e^(ip)

plenIPotentiary discussions at 2009 IPBC

2009-07-06T06:00:00.000-07:00

An international working group, assembled and tasked by the UK's Intellectual Asset Magazine, met for the first time late last month to discuss and define the role of Chief Intellectual Property Officer for attendees of the IP Business Congress in Chicago.

The results of these discussions were shared at the IPBC and will be further developed into articles and other publications by both IAM and the session facilitators (Ron Laurie and Rob Sterne). Great overview here by Joff Wild and key point summary here by Duncan Bucknell. At the end of the conference, they held a brief roundtable and recorded a few of us answering questions related to the CIPO role.

Full CIPO working group:

Carl Horton, GE

Sherry Knowles, GSK

Ruud Peters, Philips IP & Standards
Marshall Phelps, Microsoft
Todd Dickinson, AIPLA

Peter Cicala, Shire Pharmaceuticals
Damon Matteo, PARC
John Squires, Chadboure & Parke (Goldman Sachs)
Scott Frank, AT&T
Erin-Michael Gill, OQO

Beatrix de Russé, Thomson

Bill Elkington, Rockwell Collins

Duncan Bucknell, Duncan Bucknell Company
James Malackowsi, Ocean Tomo

Bo Heiden, CIP Gothenburg
Shinjiri Ono, Yuasa & Hara
Ian Harvey, IP Institute
Anne Culotta, Halliburton
Wayne Sobon, Accenture

Leaving San Francisco

2009-05-14T21:27:00.001-07:00

A quiet moment before the movers arrive on Saturday...

$25,000 Reminder

2009-05-14T06:58:00.000-07:00

(image courtesy of Flickr)

Just a quick note: While a patent is one of the most useful incentives to invention, direct financial incentives work too. If you know any promising collegiate inventors (graduate or undergraduate), please help them submit their work to the National Inventors Hall of Fame Collegiate Invention Competition. They are giving out over $50,000 in awards with the winner receiving $25K. Application info can be found here: www.invent.org/collegiate

TeamPatent

2009-05-11T17:23:00.000-07:00

One of the most interesting new services out there for both inventors and patent professionals is an NSF-funded start-up called TeamPatent. It is designed to enable faster and more accurate patent drafting, and looks to also have immediate uses for speeding certain patent examination tasks as well (verifying support in the spec for new claims, checking complicated claim dependencies, determining if there is inconsistent element numbering / descriptions in the drawings, etc.). The site is open for free Beta testing while they advance development.

Flash demo from their site below.

Cheers,

e^(ip)

Intellogist

2009-05-06T09:06:00.000-07:00

Quick note:

Much of the discussion of patent quality or patent reform, fundamentally depends on the quality of the art available to those making the determination of patentability. Ensuring that every relevant document which could potentially invalidate a given application is considered both by the applicant in making a filing determination, and the examiner in determining claim scope and patentability in an examination, is one of the most critical inputs to the patent process.

With respect to this goal, one of the most useful new sites for patent professionals is Intellogist from Landon IP (one of the firms the USPTO uses for outside PCT searching assistance). It provides a free online repository of patent searching resources and IP software package reviews. While some content still needs to be updated, as is, it seems to be a very useful resource.

Best,

e^(ip)

NIHOF Collegiate Inventors Competition

2009-05-01T00:55:00.000-07:00

The National Inventors Hall of Fame has an excellent invention competition for both undergraduate and graduate student inventors. If you know of a worthy student project, please encourage them to apply.

The 2009 Collegiate Inventors Competition is now accepting applications! This prestigious program shines a spotlight on deserving researchers and innovators early in their careers in an effort to provide support and inspiration to those who have tremendous potential to make the world healthier, the economy stronger, and the planet safer. Go towww.invent.org/collegiate for more information and to download the application.

Grand Prize $25,000

Top Undergraduate Prize $15,000

Top Graduate Prize $15,000

Up to 12 Finalists will be selected to advance to the final judging round. Each will 1) receive an all-expense trip to the final judging round and awards ceremony 2) meet and present their work to a distinguished panel of judges and 3) receive a $2000 cash prize per team. Advisors to the Grand Prize, Top Undergraduate and Top Graduate Prize winners will also be awarded a cash prize. The presenting sponsors of this year’s Competition are the United States Patent and Trademark Office and the Abbott Fund.

You can find an informational brochure on the 2009 CIC at: http://www.invent.org/collegiate/pdfs/09_CIC_ebrochure.pdf. You can view video from last year's Award's ceremony at http://www.invent.org/collegiate/video/index.htm.

Questions? Please email collegiate@invent.org or call Joyce Ward at 800.968.4332, ext. 6951 for guidance on the advisor requirement, invention summary, the patent search or any other parts of the application. Not sure whether your project is actually an "invention", call or email collegiate@invent.org.

Don't miss this incredible opportunity. All applications must be postmarked by June 16, 2009.

Palindromes

2009-04-15T05:35:00.000-07:00

e^ip to gill ip. A pill? I got pie!

(for a much better palindrome look here)

There will be a lot to blog in the coming weeks, but for now, I have transferred this site from blogspot to

www.gillip.com

I really like the semi-reflective symmetry in that url - hence the attempt at palindromic poetry above. I have also added a useful search widget on the side bar for finding things in google patents more quickly.

Like I said, more to come...

Thanks,

e^ip

e^(ip) in Alltop

2009-03-23T13:02:00.000-07:00

We've been added to the alltop listing for patent blogs. Alltop is a great site, based on the concept by popurls, but with greater depth and variety of topics. IP strategy and management is still a very nich sub-topic, but at least this content is now in a place where it can easily scanned with the more traditional and popular IP blogs. Thanks to alltop.com for adding e^(ip).

Cheers,

e^(ip)

Important Cases for IP Management

2009-03-14T17:35:00.001-07:00

(pi ruler via flickr)

For this years pi-day post, I wanted to list some of the rulings which have most impacted the day to day management of IP. These cases are worth the time sitting down with outside counsel and deeply understanding. Stephen Albainy-Jenei just did a good summary over at Patent Baristas of many of these cases in the context of courts dictating patent reform. Here are a few of the most key:

eBay Inc. v. MercExchange LLC, 547 U.S. 388 (2006) (reversing Federal Circuit)
Permanent injunctions: Rejected “categorical rules” favoring or disfavoring permanent injunctive relief following a nonappealable judgment of infringement. In all cases, courts must retain equitable discretion to consider the merits of a request for permanent injunctive relief based on the traditional “four factor” test. (e^ip note: critical to understand, especially in forming policy regarding non-practicing entities)
KSR v. Teleflex, 550 U.S. 398 (2007) (reversing Federal Circuit)
Obviousness: Rejected, in part, the Federal Circuit’s “TSM test,” which conditioned obviousness on a specific finding of some motivation, teaching or suggestion to combine prior art teachings, in the particular manner claimed. The Supreme Court left intact the TSM test as a general standard for evaluating obviousness but held that TSM is not the exclusive test for establishing obviousness. Instead, the Court endorsed a flexible and expansive approach to the obviousness inquiry in lieu of any rigid or narrow formula. By making it easier to establish obviousness, KSR makes it more difficult to obtain patent protection in the first instance, and tougher to defend against invalidity challenges post-issuance. (e^ip note: critical to understand in initial claim drafting and prior art analysis)
In re Seagate Technology, 497 F.3d 1360 (Fed. Cir. 2007)
Willfulness standard: Abandoned long-standing Federal Circuit precedent imposing an affirmative duty of care on accused infringers, and held that willful infringement requires at least a showing of objective recklessness. (e^ip note: takeaway for setting IP policy - objectively reckless is difficult to define, but critical to avoid)
In re Bilski, 88 USPQ2d 1385 (Fed. Cir. 2008)
Subject matter eligibility of software/business methods: Narrowed the scope of patent-eligible software/business method patents under Section 101 to methods that are either tied to a particular machine or apparatus or that transform a particular article into a different state or thing (the “machine or transformation test”). Bilski will make it more difficult to obtain patents for such methods and tougher to defend method patents against invalidity challenges and, in the process, drag in non-software/business method inventions including pharmaceutical and biotechnology patents. (e^ip note: software case law is rapidly changing, so software specifications should be able to support a broad range of claim strategies - at least for now, claims need to conform to the Bilski standard)
In re TS Tech, Misc. No. 888 (Fed. Cir. 2008)
Venue: Ordered transfer of venue from the Eastern District of Texas to the Southern District of Ohio. The fact that vehicles containing the allegedly infringing article are sold in the Eastern District of Texas does not provide a meaningful connection with the venue since such vehicles are sold throughout the United States. Product sales are often the sole basis for asserting venue in this district. (e^ip note: important right now in preventing litigation in popular venues for patent actions, however, may be temporary as patent holding companies become more creative)

The IP Strategist

2009-03-09T00:34:00.000-07:00

An IP Strategist's Perspective: A Reality Check for Entrepreneurs Who Believe they Need a Patent to Protect Their Idea

View more presentations from Jackie Hutter. (tags: ip strategy)

Just saw this on BlawgIT - whether internal or external, look for this kind of deeply invested, somewhat embedded professional to become much more common in business...

1337 San Francisco Hybrid SUV Taxi - FTW!

2009-01-29T23:27:00.000-08:00

(Thanks to Moshen Chan of Mochi for the title)

Tonight, Intel and DreamWorks had a cool get together downtown to show-off their new 3-D animation technology, which will publicly launch in a Super Bowl commercial for Monsters vs. Aliens this weekend.

I went with two OQO inventors, and got to talk IP and tech for a few hours. On the ride back, we discovered the greatest haxor cab ever.

Very good times.

Our minds are no less inventive...

2009-01-20T10:56:00.000-08:00

From today's inauguration speech:

"This is the journey we continue today. We remain the most prosperous, powerful nation on Earth. Our workers are no less productive than when this crisis began. Our minds are no less inventive, our goods and services no less needed than they were last week or last month or last year. Our capacity remains undiminished. But our time of standing pat, of protecting narrow interests and putting off unpleasant decisions - that time has surely passed. Starting today, we must pick ourselves up, dust ourselves off, and begin again the work of remaking America.
For everywhere we look, there is work to be done. The state of the economy calls for action, bold and swift, and we will act - not only to create new jobs, but to lay a new foundation for growth. We will build the roads and bridges, the electric grids and digital lines that feed our commerce and bind us together. We will restore science to its rightful place, and wield technology's wonders to raise health care's quality and lower its cost. We will harness the sun and the winds and the soil to fuel our cars and run our factories. And we will transform our schools and colleges and universities to meet the demands of a new age. All this we can do. And all this we will do."

A presidential shout out to the inventive community - very good times.

e^(ip) will be popular this year?

2009-01-01T08:56:00.000-08:00

According to the Washington Post, a trend which will be "in" for 2009 is something called Slow Blogging.

I've spent all 2008 preparing for this.

Happy New Year everyone.

Merry Christmas

2008-12-24T19:07:00.000-08:00

International TM and Domain Names

2008-12-17T10:54:00.000-08:00

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,
YYYYYY

Sponsoring Registrar:
OOOOOO
Tel:+00ZZZ-ZZZ-ZZZZ
Fax:+(ZZZ)ZZZZ ZZZZ
Email: YYYYYY@OOOOO.COM
Website:OOOOOO.COM

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.

Cheers,

e^(ip)

ABA Survey

2008-11-18T10:09:00.000-08:00

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: http://www.surveymonkey.com/s.aspx?sm=9Dhw2g7bX_2bxfq4mW8eB1Cg_3d_3d

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.

October review: civilization comes to end

2008-11-01T08:21:00.000-07:00

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:

Beverly Hills Chihuahua - $78 M

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."

My next post will probe and extend this insight. At this rate, look for that in early 2012...

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

2008-09-10T10:22:00.001-07:00

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:

In your Google toolbar favorites click "Manage All"
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.
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..." .
Now select "Import from a File" and click Next.
Select "Favorites" and Click Next
Click browse and find the file you created on your desktop in step 2 and click next.
Select the folder you want the favorites to reside and click import.
In Chrome, under the wrench in the upper right, click "Import Bookmarks and Settings" - select all four items and click import.
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.
Drag and drop folders from that folder to the Favorites Bar, customize as desired.

Hope this helps. Cheers.

Chief IP Officer

2008-06-19T09:54:00.000-07:00

(Image courtesy of http://www.vcwear.com/)

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.

Answer to Duncan and Joff

2008-05-27T10:26:00.000-07:00

Duncan Bucknell and Joff Wild, both have excellent blogs and have asked a simple question regarding patent expiration dates.

Namely, why do patents not have the expiration date printed on the cover?

The answer is because for any given patent, the actual date the claims will be dedicated to the public at the time of grant is unknown. In the US, it could be somewhere between 3, 7 or 11 years from grant, or 20 years from filing, or something else entirely because of a certain drugs approval process. Having an expected expiration date on the cover would likely cause more confusion than it would clear. Unfortunately and annoyingly, one almost always has to check the file wrapper.

Hope that helps.

Free Patent Drafting

2008-05-22T06:52:00.000-07:00

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 emgill@gmail.com.

Thanks.

Ocean Tomo - Blueprint

2008-04-17T14:44:00.000-07:00

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.

Happy Pi Day

2008-03-14T10:02:00.000-07:00

Patent RSS Meme

2008-02-19T18:08:00.000-08:00

New USPTO-PPAC Members

2008-02-15T09:59:00.000-08:00

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.

Cheers,

Erin-Michael