Wednesday, December 17, 2008

International TM and Domain Names

Just a quick note on international domain names and trademark issues. 

First, it is becoming more and more common that finance departments are receiving billing from various entities claiming to be the "Register of International Patents and Trademarks" for some small European country. The letters originate from these countries, usually ask for between $2-3,000, and in most way's, do look like an invoice from a government agency.

However, upon inspection, these letters are merely an offer to be listed in a directory of patents and applications and are not affiliated with any government agency. So while it may look like one is paying to be published in some foreign equivalent of the Federal Register, it is in fact, nothing of the sort. And while most every IP professional will catch this immediately, it might be good to let your finance department know that these kinds of documents are floating around out there.  

Second, there has been an uptick in unsolicited e-mails from individuals claiming that third parties are trying to register your domain names in China, Hong Kong, and the like, and that they are contacting you out of courtesy to see if you would like to register them instead. Below is a sanitized version of an actual note:

Dear Manager,

We are OOOOOO, which is the domain name register center in China. I have something need to confirm with  you.    

we have received an application formally,one company named "XXXXXXXX" applies for the domain names (various domin names)  and the internet Brand Name(company name)on the internet Nov 19, 2007. We need to know the opinion of your company, because the  domain names and keywords may relate to the usufruct of brand name on internet.
we would like to get the affirmation of your company,please contact us by telephone or email as soon as possible. Please let  someone in your company who is responsible for trademark or intellectual right contact me freely. 

 Best Regards, 


Sponsoring Registrar:


While there is typically no veracity to these solicitations or claims, these notes usually end up going to high level managers or directors and will bring immediate attention to whether or not you have coordinated with your companies IT department and made sure all your domain names are, in fact, locked up. 

Being prepared for things like this can prevent small annoyances from becoming major time-sinks. 



Tuesday, November 18, 2008

ABA Survey

In case anyone reading this blog is an attorney and would like to help the ABA, I received the below e-mail this morning: 

The ABA Journal is surveying lawyers about the job market and the current state of the economy. We'd appreciate it if you could let readers know about our survey with a mention on your blog. Here is the link:

Survey results will be published in the January ABA Journal. If you post a note about our survey on your blog and send us the link, we'll be sure you're among the first to know when we're ready to post the results. Answers will be kept confidential and used only in combination with all other responses received. If you have any questions or suggestions, please feel free to contact me.

Thanks for your help.

Saturday, November 1, 2008

October review: civilization comes to end

Well it has been a month without posting, so hopefully this is not your primary source of IP news and information. For that you should probably be reading Lawrence Ebert, Duncan Bucknell, Dennis Crouch, Stephen Nipper, Peter Zura, Doug Sorocco and/or the patent docs. Hopefully e^(ip) is a nice change of pace once in a while...

October thoughts and news below:

Patent professionals were on the edge of their seat for the release of "Flash of Genius", the tale of inventor Robert Kearns, and his 12 year patent litigation with Ford. It opened to solid reviews; with the Rotten Tomatoes consensus:

"The touching underdog story of a single guy against a massive corporation, Flash of Genius is a well-paced and well-written tale with a standout performance by star Greg Kinnear."

Decent reviews, established Hollywood star, this is going to bring Patents to the mainstream right? Right? Um...

October box office totals for two movies which opened on October 3:

Flash of Genius - $4 M

Bad times... maybe if they had gone for the contentious, high stakes patent disputes of Gary Michelson, who won a $1.35 billion settlement from Medtronic, maybe that would have upended the dog movie juggernaut?

Anyway, also in October, the world's financial institutions collapsed, the four horsemen were sighted, etc. However, from what I am hearing, that has not seemed to impact IP markets too much. Everything seems surprisingly stable on that front.

Finally in October, I came across a work summarizing the nature and dynamics of IP negotiations and deal making. By the 21st century modern philosopher Fall Out Boy, in their treatise "This Ain't A Scene, It's An Arms Race", the opening stanza is apparently told from the prospective of IP brokers in the narrative first person:

"I am an arms dealer, fitting you with weapons in the form of words."

Wednesday, September 10, 2008

10 steps to importing 500+ Google Toolbar bookmarks into Google Chrome

Just upgraded my internet experience by switching to Google's new Chrome browser. Faster, cleaner - very good overall. 

Except there is no toolbar support. Several hundred carefully organized bookmarks live inside my Google Toolbar, and without a way to import these, my Chrome experience was suffering.  

So after a bit of fiddling, this appears to be the easiest way to import your favorites state from Google Toolbar into Google Chrome:

  1. In your Google toolbar favorites click "Manage All"
  2. When the webpage comes up, in the bottom center there is a link which says "Export to: My Computer" - click that link and save the file to your desktop.
  3. In IE 8.2, the favorites button is under the gold star on the upper left, click the gold star to reveal a submenu which reads "Add to Favorites..."- click the small black down arrow next to that text to reveal an additional submenu button called "Import and Export..." . 
  4. Now select "Import from a File" and click Next.
  5. Select "Favorites" and Click Next
  6. Click browse and find the file you created on your desktop in step 2 and click next.
  7. Select the folder you want the favorites to reside and click import.
  8. In Chrome, under the wrench in the upper right, click "Import Bookmarks and Settings" - select all four items and click import.
  9. Click Ctrl+B to toggle the bookmarks bar in Chrome, the Google Toolbar links will be under the "Other Bookmarks" folder on the far right.
  10. Drag and drop folders from that folder to the Favorites Bar, customize as desired. 

Hope this helps. Cheers.

Thursday, June 19, 2008

Chief IP Officer

(Image courtesy of

Coming up in Amsterdam is the first ever Chief IP Officer Summit being presented by Intellectual Asset Magazine and Ocean Tomo.

I will not be going this year, but wanted to prepare something important for those who will be attending.

The CIPO in every company must be the CEO and no one else. Whomever is designated functional head of IP (whether a licensing, legal, technical, or financial professional), it must be their job to:

1) Iteratively and clearly understand the strategy and needs of the business.

2) Determine organizationally, what IP issues will need to be addressed by whom and how important will those issues be relative to the other issues on that professionals plate. (This prioritization step is left out of nearly every corporate IP strategy I have ever seen.)

3) Look for opportunities where the IP function can make other functional tasks easier in the core business. (This includes providing IP based market analysis, competitive insights, technology positioning, financial valuations, inventor recruiting, etc.)

4) Design an IP organization that can rapidly address the highest priority needs to enable the business. Not just the traditional IP needs.

5) Deploy and execute.

6) Measure your results, in dollars, yen or euros, and report back to the executive staff.

Despite one's career ambitions and the need for a functional head to manage the complex and critical needs of an IP department, disassociating IP from the core business is a bad and dangerous idea. We have the opportunity to eliminate many of the negative connotations and stigmas associated with other (often) disassociated functional heads (e.g. CIO, GC, etc.) and it is important we remain focused on doing so.

For example, when IP is a stand-alone organization, the office and function is often seen similar to that of a CIO and IT department; fundamentally serving as a necessary enabler, but not critical or core to business development. In this situation, typically a substantial licensing program is necessary for the organization to remain relevant.

If one looks at a CIPO as head of a function in a legal organization, too often they are unfortunately labeled as business roadblocks; one which needs to be checked with, hassled by, and finally overcome before products can be offered. It takes a special person to avoid and mitigate that perception and interact seamlessly with technology and business leaders.

If we remain focused on enabling business development faster, as above, our function will naturally align with executive decision makers.

So while the title Chief Intellectual Property Officer (or something similar: IP Managing Director, VP of Intangibles, Exalted Head of the Unseen) is important to differentiate IP from other functions, it is absolutely critical that we do not unintentionally disassociate our function with the core business. As an industry, instead of creating another peripheral function, our goal should be to make CEO's, CIPO's themselves.

Thursday, May 22, 2008

Free Patent Drafting

My father passed away last Monday. Exactly one week earlier he was told that his oral cancer was no longer operable and that he had about one week left. His previous surgeries removed much of his upper and lower jaw and cheek. After his last surgery, the doctor remarked that "there is more of your face in the jar than on your face" and further surgeries would most likely be out of the question.

I have been with my family in Maryland the last few weeks and just returned to San Francisco on Tuesday.

Smokers, those who chew tobacco, and black men make up 95% of all oral cancer cases. My father was in none of these three classes. There was no treatment which could manage or contain this cancer as it formed, spread and ulcered.

So, if there is anyone reading this sitting on an invention dealing with the management or cure of oral cancers, I would like to draft your patent application for free. I will research the art, scope the claims, draft the examples and detailed description to the best of my ability. I formerly examined patents in class 250, Radiant Energy Systems, an example of which can be found here: US Patent 6809325 - "Apparatus for generating and selecting ions used in a heavy ion cancer therapy facility."

I will then find you attorneys or agents with domain expertise to review, file and prosecute the application(s), hopefully at significantly reduced cost.

There probably aren't too many inventors in this space who don't already have an IP department they can turn to for assistance, but if I can facilitate one or two of these a year, at least it is something. Please e-mail inquiries to


Thursday, April 17, 2008

Ocean Tomo - Blueprint

So I have been buried lately - in a good way - and the blog has taken a hit. But I am back today with exciting industry news.

From two months ago. Oh well.

In February this year, Ocean Tomo partnered with high tech VC firm Blueprint Ventures to spin-out companies based on "dormant" corporate IP. It looks like these off-shoots will include IP, know-how and possibly involve individuals originally associated with the technology.

I love this idea.

Last year I wrote about how Intellectual Ventures (IV) could spin out dozens of companies with all of the IP it is acquiring. The OT Blueprint model, where they provide a straightforward conduit - with larger upside - for corporations to monetize areas where they are likely no longer focused, is brilliant.

Obviously the issues of having a "corporate" researcher becoming essentially a start-up founder are non-trivial, and the dull nuance of IP agreements can make them excruciatingly difficult to close. However, once an organization begins to see returns on spin-outs being greater than outright sale or in-house IP licensing efforts, then deep analysis of corporate IP portfolios may become less the exception and more the rule.

In 1998 I was a strategy analyst for WorldSpace Corporation, a hot $2.5 billion start-up(!) in Washington, DC, whose goal was to produce digital satellite radio worldwide. They had some issues in being able to offer service in the US, but assets which could potentially serve the market. I assisted in an investment and spin-off strategy which enabled another new company to serve the US market.

That other company became XM Satellite Radio.

It will be very interesting to watch the OT-Blueprint partnership.

Friday, February 15, 2008

New USPTO-PPAC Members

Wanted to post a quick update on the USPTO Patent Public Advisory Committee - they announced the three nominees yesterday.

I have heard of all of the nominees – but one stands out.

Professor Kieff is one of the most insightful academics in IP today. I would put him up there with Markus Reitzig at London Business School, Bronwyn Hall at Berkeley, and Lee Fleming at HBS.

There are other academics who are more popular for their research – Mark Lemley at Stanford obviously - but in terms of putting out careful, original research that has resonated and impacted the practical development and management of IP, these researchers stand out. (Note: Professor Crouch is by far the most popular academic in IP, but not [yet] for his research, more for his comprehensive communications of that which is newsworthy to the industry.)

To see Professor Kieff, (and professor Hall as well) enjoy this video. And if I have egregiously left off anyone of note, please e-mail me or leave a comment. If I get enough interest/feedback – I'll make a top ten.



Monday, February 4, 2008

Tuesday, January 22, 2008

Honesty with inventors - setting expectations

Some background on inventor-attorney/agent interactions

Inventor: Can we patent this?
Patent Person: 1) Definitely - I can get narrow claims on anything 2) Probably - but let me do a quick search and get back to you 3) No, the art is dead on, you stole this idea, disclosed it three years ago, sold it two years ago, and it was an obvious variant of everything ever known by everyone ever. Never bring me such worthless ideas again. Peasant.
Inventor: How much will it cost?
PP: 1) More than this idea is worth, 2) Thousands and thousands of dollars 3) It depends
Inv: How long will it take?
PP: 1) Longer than the useful life of this idea 2) Three years, plus or minus 3) It depends
Inv: What's the process?
PP: 1) What is this alleged process you speak of? 2) We'll go back and forth a few times with drafts and refinements until we're happy with the disclosure 3) We'll go back and forth a few times with drafts and refinements until you run out of money.

So it turns out that a big part of optimizing patent preparation, and having good answers for inventors, is having a good process for getting ideas into the office. By helping inventors do the pre-work, IP managers can make patent drafting far less painful for the attorney's, and less expensive for the applicant.

Below is a process IP managers can use to give to inventors and set expectations. There is another process that gets the claims sketched first, but it is far more complicated and would take far more than the time I have given myself to do this post. It is also possible, if the IP manager is admitted to practice before the PTO, for them to just draft the case. However, with lots of disclosures coming in, it is far more efficient to distribute the work. In any case, here's a detailed process:

  • Receive invention disclosure
  • Do a quick search from the invention disclosure
  • Meet with inventors to discuss invention
  • Meet with IP committee to fund application filing
  • Together with inventor, draft examples & drawings
  • Re-search art from examples
  • Review art and edit examples
  • Follow-up with inventors, together sketch claims from examples
  • Draft claims
  • Send Invention Disclosure, Claims, Examples, Drawings, and Art to law firm for application drafting
  • Hold invention and filing strategy meeting with drafting attorney, ip manager and inventor
  • Drafting attorney creates application first draft, which is sent to the IP manager for review
  • Inventor and IP manager review case, make edits
  • Attorney produces final draft
  • Inventor and IP manager review case, make (hopefully few) edits, return draft to drafting attorney
  • Application filed

Just about every step in this process can be optimized by an IP manager.

If you are overwhelmed by invention disclosures right now, make a spreadsheet with these categories as headers, then go through each disclosure and put them in one of the above categories. At least then you will know what needs to be done next.

Hope this is useful.

Sunday, January 6, 2008

Happy New Year Everyone

Just wanted to apologize for my tardiness in blogging lately and hope that everyone is back in full swing from the holidays.

Reflecting on the last few months of blogging, what is most amazing is how much time it takes to do this. I started working on this as a service to the IP community, and hope a few of my posts have had some useful perspectives - especially for smaller companies.

This year I look forward to posting on how to IP can enhances sales, marketing, HR, operations, finance, strategy and the technical functions. I will also post about improvements to the patent system as a whole from time to time.

So thanks for reading, and if there is anything specific within the above you would like discussed, please let me know either in the comments below or at emgill (at) gmail (dot) com.

Cheers, and again, happy new year.