suit may not be enough. You need a legal team that knows how to provide you with complete protection from further misuse of your property. Count on the South Florida commercial litigation attorneys at Stok Kon + Braverman to provide you with the diligent and detail-oriented representation it takes to fully protect you and your business.
Contact us online or by calling (954) 237-1777 to schedule your consultation.