GSK vs. PTO notes

(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

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

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

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

PLI gone wild

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

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

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?

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

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

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?

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.