e^(ip)

Negotiating Patent Purchase Agreements

2011-08-12T09:46:00.000-07:00

Randomly saw this in my twitter feed. Actually useful overview:

Invention extraction made simple

2011-02-08T06:10:00.000-08:00

Hello everyone.

Just posted the below to twitter regarding how to grow a companies IP, thought it was useful and wanted to republish here:

Stay simple - focus on the 5 core stages in invention extraction: brainstorm, synthesize, prioritize, expand, protect.

Brainstorm w/ individuals or groups, look for both whitespace ideas and current development projects. Critical point - ID the right problems

Synthesize ideas by generalizing and grouping to focused themes. Remove the unnecessary. Ask if X is a specific example of Y. Find the Y's.

To prioritize ideas 1) set the criteria 2) choose a ranking schema 3) assemble a diverse ranking team 4) rank in private 5) discuss together

To expand inventions - take every descriptor in the synthesized idea, and treat it as an axis about which an invention can be developed.

To protect ideas, understand the strategic landscape from a business, tech, and legal perspective, then apply the best IP tool (patent, etc)

Hope this is useful.

Best,

Erin-Michael

White House Easter Egg Roll

2010-05-15T22:34:00.000-07:00

Good reporting

2009-08-04T19:10:00.000-07:00

(Reporter Sara-Jayne Adams of the UK's Intellectual Asset Management and Erin-Michael Gill)

Sara-Jane Adams has pulled together a number of IP professionals for this months cover story (registration required) on fighting back against the IP backlash, especially with respect to international perceptions of IP. Interesting topic and bit of a surprising read.

Also, I recently started Twittering (http://twitter.com/gillip_com). While it is not exactly an outlet for the kind of in depth IP journalism one might find in IAM, it is a good place to park small interesting insights from time to time. Here's my latest tweet:

gillip_comNote the portfolio license option - MSFT offered all YHOO's IP at a discount b/c of search deal. Good value for both -http://bit.ly/13yQ4m

The longer point is that the IP provisions in the Yahoo search deal could seed a broader collaboration with Microsoft. Allowing MSFT to incorporate YHOO technology - even at a discount - would at least be new revenue into YHOO, and could be a valuable test drive of sorts leading to something far more significant down the road.

Anyway, if you would like to follow my feed, feel free.

Cheers,

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 Management 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.

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...

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."

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."

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.

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

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

Patriots jinx themselves with 19-0 trademark application

2008-02-04T14:31:00.000-08:00

In light of the Superbowl result last night, it is now reasonable to believe that if the football gods exist, they believe in karma.

http://www.nypost.com/seven/02012008/news/regionalnews/pat_ently_smug__snooty_587194.htm

Honesty with inventors - setting expectations

2008-01-22T12:06:00.000-08:00

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.

Happy New Year Everyone

2008-01-06T21:54:00.000-08:00

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.

One More TT Note

2007-12-07T08:50:00.000-08:00

From the article:

"Niro says he and Harris first met at an IP licensing conference in New York in May 2006, when Harris asked Niro to discuss his inventions."

I could not find which conference he was referring to, but he may have been thinking of the IP Licensing Summit he spoke at in August of 2006 (I too presented and remember his talk).

If that conference was their actual meeting place, it is interesting to me personally. It was there that I first met Dr. Pocklington, who would eventually ask me to lead the IP division here at OQO.

Advice and a bounty...

2007-12-06T10:22:00.000-08:00

A couple quick links.

There is a bounty on Troll-Trackers identity and the PPAC just released it's 2007 report.

The PPAC is a specialized group established to review, advise and report on the “policies, goals, performance, budget, and user fees of the USPTO.” Their 2007 report digs deeply into the Office and current challenges, and has a great picture of a "complex" application (won't spoil it for you).

The TT drama is good for a bit of IP intrigue. There is an old-west wanted-sign feel to the saga, with a bit of symmetry/irony in that the "Patent Troll Tracker" is himself being tracked by one first labeled a patent troll.

All for now.

No Patent Prosecution Panacea

2007-11-26T20:10:00.000-08:00

In my previous post, I criticized Tim's $50,000 solution without offering any of my own.

While at first I thought that to be unacceptable and promised to post a "better" solution of my own, after a bit of reflection, I have realized that any pontificated solution, absent real discussions with and accounting for all stakeholders, will end up as biasing and counterproductive to real improvement.

So I will maintain my best efforts to not bloviate (blogviate?) in this space.

Should a patent application cost $50,000 before lawyer fees?

2007-11-26T08:23:00.000-08:00

Today Patent TrollTracker linked to Tim Wilson, who has been blogging about raising large entity fees to $50,000 as a way of improving the USPTO and reducing patent "troll" cases in the IT industry.

It is not at all clear what percentage of the enforcement actions by non-practicing entities are being brought using patents formerly belonging to large entities. While large entity applicants do file the majority of patent applications, typically large entities hold onto their portfolios as assets for cross licensing, and likely would not want their names associated with enforcement actions of this type.

Further, many small entity applicants want to become large entity applicants someday. When they reach that crossover point, if they have to choose between filing 10X fewer applications or paying 10X more to keep filing at the same rate, they are going to file fewer cases, putting them at a real IP disadvantage with respect to both small entity applicants and larger entity applicants. From an innovation policy perspective, this does not seem to be reasonable.

Finally, knowing how legal budgets are formed in traditional large entity applicants, raising fees in this way would encourage far more litigation and aggressive licensing. IP departments exist fundamentally to protect the core business and enable new businesses. If fees were actually raised in this manner, law departments would be charged with finding new revenue streams to cover the fee increase and not let the company's inventions go unprotected. This too, does not seem to be a goal of the author.

While traditionally raising prices lowers quantity, this does not seem to be a situation where doing so would achieve the desired results.

American history predicts SIPO innovation

2007-11-19T08:55:00.000-08:00

This week it is important to bring up a book review I did not write.

Patently-O had a patent quote from 1895, and last week IP Dragon posted about how Chinese policy is reducing the restrictions on skilled workers. Both reminded me of my time as a reviewer for the Journal of the Patent and Trademark Office Society.

The most interesting book which just missed Journal inclusion was "Trade Secrets: Intellectual Piracy and the Origins of American Industrial Power" by Doron S. Ben-Atar, history professor at Fordham University. Professor Ben-Atar presented rare and remarkable narratives about the intersection of individual and IP rights at the time of America's formation; however he calibrated his work in the modern context of misappropriation, and centrally posited that American industrial power was born, essentially, of IP theft.

A pitch perfect review was later published by Harvard Business School here.

The book details many 18th century European nations having strict anti-emigration laws for skilled artisans, as a method of protecting native technology. This led to global patent regimes where, regardless of inventor, the first to file a patent application in an individual country would be granted the patent rights in that country. So a successful invention in Germany could be patented in France by anyone aware of the German patent.

America realized that by granting inventors the right to their inventions only if they invented the claimed invention would make them attractive to "real" innovators. If an inventor is willing to risk life and limb, indeed breaking local laws in leaving their home country to seek a better existence, why would they go to a country where there is a chance that someone else may have already patented their core technology?

It can be easily argued that contrary to the "TS" thesis, America grew their industrial power by having a strong and innovative IP scheme, with few restrictions on inventors and allowing them protections in a global first to invent system.

So how does this relate to China? As they move toward strengthening their IP rights and encouraging technology development, they have limited the restrictions placed on Chinese employees with access to "critical trade secrets". They have made non-competition agreements include limiting "duration to two years, geographic scope to a reasonable area and the employer must pay compensation to the employee during the period that the non-competition restriction is in effect." These provisions seem far more inventor/entrepreneur friendly than any I have encountered.

On the face of it, this may discourage some investment. However, it also prevents a company from labeling merely confidential information as "critical trade secret" and allows skilled employees greater freedom to diffuse throughout China.

If the early American pattern actually holds true, I would expect some interesting IP innovations to come out of SIPO in the next few years.

IV, IP and VC's

2007-11-12T12:31:00.000-08:00

In my earlier post I mentioned how IP can show good technology fit for private equity firms shopping new ventures. More traditionally, IP can act as a validating mile-marker to investors; the seeds of real invention to become implemented innovations and providing a sustainable, proprietary value proposition for the company.

Today there is a bit of buzz about what a company like Intellectual Ventures could possibly be doing in amassing incredible patent portfolios. Looking at it from the above prospective, it is possible that they could be doing exactly what entrepreneurs do when they first develop their ideas: use the protected technology to look for funding and start companies.

When a technologies future is uncertain, having access to a great number of approaches or techniques significantly increases ones probability of success. Having exclusive access a large pool of fundamental patents on related technologies could present an interesting opportunity for VC’s with access to capital, technology experts, and operational gurus looking to reduce the uncertainty in developing certain products.

Without trying too hard, here is a list of well known VC firms that may have interest in IV someday (reasonably good list for traditional entrepreneurs as well).

Accel
Alta Partners
Atlas Venture
Azure Capital (OQO investor)
Battery Ventures
Benchmark Capital
Berkshire Partners
Bessemer Venture Partners
Canaan Partners
Centennial Ventures
Charles River Ventures
Credit Suisse
Draper Fisher Jurvetson
Greylock Partners
HarbourVest Partners
HCP
IDG Ventures
Institutional Venture Partners
Integral Capital Partners
Khosla Ventures
KPCB
Lightspeed Venture Partners
Mayfield
Menlo Ventures
Mobius Venture Capital
Mohr Davidow Ventures
Morgenthaler
NEA
Norwest Venture Partners
Oak Investment Partners
Pitango Venture Capital
Polaris Ventures
Rustic Canyon Partners
Sequoia Capital
Sprout Group
TA Associates
Technology Crossover Ventures
US Venture Partners
VantagePoint
Venrock
Warburg Pincus
Wellington Partners Venture Capital

Blog title exegesis

2007-11-09T10:04:00.000-08:00

Another quick post. I wanted to address by blog's name. Marketing experts will tell you that a name should be descriptive and impactful. Trademark attorney's will tell you that a name should be fanciful and meaningless to obtain broad protection.

I have willfully ignored both. Creating a title that is both hard to search, remember and say, while having just enough meaning to likely be unprotectable.

Whatever. I like it. For me, e^(ip) is a great math/intellectual property pun.

Chiefly, it represents me discussing ip issues (my first initial combined with the common intellectual property abbreviation).

However, it also is represents my appreciation of the special case of Euler's formula with x=pi, where e (the base of the natural logarithm) raised to the square root of negative one (the imaginary number i) times pi equals -1.

I will give you all (all ten of you) a moment to think about that... No matter how many times I have seen or used this, it still is wonderful to contemplate the connection of these two transcendental numbers. According to Wolfram's this "beautiful identity" connects: "the fundamental numbers i, pi, e, 1, and 0 (zero) and involv(es) the fundamental operations of equality, addition, multiplication, and exponentation."

I love this identity. Hopefully some of my posts too will connect some seemingly unrelated transcendental concepts and make things easier for people to understand. Marketing and trademarks not withstanding.

Have a good weekend.

New law firm of note

2007-11-06T17:05:00.001-08:00

Just a quick note on the announcement of Michael Kondoudis. I have enjoyed reading patentlydefined.com for a while now and want to support a fellow astronomy grad turned patent practitioner turned sometimes IP blogger.

View his announcement here.

GSK vs. PTO notes

2007-10-31T10:46:00.000-07:00

(Note: Looks like once a week postings may be my limit for now.)

In everything I have seen so far, here is the most important sentence:

"Many companies rely upon the stable, reliable protection afforded by the current patent system in determining whether it is cost-effective to abandon their trade secret protection by pursuing a patent." from the PI order, p37; link

This is it. This is what is being missed by most commentators I've seen. As a customer, there are only "must haves", "would likes", and "delighters" - this is the "must have."

It would be delightful to have our patents granted the day they were filed. It would be delightful if a special envoy of polyglots checked every library and every piece of art on earth for every application. I "would like" patents to be granted faster and examiners be able to search deeper and longer.

However, I would sacrifice both of those in a second for stability. Between courts reinterpreting scope and standards, and congress trying to address the needs of the inventive community, the PTO is the one pillar of consistency practitioners have come to necessarily rely on for determining, broadly, how to protect their clients and companies.

Over the last few months I have realized that I do not care what rules the USPTO issues. I care about the values behind the rules.

It seems the community has convinced the Office that faster and better has become more important than predictable. They have become must haves.

I absolutely disagree. They are very, very important, but not must haves.

As a practical matter, just as the PTO predicted, I do not know "how to proceed with patent prosecution and which rules will govern applications during the period of injunction." While the PTO rule-making created a lot of work and some uncertainty in bringing everything into compliance, GSK has now caused more uncertainty and more work (making decision trees and expected outcome/impact analysis for each case). Of course, if the end result of the case is greater predictability and stability - then I will soon forget the hours and frustration.

Three final notes coming out of all this;

1) People are paying attention to the PTO. They have shown the will to implement that which they believe to solve their loudest criticisms (pendency longer than some technologies relevancy and patents being invalidated), and are not backing down from executing on what they believe will work.

2) IT and Pharma are working together in the invention community. In related news cats are lying with dogs.

3) The answer to "How should the patent system improve?" clearly depends on who one asks. People who don't care about budgets say raise fees. People who don't understand that the search is the examination say outsource the search. There is a lot of complexity to answering this question and it is clear that the community is realizing just that.

Mythbusters and Numb3rs

2007-10-27T08:58:00.000-07:00

A few quick notes from Friday:

OQO hq is located a few blocks from some great food in San Francisco's Mission district. Last Friday I ran across Grant, Tory, and Kari - the Mythbusters build team - at Jay's Cheesesteak on 21st St. It was remarkable how well they blended in the neighborhood (Kari's pink hair and all). When I noticed them leaving, I became a bit star/nerd struck and mainly thought to myself "Do. Not. Stare." feeling very much like I was seeing Steve Martin's nose for the first time in Roxanne. Hopefully that will wear off, and next time I'll smoothly pitch a Mythbusters patent special where we test actual published patent applications with 101 rejections for defying the known laws of physics (or rather "inconsistent with known scientific principles").

Also on Friday, an OQO Model 02 was shown three times in the first 10 minutes of Numb3rs.

Lastly, I still owe Gene Quinn of PLI a thoughtful response to his comment on my "PLI Gone Wild" post, but have not had the time to write the non-confidential aspects of what I am now implementing regarding the new rules. Hopefully this will all settle in a few weeks and I will have some time to write that note. In the meantime, if anything breaks this week, I will make best efforts to post whatever practical context I can.

Cheers.

USPTO Obviousness Guidelines in view of KSR

2007-10-18T19:18:00.000-07:00

Again catching-up on important posts, here is a summary of the new, somewhat modified obviousness standard that was propagated due to KSR.

Combining prior art elements according to known methods to yield predictable results;
Simple substitution of one known element for another to obtain predictable results;
Use of a known technique to improve similar devices, methods or products in the same way;
Applying a known technique to a known device, method or product ready for improvement to yield predictable results;
"Obvious to try" - choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations would have been predictable to one of ordinary skill in the art; and
Some teaching, suggestion or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine the prior art reference teachings to arrive at the claimed invention.

Full post here...

Ten Questions with Fred Greguras

2007-10-18T18:56:00.001-07:00

A bit late on this but a useful post for entrepreneurs from Fenwick and West: View article...

PLI gone wild

2007-10-18T12:24:00.000-07:00

PLI is going a bit wild on it's blog today about cases being removed from examiners dockets for 5/25 compliance:

PLI - Patent Blog:"This is the height of arrogance, and luckily the height of stupidity, on the part of the Patent Office. One of the things that some have said will make it difficult for GlaxoSmithKline to prevail on the TRO & Preliminary Injunction level is because they will be hard pressed to show irreparable harm. This is irreparable harm, and it is evidenced by the Patent Office's own PAIR system!
...
[I]f an application was flagged and removed from the examiner docket for any length of time that has to by definition make it less likely that an office action would be mailed on or before November 1, 2007"

Unfortunately, that is not necessarily true. It does not "by definition make it less likely" to be examined if there was already zero chance of examination.

All the examiners know these rules are coming down the pike, and they all have discretion on which cases to examine. Even the ones that are actually the oldest on an examiners docket do not have to be examined first. They are supposed to be, but I know examiners who just crank through easy amendments for bi-weeks at a time without doing any new cases for months. The small work-flow hit doesn't impact their performance nearly as much as production, so they knock out amendments getting the counts they need.

Even if there are 1000 cases that were both the oldest on an examiners docket and had more than 25 claims, there is actually little reason to believe those 1000 examiners would not just wait it out until the new rules came into effect and resulted in them having to do less work. Surely there will have been a few that would have been examined and saved from the rules, but it is going to be extremely difficult to determine those cases.

As for GSK showing irreparable harm just because of this, I am definitely not as sure as PLI. As I previously had not taken into account examiner discretion, it may be my 1 in 600 estimation was actually high.

Looks like the below is about right

2007-10-17T13:11:00.000-07:00

Yesterday over at just-n-examiner, the anonymous, inside the Office blogger seems to have confirmed my previous post. Most examiners will only be examining non-compliant applications if they absolutely have to.

This seems to make the 1 on 600 chance that your case was actually affected less of a floor and more like the actual number.

Patent Office Has Stopped Examining Patents with 25+ Claims

2007-10-16T13:26:00.001-07:00

Below is the link to Professor Crouch, but in essence, patent applicants waiting for a first office action in hopes of escaping some of the PTO's new rules are not going to get their wish.

So how many cases will this actually affect?

Due to examiners workflow requirements, they always pull the oldest case on their dockets, then typically pull cases from farther down the chronological list in order to work on cases better suited to examination. Cases with a few, clear claims, no 112 issues, and no complex restrictions needed, will typically get moved to the top of the pile.

So with that thinking, of the ~3000 cases that must be examined due to workflow (one per examiner), a reasonable assumption is that 1/3 or so have 25 or more claims, making 1000 cases the probable floor.

Due to unpublished applications and the like, there is no easy way to estimate the actual number office actions this will impact, but at the minimum, considering there are 900,000 cases pending, maybe 600,000 of which are unexamined, this implies a 1 in 600 chance your application was pulled from the very top of an examiners docket.

Would be interesting to see if the USPTO issues a justification statement or just relies on something to the effect that this is a necessary an inescapable implementation step in order to be ready for November 1. Either way, this will no doubt further fuel the rule change critics.

View article...

The hardest part of managing IP?

2007-10-07T21:48:00.000-07:00

The uncertainty.

No budget is large enough to seek protection on every patent worthy idea.

When selecting which cases to file, instincts do about half the job, but no one really knows which technologies are going to be the most important 5-10 years from now. Two grad students writing search software and building server storage out of lego's became Google. Typically, the larger the uncertainty in a future technology, the greater the opportunity for obtaining broad protection. However, when a technology is less speculative and more likely to be at least modestly successful, those patents and innovations, on average over time, have the best return on investment.

A rigorous process which separates the likely new products and features from the hoverboards and flying cars, will ensure an efficient and profitable IP program.

IBM did not patent the checkbox

2007-10-03T19:02:00.000-07:00

Today, Slashdot has the headline "IBM Patents the Checkbox"

I have not read this patent and am not going to. However, I can say with certainty that this statement is false. With allowance rates dropping below 50%, software patents having at least a second set of eyes review, and knowing that checkboxes themselves have likely been around since Pliny the Elder was using parchment, there is no need to check the veracity of this statement.

So why is this important to IP Managers? Engineers.

Engineers read Slashdot. There are engineers - some posting to that site and the like - who feel that patents stifle innovation, and examples of "obvious to them" patents lessen their enthusiasm for generating IP for the company. With a significant portion of companies values and valuations tied to the quality of their intellectual property, this is the opposite of the situation you want.

Too many instances where an inventor was able to protect their hard work and creativity through the patent system gets lost in headlines like these. Hopefully any IP bloggers reading this will post at least one instance of the "system" encouraging innovation in the coming weeks. Maybe we'll catch a few slashdot readers along the way.

OQO Model 02 as productivity tool for law firms

2007-10-01T18:16:00.000-07:00

From the shameless plug department -

We typically provide OQO model 02's to our IP counsel and solicit their feedback on usefulness and productivity improvements. Here is an e-mail I received today from outside counsel on his firms usage:

"First, thanks for the three OQO model 02s that you have provided to our law firm. We have been using them in conferences to access data from our server and shared drives via 802.11. We also can access the Internet to look up data at the moment we need it. The 02s are less obtrusive than using laptops and are more personable in a meeting since they don't create the typical "wall of screens" of the laptops. The 02 units are basically as non-distracting as, say, a pad of paper or a glass of water so our new clients don't get the impression that we are not paying attention to the meeting as they might if we had laptops in front of us with the screens flipped up.

The 02s handle email attachments much better than our cell phones. Even though our phones are able to display our email messages, they don't allow viewing of pdfs, powerpoint, Excel, or even Word documents. In our patent practice we are constantly provided with email attachments such as published patent applications in pdf format. Usually we can't even respond to a client's email until we can open the attachment so this save us a considerable delay. Responsiveness to clients is the name of the game with us.

I have configured one 02 with an audio-to-mp3 encoder which I use to record audio of invention disclosure meetings. This works well since, unlike with commercial digital tape recorders that all seem to use proprietary formats, I don't have to re-encode the audio to the mp3 format for emailing to a tech writer or other working attorney. My plan is to get a web cam and hook it up to the same 02 so that I can take pictures of the whiteboard during the meetings and also quickly provide images (in real time) to someone else on the other end of a teleconference. Along with the mp3 audio this would be a complete electronic record of the disclosure meeting which usually now is captured by re-encoding traditional audio recorder output and faxing or scanning hand-drawn copies of the diagrams on the board. In some cases we use a video camera to capture the disclosure meetings but that results in a very large file (which is time-consuming to encode) or we have to mail the physical media which is susceptible to damage and a 2-3 day delay for physical mail. Who knows, maybe there are low-cost direct-to-mpeg video recorders that I can run on the 02. We are still in the research stage.

As an aside, the 02 also has that cool "wow" factor so that our clients' first impressions are that we are the tech-savvy patent attorneys that we hold ourselves out to be."

From Astrophysics to IP Management?

2007-10-01T12:45:00.001-07:00

Marc Andreessen has two great posts today on the misnomer of career planning. I love this post because there are no majors in "directing IP", and professionals in this area come from backgrounds with significant variance.

If there was a typical path, it would be someone with experience in one of technology, law, or business asked into a specialist or management role after showing some aptitude across disciplines. The largest category in my experience, has been engineers or scientists with above average communication skills, learning the legal and business aspects of intellectual property.

Some examples of backgrounds leading to IP management: Plant managers, Patent attorneys, Patent examiners, Patent agents, Information scientists, Product/brand managers, Career research scientists, Tech managers (grooming for business roles), Technical sales (typically end-up in licensing), Other (our IP manager for software has a PhD from Stanford focusing on computational anthropology and has exceptional communication skills).

Staying flexible and opportunistic can definitely lead to a rich and interesting career.

New PTO rules package

2007-09-28T15:11:00.001-07:00

Being the IP manager for OQO is quite an experience.

There are many inventors here who collaborate deeply and often, seeding incredible ideas and developing IP faster than I have ever before experienced. Of course, for me this becomes a bit of a problem in light of 37 CFR 1.78(f) in the USPTO new rules package.

It may be that the listing of commonly owned applications and patents will be the most important rule change in terms of the day to day management of patent applications.

The clerical listing of cases should be a trivial filing. However, avoiding the rebuttable presumption under 37 CFR 1.78(f)(2)(i) is going to take real creativity and diligence for compliance. The essence of this rule is that when a company files a new application within a couple months of another case having one or more inventors in common, that case is assumed to contain a claim that is not patentably distinct from claims in the other case when the earlier application contains written description support under the first paragraph of 35 U.S.C. 112 for at least one claim in the later application.

That is going to be very difficult to check for every filing. When filing cases on a new combination of elements, a new method of making those elements, additional patentable implementations using those elements, and all of those cases have long specifications, it makes the pre-filing analysis, complicated at least.

There should be a way to semi-automate the checking process by being more rigid in spec and claim drafting regarding defining claim elements, separately recording in the docketing system what elements are detailed in a given spec, then cross checking those elements with applications filed within two months of the filing date.

This will require a lot of time, coordination, and diligence, especially when dealing with more than one firm.

View new form at Patently-O...

Design Patents and Patent Reform

2007-09-27T14:35:00.001-07:00

My sister was a design examiner at the USPTO for a year, before leaving to become a vegan cooking author and chef. The design group at the PTO has always been different to the utility examiners. When I was a PTO utility examiner, the design examiners I knew were usually architects and other visual design experts. Supposedly on the whole they are "more normal" have "interpersonal skills" and "dress well" - whatever that means.

Anyway, enforcement is a very real challenge for design patents. Today Patently-O had a good summary of design patents recently protecting a US automobile manufacturer.

The interesting thing here is apparently after the ITC ruling, the losing party immediately joined the patent reform movement.

View article at Patently-O

IP and Private Equity

2007-09-26T10:05:00.000-07:00

Diving deep into a companies IP is a great way to contextualize possible strategic acquisitions. Private equity firms shopping a portfolio company can use patent data to show how one company may technologically compliment another.

From the New York Times - it's good to see PE investment is still looking strong:

"The buyout business may be in a holding pattern these days, but that apparently isn't worrying pension fund managers too much. According to a survey by Citigroup, nearly three-fourths of pension managers plan to increase the funds they earmark for private equity investments in the next three years."

View article...

Business Strategy IS Intellectual Property Strategy

2007-09-25T16:24:00.001-07:00

Great post on holistically managing IP: view article...

Vonage loses patent infringement suit

2007-09-25T15:27:00.001-07:00

Operating company protects core business with patents, no negative KSR effects in sight:

[A] jury in Kansas City, Kan. decided that Vonage is guilty of infringing on VoIP-related patents held by SprintNextel. The jury held that Vonage should pay SprintNextel $69.5 million in damages, as well as a 5 percent royalty on future revenue. Vonage had claimed it didn't violate these patents, and these patents are invalid. This can't be good news for Vonage, or its investors. At 2 p.m. EDT, Vonage's per-share price was a lowest-ever $1.81.

View article...

Innovation incentives: Win Your Own Startup

2007-09-25T14:25:00.001-07:00

Love this idea:

Some entrepreneurs say the toughest part of building their startup is finding capital. Bang Ventures, a New York-based investment firm, wants to alleviate that problem for three lucky entrepreneurs. You Be the VC is an open call to entrepreneurs with brilliant tech ideas. Applicants must create a profile and fill out an application to be considered. Then, judges will narrow the entries down to the top 20 finalists, who will create a video pitch to be voted on by the public, American Idol style. The winners will spend next summer in Cambridge, Massachusetts, working with a team of expert consultants, advisors and programmers to build their dream startup company.

View article...

Patentee Win Rates After KSR

2007-09-24T15:34:00.001-07:00

From the 271 blog: "LegalMetric has released a new study on patent owner win rates since the Supreme Court's decision in KSR, and found that patent owner win rates at first increased but then fell substantially below their long-term averages."

With the perception of a new obviousness "standard" cascading down to courts, one would hope these numbers represent a one time weeding out of patent holders asserting claims well beyond their intended scope. This sky is likely not falling for patent holders. Just yet anyway.

View article...

IPM?

2007-09-24T14:08:00.000-07:00

What does an IP Manager (Director, VP, CIPO) actually do?

Dig. Economic. Moats.

That is, we obsess about how to protect a companies value. We are often deep in the technical, marketing, and legal details of a product or company; leading organizations and processes to sustain competitive advantage and long term profits.

Good article here about investing in moats.

Interesting from Patent Hawk

2007-09-24T12:17:00.001-07:00

"KSR has created a favorable forum: inter partes reexamination requests, i.e., someone other than the patent holder butting in, were once shunned for the risk of bullet-proofing a patent, but now are soaring as a low-cost bet to smother patents in the cradle, before they walk into the courtroom. The recent kill rate is at 88%.

…

Litigation estoppel applies to as far as any ground that could have been raised. That includes any prior art that should have been discovered. But the upward trend indicates that previous worries have been assuaged by the anti-patent fervor that seems to have gripped the nation."

View article...

Discount Shopping for IP

2007-09-18T12:44:00.000-07:00

If Ocean Tomo is the Christies of IP shopping, this may be the Wal-Mart.

The Beard Group has issued a (relatively) new service called "The Intellectual Property Prospector" which identifies US and Foreign companies of any size filing for bankruptcy or reporting other financial difficulty and profiles their ownership of intellectual property.

...

View Intellectual Property Prospector web page (link)

...
View article...

From Patently-O, appeal time benchmarking

2007-09-18T10:29:00.000-07:00

From Professor Crouch

...

On average it took just under 18 months (542 days) from the filing of the appeal brief until a decision was reached by the BPAI. The mean hides a wide range of delay: From a minimum of 9 1/2 months to a maximum of 44 months. (Standard Deviation 255) {emphasis added}.

...

As with essentially every other area of patent law, we can expect that BPAI timing and results will vary by technology area. {EMG comment: critical point, generalizations mean little if predictions and improvements can't be made}

View article...

A patent improvement | Economist.com

2007-09-17T11:11:00.000-07:00

Another good article from the economist: A patent improvement Economist.com

It is always interesting to see how the media picks up on patent issues. Key takeaway for most readers; examiners need to have the best art in front of them, new technology is important to making this happen, and the major patent offices of the world are testing or planning to test a community approach to vetting references.

The most interesting note here is the problem the USPTO is trying to solve. What made the Google founders billionaires is understanding how to organize an incredible amount of disaggregated information such that the most relevant results are in the top 10-20 hits.

The key question now is how we do that for every public technical document, every part of every good ever offered for sale, and everything in every library, journal, or code base ever published in any language in the history of the world?

The answer probably involves the US classification codes, however it seems another x-prize may be appropriate...

Technical Incentives

2007-09-17T10:05:00.000-07:00

Interesting article from the economist: Space Eyes on the prize Economist.com

Being in patents, it is interesting how various fields can be incentivized to innovate (e.g. open source software, "pure" sciences, etc.).

As an astronomy undergrad, I thought having a manned, lunar observatory would be the greatest development in data collection since Tycho Brahe. However, the unsolved key question was how to incentivize such a massive development. At the time, the only way I believed this could happen was through sub-licensing the radio spectrum reserved for astronomers to wireless carriers. Years later, faculty in Cornell's Astronomy department - and operators of the Arecibo Observatory - assured me this method of funding development would never happen, as the science community would never give up their facilities for such a risky undertaking.

What was not clear at that time, was that there would be any for-profit organization that would benefit from a lunar infrastructure. Amazing development - glad to see the prize model encouraging innovation.

Interesting stats: Patent Cases, as Percent of all Civil Cases: 1997 vs. 2007

2007-09-17T09:10:00.001-07:00

Great statistics on where patent litigation has been initiated lately.

IP Software Resources

2007-09-14T15:10:00.000-07:00

One of the most important aspects of efficiently running an IP organization is selecting great technology.

Here is a great place to start: IP Menu - Intellectual Property Software Resources

Everyone's cooler than me

2007-09-14T12:39:00.000-07:00

A bit off-topic: It turns out I own more dress shirts than t-shirts (none of which are ironic), have never been employee number five or less, and can't build a green laser from scratch.

Coming to OQO in SF from DuPont in Virginia - I seem to have taken the red pill.

Excellent.

Good HR practice at a start-up

2007-09-14T11:27:00.000-07:00

blog.pmarca.com: The Pmarca Guide to Startups, part 8: Hiring, managing, promoting, and firing executives

Don't forget to check your domain names

2007-09-14T11:23:00.000-07:00

Patent Law Blog (Patently-O): http://patnetlyo.com - Typosquatter

The Patent Librarian

2006-06-02T12:03:00.000-07:00

The Patent Librarian: "U.S. Patent Counts, Jan. 1-Apr. 30, 2006Monday, May 01, 2006, 8:50:24 PM - Michael White

U.S. patent grants in March and April hovered around 4,000 patents per week except for a slight dip the week of March 12. A record-breaking (at least in recent years) 4,365 patents issued on April 25, surpassing published applications by 13. This was the first week in many, many months when the number of issued patents exceeded the number of published applications.
"

Two Weeks Given to Revise Russia's Civil Code

2006-03-21T19:24:00.000-08:00

Two Weeks Given to Revise Russia's Civil Code: "

Two Weeks Given to Revise Russia's Civil Code

Tuesday, March 14, 2006
by: Coalition for Intellectual Property Rights (CIPR)

Moscow, Russia, 10 March 2006 - At today's meeting of the Government Commission on Fighting IPR Violations, the draft Part Four of Russia's Civil Code was not approved. The Government Commission supported in general the creation of a Part Four of the Civil Code, but noted that the draft requires revision. The draft will have two weeks for revision, after which the legislation will return to the Commission for consideration.

Olga Barannikova, Representative in Russia of the Coalition for Intellectual Property Rights (CIPR), commented on the Commission's decision: 'Two weeks is a very short time frame to revise such a large project. Rightsholders and experts that have had the opportunity to read the document have already noted many errors and inaccuracies. We are puzzled at the speed in which the Government, without consulting the business community, is trying to push this draft through.'

Rightholders are concerned because Part Four of the Civil Code, which has been prepared for submission into the RF State Duma, was not the subject of public discussion. This draft would annul all special intellectual property rights laws, including the Law on Copyrights and Neighboring Rights, the Law on Trademarks, Service Marks and Appellations of Origins of Goods. The law was prepared by a group of lawyers, without preliminary consultations or agreement from those who will be required to follow the law - rightsholders.
..."

IP Law & Business

2005-03-10T20:58:00.000-08:00

IP Law & Business

March 2005

2005-03-10T20:48:00.000-08:00

March 2005

Entrepreneurs

2005-03-10T20:46:00.000-08:00

Inspiring interviews from HBS: Entrepreneurs