Clear communication is as much of a challenge in IP management as in any other field of business.
Recent litigation in the UK courts concerns a letter sent by a patent attorney to his client reporting a search carried out for patents in the name of another company, H. The search had shown only one patent in existence relating to company H and the patent attorney’s letter had stated "Therefore I believe the only problem you will have with this problem will be in the United States."
Ten years later and the patent attorney and his client were in dispute over what this statement meant. The patent attorney contended this was advice related to the likely infringement of the scope of the claims of H’s patent by the client. The client contended this was advice related to the likely validity of the client’s own patent application in the light of the disclosure of H’s patent.
"This difference between scope of a claim and disclosure is universal" noted the judge deciding the litigation. "A patent claim may have wider scope than the thing described in the specification. So it is possible to have two patents, one earlier than the other, in which the later one is novel (and inventive) over the earlier one but for which the product described in the later one infringes the earlier one."
This is but one of many ways of using intellectual property in engineering business. You should of course seek professional advice on your own particular circumstances.
